WIPO Domain Name Decision D2001-0360 for lakaixa.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caixa d�Estalvis y Pensions de Barcelona ("La Caixa") v. N

Case No. D2001-0360

1. The Parties

Complainant is Caixa d�Estalvis y Pensions de Barcelona, also known as "La Caixa" ("Complainant") of Spain. Respondent is N of Los Gatos, California, USA ("Respondent").

2. The Domain Name and Registrar

The domain name the subject of this Complaint is .

The Registrar is Network Solutions, Inc. The remedy sought by Complainant is transfer of the domain name to Complainant.

3. Procedural History

On March 16, 2001 (by e-mail) and March 20, 2001 (in hard copy), Complainant submitted to the WIPO Center a Complaint under the Uniform Policy and the Uniform Rules (in Spanish). The Panel agrees that payment was properly made, that the Center rightly assessed the Complaint�s compliance with the formal requirements; that Complaint was properly notified in accordance with paragraph 2 (a) of the Rules. On

March 30, 2001, Respondent submitted a Response. The Panel agrees that it was properly constituted and that Panelist submitted a Statement of Acceptance and Declaration of Impartiality. The Panel also acknowledges that no other proceedings are pending before any Justice Court. This Panel is familiar with Spanish language and understands also Catalan. Since the Complaint has been filed in Spanish, and the Response in English, the Panel had a choice between English and Spanish as a language for the Decision, and has chosen English, being the language of the registration agreement

4. Factual Background

Complainant is a well-known Spanish bank, generally known under the name "La Caixa". It has registered a number of trademarks, in different countries, including the words CAIXA or LA CAIXA. At least trademark registrations in Mexico and Andorra, consisting only of the words LA CAIXA, had been obtained before Respondent registered its domain name. Moreover, well beyond the situation of the trademark registrations, the name LA CAIXA is internationally well-known, not only to those familiar with international banking, thanks to a wide range of sport sponsorship activities, including football (soccer), car racing, and other sports. That LA CAIXA is an internationally famous trademark is, in the opinion of this Panel, beyond dispute.

Respondent, N, offers a service of free registration of domain names. The domain names thus registered remain in the name of N and are licensed to the business or individual who has requested them (and to whom N offers, for a fee, a number of additional services). Namezero, thus, is the owner of more than one million domain names, including . This domain name was initially used for a sort of political anti-capitalist parody of the Web site and activities of Complainant. It also offered, directly or indirectly, a number of links, including one to a site where domain names are auctioned. Currently, there is no Web site at www. since the domain name has been disabled by Namezero.

5. Parties� Contentions

A. Complainant

a. Complainant claims that it is generally well-known under the name "LA CAIXA" and is the owner of several trademarks including the words LA CAIXA.

b. Complainant claims that the domain name has been registered by Respondent in bad faith. Respondent can not ignore Complainant�s trademark rights, as it is a well known company. Complainant also claims that Respondent did not have any rights or legitimate interests in respect of the domain name.

c. Complainant claims that the domain name has been used by Respondent (or a party associated with Respondent) in bad faith, either directly or by providing links to Web sites aimed at disparaging Complainant�s business.

B. Respondent

a. Respondent claims that, due to the peculiar way Namezero operates, it has no ability to screen registration requests for the millions of registered trademarks that exist today. However, when disputes arise, they are normally resolved in a week or so.

b. In the present case, the domain name has already been disabled and Namezero has offered to transfer it to Complainant at no costs.

6. Discussion and Findings

A. General Principles

Under paragraph 4 (a) of the Policy, the Panel should be satisfied that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain name;

(iii) the domain name has been registered in bad faith;

(iv) the domain name is being used in bad faith.

B. Namezero�s Way of Operating

Due to Namezero�s way of operating, Namezero, although the formal owner of a huge amount of domain names, is in fact very often a screen for unnamed and unidentified "real" owners. Notwithstanding its protests, Namezero may in fact offer an easy way to infringers to violate trademark rights, yet remain anonymous. As another Panel stated in a previous Namezero case "such company [Namezero] is nevertheless responsible as the acting and registering party, regardless of the fact they were executing mandates or performing acts contemplated within their corporate purposes, whether authorized or ordered as part of their contractual obligation to their customers or by the improper act of their officers or directors. This Panel strongly believes that Respondent being an ICANN accredited Registrar and a leading provider of domain name related services, must be the first to honor the Uniform Domain Name Dispute Resolution Policy when registering domain names under their name. The fact that such registration is made under another party�s request does not release them from responsibility as this will also not occur when performing any other type of illegality" (Telecom Personal, S.A. v. N, Inc., case No. D2001-0015). Furthermore, Namezero�s way of operating places the Panel in the position of having to examine both Namezero�s own defenses and those which may be (hypothetically) raised by Namezero�s "customer". It is in fact the latter�s defenses that the Complaint has tried to anticipate, although (quite understandably) they have not been raised by Namezero in its Response.

