World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caja de Seguros Reunidos, Compañía de Seguros y Reaseguros, S.A. v. Reserved for Customers domadm@mustneed.com, MustNeed.com

Case No. D2011-2228

1. The Parties

The Complainant is Caja de Seguros Reunidos, Compañía de Seguros y Reaseguros, S.A. of Madrid, Spain, represented by UBILIBET, Spain.

The Respondent is Reserved for Customers domadm@mustneed.com, MustNeed.com of Taipei, Taiwan Province of China.

2. The Domain Name and Registrar

The disputed domain name <caser.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2011. On December 19, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On the same date, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2011.

The Center appointed Daniel Peña as the sole panelist in this matter on January 20, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant was established in 1942. It is amongst the largest and most respected insurance companies in Spain.

The Complainant offers a range of competitive insurance products to its clients.

In 2010, The Complainant had a turnover of EUR 2,566 million.

The Complainant has registered marks comprising or incorporating the expression “caser”. The marks registered in Spain by the Complainant are as follows:

(i) Registered trademark no. 2265387 for the word CASER.COM in class 38 filed on October 22, 1999.

(ii) Registered trademark no. 2517969 for the words CASER SEGUROS in classes 16, 36 and 38 filed on December 16, 2002.

(iii) Registered trademark no. 2855061 for the words CASER SEGUROS in classes 16 and 36 filed on December 2, 2008.

(iv) Registered trademark no. 2447345 for the word CASER in class 36 filed on January 9, 2002.

(v) Registered trademark no. 2517970 for the word CASER in classes 16 and 36 filed on December 16, 2002.

The Domain Name <caser.com> was registered on April 2, 2002.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in the CASER trademark.

The Complainant argues that the Domain Name <caser.com> is identical or confusingly similar to its registered mark.

In view of the foregoing, <caser.com> creates confusion among users and conflicts with the trademarks over which the Complainant holds legitimate rights.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.

In its view, the Complainant points out that there was no evidence of any use of the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute.

To the Complainant, the Respondent does not appear to be commonly known by the Domain Name; and that the Respondent has not been making legitimate noncommercial or fair use of the Domain Name.

The Domain Name is currently being used as a parking page, and offers services similar to those of the Complainant.

Finally, the Complainant alleges that the Domain Name was registered and is being used in bad faith. Considering this and the fact that CASER is a fantasy trademark, it simply impossible that who carried out the registration was unaware of the existence of Caser, a renowned insurance company at the time the Respondent registered the Domain Name <caser.com>.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark and secondly that the Domain Name is identical to or confusingly similar to the trademark in which the Complainant has rights.

The Complainant has established that it is the owner of the trademarks CASER.COM and CASER registered in Spain.

The Domain Name <caser.com> incorporates the entirety of the Complainant’s trademarks.

The Domain Name is identical to the Complainant’s trademark CASER.COM.

The Domain Name is identical to the Complainant’s trademark CASER, disregarding the domain name suffix “.com”.

The Panel, therefore, finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the Domain Name.

The Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name.

The Panel considers there have been no demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.

The Respondent has not been commonly known by the Domain Name <caser.com>; or, made any legitimate noncommercial use of the Domain Name, without intent for commercial gain in order to misleadingly divert consumers or to tarnish the Complainant’s trademarks.

There has been no authorization by the Complainant to the Respondent in order for it to make use of such trademarks, the Domain Name was registered several years before and since then it has not been put to use other than as a parking page.

Refraining from submitting a response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in making use of the Domain Name.

The Panel concludes from the evidence provided by the Complainant, that the Respondent has no rights or legitimate interests in the Domain Name <caser.com>. Therefore, the Panel considers that the requirements of paragraph 4(a)(ii) of the Policy are fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances that constitute evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The Panel is persuaded by a preponderance of the evidence that the Respondent had a bad faith intent in registering and using the Domain Name.

The Panel considers that the Respondent registered the Domain Name in order to prevent the owner of the trademarks from reflecting such marks in <caser.com>.

The Respondent has established, or authorized the Domain Name to revert to a parking page. It exploits potential confusion with the Complainant's marks. It also offers similar services as those offered by the Complainant regarding, for instance, various insurance options for cars, and other insurance services.

The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <caser.com> be transferred to the Complainant.

Daniel Peña
Sole Panelist
Dated: January 31, 2012

 

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