WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caixa D’estalvis I Pensions De Barcelona (La Caixa) v. Registerfly.com (Ref-R#32791299)/Whois Protection Service (ehb8rswsmelcars@protectfly.com)
Case No. D2006-0605
1. The Parties
The Complainant is Caixa D’estalvis I Pensions De Barcelona (La Caixa), Barcelona, Spain, represented by an internal representative.
The Respondent in this case is RegisterFly.com (Ref-R#32791299)/Whois Protection Service (ehb8rswsmelcars@protectfly.com),West Orange, New Jersey, United States of America. The Respondent did not respond to any of WIPO’s communications and is unrepresented.
2. The Domain Name and Registrar
The disputed domain name is <la-caixa.info> and is registered with RegisterFly.com (Ref-R# 32791299)/Whois Protection Service (ehb8rswsme1cars@protectfly.com), West Orange, New Jersey, USA.
3. Procedural History
Issuance of Complaint
3.1 The Complainant by email and by courier submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the “Center”) a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy (“Uniform Policy”), implemented by the Internet Corporation for Assigned Names and Numbers (ICANN and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date (“Uniform Rules”). The email copy of the Complaint was received by the Center by e-mail on May 15, 2006 and in hard copy on May 31, 2006. An Acknowledgment of Receipt was sent by the Center to the Complainant by email on May 16, 2006.
Confirmation of Registration Details
3.2 On May 16, 2006, the Center transmitted by email to RegisterFly.com, Inc. a request for registrar verification in connection with the domain name at issue requesting it to:
(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant, as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, Paragraph 4(b);
(2) confirm that the domain name at issue is registered with RegisterFly.com;
(3) confirm that the Respondent is the current registrant of the domain name;
(4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact;
(5) confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name;
(6) indicate the current status of the domain name.
On the same date (May 16, 2006), RegisterFly.com, Inc. confirmed by e-mail that it was in receipt of the Complaint sent to itself by the Center, the domain name <la-caixa.info> was registered with RegisterFly.com, Inc. and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was on “Hold” status.
On June 8, 2006, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).
Notification to Respondent
3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, and that payment of the filing fee had been properly made, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2006.
Constitution of Administrative Panel
3.4 The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2006.
The Center appointed Dr. Colin Ong as the sole panelist in this matter on July 13, 2006. 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.
Issuance of Procedural Order No. 1
3.5 The Respondent is RegisterFly.com, (Ref-R#32791299)/Whois Protection Service (ehb8rswsmelcars@protectfly.com) the registrant of the disputed domain name <la-caixa.info> as confirmed by the registrar RegisterFly.com, Inc. in its verification email to the WIPO Arbitration and Mediation Center (the “Center”) of May 16, 2006. After reviewing the file, the Panel noted that the Complaint was notified to the Respondent, Registerfly.com, on June 8, 2006 by email, facsimile and hardcopy in accordance with the contact details available on the relevant whois database of the registrar. While the email, facsimile and hardcopy notifications all appear to have gone through, no Response was received by the Center.
The Panel noted that the above-referred registrar’s verification email provided contact details for an individual, Enrique Cuadra Ortiz, along with a facsimile number, email address, and postal address. The Panel also noted that the Complaint named as a Respondent in these proceedings, in addition to RegisterFly.com, an individual, Thomas Mueller, and provided an address, facsimile number and email address for that individual. It appears from a print out of a whois search conducted by the Complainant on December 16, 2005 that this individual was previously a registrant of the disputed domain name.
It was the Panel’s view that for the avoidance of doubt in the circumstances, it was appropriate for both individuals to be provided with a copies of the Notification of Complaint and Commencement of Administrative Proceeding and the Complaint, and given an opportunity to respond.
Thus, on August 18, 2006, the Panel, in the exercise of the discretion available under paragraph 10 of the Rules, having taken into account the considerations set out in paragraph 10(b) and (c) of the Rules, issued Procedural Order No. 1, directing that copies of the Notification of the Complaint and the Complaint be provided by the Center to Enrique Cuadra Ortiz and Thomas Mueller and that these individuals be given until August 25, 2006 to respond.
The Center notified the Notification of the Complaint and the Complaint itself to the above-named individuals at their available email, fax and postal addresses. No response was filed pursuant to Procedural Order No. 1 on August 25, 2006.
4. Factual Background
4.1 The Complainant and its activities
The Complainant is the owner of the company name “La Caixa” in Mexico and Andorra, as evidenced by the certificate issued by the Mexican Institute of Industrial Property, and the certificate issued by the Trademark Office of the Principality of Andorra. The Caixa D’estalvis I Pensions De Barcelona “La Caixa” is an entity formed by the merger in 1990 of the Caja de Pensiones para la Vejez y de Ahorros de Cataluña y Baleares (founded in 1904), and the Caja de Ahorros y Monte de Piedad de Barcelona (founded in 1844).
The Complainant has submitted that La Caixa is presently the foremost Spanish Savings Bank, as well as the third-ranked in the European savings bank sector, with 9.1 million clients. The “La Caixa” Group manages a total of 133,117 million Euros in client resources, and has a commercial network throughout Spain which at the end of 2004 contained 4,841 branches staffed by 24,827 employees.
The symbol of “La Caixa” was created by the renowned international artist Joan Miró, and consists of an irregular 5 point blue star together with two rounded forms of different sizes under which the name “La Caixa” appears. The Complainant submits that given its extensive appearance on the streets and in advertising, the “La Caixa” star, as well as the name “La Caixa”, are very well-known in the entire Spanish territory.
4.2 The Complainant’s Activities
The Complainant contends that:
Apart from the Mexican and Andorran Trademark registrations, the Complainant also holds the composite trade mark LA CAIXA registered with the Spanish Patent and Trade Mark Office on November 14, 1986.
The Complainant asserts that the prestige and renown that the entity “La Caixa” has reached has allowed the entity to be recognized as such, adding the article “la” which gives it singularity, while other entities must always identify themselves with their complete company name. Therefore, any name which includes the term “La Caixa”, invokes the Catalonian banking entity Caixa D’estalvis I Pensions De Barcelona in the mind of the consumer.
The Complainant contends that the existence of the term “La Caixa” has been used for more than 25 years and the volume and geographic reach of more than 4,800 branches distributed throughout the Spanish territory gives an amount of prestige which it has acquired in the Spanish market, as well as the general public’s awareness of the well-known mark “LA CAIXA”.
The Complainant is also the holder of many other marks in which the name “La Caixa” appears as a distinctive element, and which are registered in the Spanish territory as well as in 49 other countries on a world wide level, either in the countries themselves or as an international trade mark.
La Caixa has been a pioneering company in the banking via Internet sector, offering an extensive products and services portal accessible on the internet sites: ”www.lacaixa.com””www.lacaixa.es”,”www.lacaixa.net” and “www.lacaixa.org”, as well as on other sites.
The Complainant has approximately 7,000 ATM terminals, which makes it the leading banking services entity in quantity of ATM terminals, and also the leading payment network in Spain.
4.3 The Respondent’s Activities
The Respondent is the registrant of the domain name <la-caixa.info> registered with RegisterFly.com, Inc. The Respondent does not appear to have used the domain name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the UDRP.
5. Parties’ Contentions
A. Complainant
(i) Identical or Confusingly Similar
The Complainant contends that the domain name currently used by the Respondent is confusingly similar to the Complainant’s trademarks. The Complainant’s earlier registered trademarks in the Spanish Trademark Office are prima facie evidence of their validity.
The Respondent’s domain name <la-caixa.info> is confusingly similar to Complainant’s trademarks which have a common characteristic in that they contain the term “La Caixa” as a distinctive element. The Complainant owns trademark registration for the mark LA CAIXA in Spain and in Andorra. In addition, “LA CAIXA” TELEBANCA, CAIXABANK, FUNDACIO “LA CAIXA”, “LA CAIXA” CREDI COMPRA, “LA CAIXA” TARJETAS A MEDIDA, “LA CAIXA” TARJETAS PERSONALES, E-“LA CAIXA”, are samples of the trade marks registered in Spain by the Complainant incorporating the term “La Caixa”. The disputed domain name incorporates the Complainant’s trademarks in their entirety but for the addition of a dash/hyphen (“-”) .
The Complainant submitted that the mere addition of a dash between the two words that constitute the trade mark does not exclude the probability of confusion between the disputed domain name and the Complainant’s trade marks. The dash added does not change the sense of this interpretation. The insertion of a dash between the two words does not alter the visual or phonetic identity of the expression. As a result, the confusion which arises from the domain name’s similarity with the Complainant’s trade marks remains invariable.
(ii) Rights or Legitimate Interests
The Complainant contends that according to paragraph 4(b) (ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the domain name <la-caixa.info>. The Respondent registered the domain name only after the Complainant had established rights in its LA CAIXA trademarks.
The Complainant has contended that the Respondent cannot demonstrate any legitimate interest in the disputed domain name. The Respondent as current holder of the disputed domain name is not the holder of the registered trade mark LA CAIXA or any other mark which is similar to the aforementioned, or of any license or any other type of authorization given by the legitimate holders of said trade marks to use them.
(iii) Registered and Used in Bad Faith
The Complainant submits that the Respondent’s actions evidence bad faith use and registration of the disputed domain name under paragraph 4(b)(iv) of the Policy, because it is using the disputed domain name <la-caixa.info> in bad faith to intentionally attempt to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its websites.
On December 20, 2005, the Complainant sent a registered mail letter to Mr. Thomas Mueller who at that time was the Registrant of the disputed domain name <la-caixa.info>. This letter was sent to the postal address given in the registry but was returned to the sender due to the postal address being incomplete.
The Complainant contends that this fact appears to point to the Respondent’s using incomplete data in the registration agreement to conceal his true identity or to make it difficult to be able to contact him. The Complainant contends that this implies bad faith and an evident breach of the registration agreement which all registering agents are bound to and which includes a clause in which the registrant is bound to guarantee that the information included in the registration form is certain, current, complete and accurate information.
The Complainant contends that when the Respondent registered said domain name, he was conscious of the fact that he was taking over a name and trade marks that had been registered long before his own and that the Complainant entity is prestigious and well- known in the Spanish territory. The Complainant then relied on the case of Caja de Ahorros del Mediterráneo v. Antonio Acuña Racero, WIPO Case No. D2002-0506 which held that “…..it is clear that the Respondent registered the domain fully conscious that he was infringing the rights of the Complainant, and also conscious that the use of the domain could cause confusion between internet users as to the real identity of the holder of the domain …..… Obviously, the mere acquisition of a domain name does not in itself accredit the Respondent’s legitimate interest. Furthermore, in keeping with some of the panel’s decisions, which need not be mentioned at this point, the previously existing renown of the distinctive signs causes the burden of proof to fall on the holder of the domain, who, given that it would be impossible for the complainant to do so, is in a better position to prove his good faith, which he must do, and in so doing, his legitimate interests.”
B. Respondent
The Respondent did not submit any Response.
6. Discussion and Findings
The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. According to paragraph 14 (a) of the Rules, where there is a failure by the respondent to provide a response to the allegations of the complainant, as in the present case, the Panel is directed to make a decision on the administrative proceedings on the basis of the complaint and in accordance with Paragraph 14 (b), the Panel shall “draw such inferences there from as it considers appropriate”.
The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. If the Respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the Respondent, or that he accepts the claims of the Complainant, or even that he does not wish to respond or defend his perceived interest in the trademark. In such case of silence by the Respondent, the Complainant shall then continue with his case and shall have to prove the three elements that are required by the Policy. (See Easyjet Airline Company Ltd. v. Andrew Steggles, WIPO Case No. D2000-0024 and Franpin, S.A. v. Paint Tools, S.L,. WIPO Case No. D2000-0052).
The Panel should not decide in the complainant’s favor solely because of the reason of the respondent’s default (See Cortefiel S.A. v. Miguel Garcìa Quintas, WIPO Case No. D2000-0140). Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements of its case:
(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, this Panel must “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
(a) The Complainant has the Right to the Mark/Domain Name and the Respondent’s Domain Name is Identical or Confusingly Similar
The Panel has looked at the Complainant’s attached printouts from various websites, annual reports, trademark certificates and various newspaper articles relating to the Complainant and finds that the Complainant owns valid and subsisting rights as well as trademark registrations in the mark LA CAIXA and a number of trademarks including as their distinctive element the term “La Caixa” as set out in the Complainant’s contentions.
The Panel finds that the Complainant, as the registered proprietor of the LA CAIXA trademarks, has established rights in those trademarks, sufficient for the purposes of paragraph 4(a) of the Rules. The Panel finds that there is a confusing similarity between the Complainant’s LA CAIXA trademarks and the disputed domain name. The test as to what constitutes “confusing similarity” in such proceedings as these, in the Panel’s opinion, is whether or not an informed potential customer of the rightful services would, during the process of looking at the domain name, reasonably believe that the website to be accessed was operated by, or on behalf of the owner of a trademark in connection with that owner’s business. The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer by enabling him to distinguish the product or service from others which had another origin. Thus, a risk that the public might believe that the goods or services in question came from the same or economically linked undertakings constituted a likelihood of confusion. See Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc, European Court of Justice decision [1999] RPC 117. See also PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700.
The likelihood of confusion has to be appreciated globally, taking account of all relevant factors and the more distinctive the earlier mark the greater would be the likelihood of confusion. Where the association between the domain name and the trademark would cause the end user to believe wrongly that the respective services came from the same or economically linked undertakings, there would be a likelihood of confusion. See Ellerman Investments Ltd and another v. C-Vanci [2006] EWHC 1442 and see PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700. The use of a dash/hyphen in the disputed domain name does not render the domain name sufficiently different from the Complainant’s LA CAIXA trademarks. See PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700. The Panel concludes that the Complainant has established paragraph 4(a)(i) of the Policy.
(b) The Respondent has no rights or legitimate interests in respect of the domain name
According to paragraph 4(b) (ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy sets out three elements, any of which shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The Complainant has established prima facie evidence that none of the three elements establishing legitimate interests or rights mentioned in paragraph 4(a)(ii) of the Policy applies. In such instance, the burden of proof shifts onto the Respondent to rebut the evidence (see Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806.) In this case, the Respondent has not done so.
The Respondent does not appear to have registered the disputed domain name in connection with a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use pursuant to Paragraph 4(c)(iii) of the Policy. See PRL USA Holdings, Inc. v. Lucas Cobb, WIPO Case No. D2006-0162. The disputed domain name resolves to what appears to be a parked website containing a number of generic links to hotel advertisements. It does not appear to be actively in use.
Where, as here, the Complainant’s marks and name are so well-known and so widely recognized, and have been used in connection in the banking industry in Spain and other countries for so many years, any prospect of legitimate use by the Respondent is highly unlikely.
The Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain name and, accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
(c) Registration and Use in Bad Faith
Paragraph 4(b)(iv) of the Policy provides that one of the circumstances evidencing registration and use of a domain name in bad faith is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line locations, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product or service on the respondent’s web site or location. See PRL USA Holdings, Inc. v. Yan Shif , WIPO Case No. 2006-0700 and Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163 (“The domain name is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”)
Registration of a domain name that is confusingly similar or identical to a famous trademark by any entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use (See Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319). In addition, the Respondent appears to be making commercial gain derived from click-through revenie resulting from confusion of the disputed domain name with the Complainant’s LA CAIXA marks.
The Panel does find that in view of the submitted evidence, and in the specific circumstances of this case, there is a very strong inference that the Respondent’s purpose in registering and subsequently using the disputed domain name was for commercial gain and in bad faith within the meaning of the Policy.
The Panel finds that the Complainant has established that the disputed domain name was registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <la-caixa.info> be transferred to the Complainant.
Dr. Colin Yee Cheng Ong
Sole Panelist
Dated: August 29, 2006