C. Application of Paragraph 4 (a) of the Policy

The peculiar situation mentioned under (B) makes it necessary to examine the four criteria of Paragraph 4 (a) of the Policy together. Whilst Namezero has acted as an intermediary, the "real" party interested in the domain name, hidden behind Namezero, intended to register a domain name obviously aimed at a political and cultural criticism of Complainant�s activities, and/or of international banks and capitalism in general. In fact, in several Latin languages, it has become common to substitute the letter "k" to the letter "c" in order to express a left-wing or anarchist protest. For instance, it is not uncommon in Latin countries to see squatters displaying signs advising that a certain building is under "okkupation" (spelled with two "k"s rather than with to "c"s, in the various national language variations), in order to indicate a particular political motivation of the occupation itself. Particularly in the slang of a certain juvenile counterculture, spellings such as "kommunist", "komrade", and so on (again, in various national language variations) are quite common. Their origins may lay in an old expression of political science, "factor K" (from "Kremlin"), in order to indicate the geopolitical significance of Soviet Russia. The Web site originally operating under the domain name , and those reachable through its links, made a quite liberal use of the letter "k" in the above countercultural sense.

"Lakaixa" has been obtained by "translating" the world-famous trademark LA CAIXA into that countercultural jargon, by the familiar procedure of changing a letter "c" into a letter "k". As mentioned earlier, this procedure is not coincidental or neutral, but has acquired a special political significance. It remains however to be seen whether this political meaning is immediately understandable, particularly outside of certain Latin countries, and of a specific countercultural milieu. Although obvious from the earlier version of the Web site www., and known to this Panel, it seems that the precise meaning of the political use of the letter "k" has escaped both Complainant and Respondent (or their attorneys) and certainly is not detailed in the Complaint, nor in the Response. The fact that the countercultural use of the letter "k" is not generally well-known (and certainly not on a worldwide scale) is significant in order to apply the principles of Paragraph 4 (a) of the Policy to the present case.

A significant set of precedents concerns domain names "constructed" in a somewhat similar way, by adding to a famous trademark the word "SUCKS". To quote only some of the decisions rendered in similar cases:

(1) in a U.S. case, Bally Total Fitness v. Faber (29F.Supp. 2d 1161, C.D. Cal. 1998), the Court granted summary judgement in favour of a Defendant that used, within a Web page operated under a different domain name, the expression "BALLYSUCKS" in order to criticize the well-known trademark BALLY. In this case, BALLYSUCKS was not used as part of a domain name, and the Court held that the Defendant did not have a commercial purpose in maintaining the site, devoted to critical comments regarding Bally, and had a valid free speech interest;

(2) In another U.S. case, Lucent Technology, Inc. v. L (95F.Supp. 2d 528, E.D. Vir. 2000), the action was dismissed for lack of jurisdiction, but with dicta that "a successful showing that l is effective parody and/or a cite [sic, obviously for site] for critical commentary would serious undermine the requisite elements for the causes of action at issue in this case";

(3) In Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico (Case No. D2000-0477), the Panel noted that Respondents tried to sell their �SUCKS domain names for a huge amount of money, and found in favour of Complainant;

(4) In Direct Line Group Ltd., Direct Line Insurance Plc., Direct Line Financial Services Ltd., Direct Line Life Insurance Company Ltd, Direct Line Unit Trusts Ltd. Direct Line Group Services Ltd. v. Purge I.T., Purge I.T. Ltd. (Case No. D2000-0583), the Panel also found that Respondents had offered to transfer their �SUCKS domain name for "a five figure sum", although to be paid directly to a charity chosen by Respondents, regarded this as "use in bad faith", and ordered the transfer of the domain name to Complainant;

(5) In a case involving the same Respondents as (4), National Westminster Bank PLC. v. Purge I.T., Purge I.T. Ltd. (Case No. D2000-0636), the Panel also found that the �SUCKS domain name was offered for sale for a significant sum of money, and ordered its transfer to Complainant;

(6) In another Wal-Mart case, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale (Case No. D2000-0662), the Panel found that the Registrant "does not use [the site] for protest but instead offers it for sale for substantially more than the cost of registration", called it a case of "trademark piracy", and ordered the transfer of the domain name to Complainant;

(7) In the case Standard Chartered Plc. v. Purge I.T (by now a familiar Respondent: case No. D2000-0681), the Panel found again that Purge had registered a �SUCKS domain name for the main purposes of selling it, and found in favour of Complainant;

(8) In the Case No. D2000-0997 (Diageo Plc. v. John Zuccarini, individually and t/a Cupcake Patrol), the Panel found that a number of domain names combining the famous trademark GUINNESS with an ending in �SUCKS had been all registered by John Zuccarini, who had a distinguished record as professional cybersquatter, and "wholesaler of Internet domain names" and, although there was no evidence of a specific offer to sell these domain names to Complainant, found nevertheless in favour of the latter;

(9) In the case of Lockheed Martin Corporation v. Dan Parisi (Case No. D2000-1015), the majority of a divided three-member Panel, quoting the U.S. decision Bally (1), expressed disagreement from decisions (3) to (8) and concluded that a Mr. Parisi had a right, under free speech doctrines, to register and use two domain names and to provide link to a free speech Web site where visitors could register their complaints about Corporate America (including against corporations such as Lockheed and Martin Marietta);

(10) In still another Wal-Mart case (Wal-Mart Stores, Inc. v. wallmartcanada and Kenneth J. Harvey: case No. D2000-1104), notwithstanding the involvement of the same Mr. Harvey mentioned in case (3), the outcome was different, in part because of a different interpretation of the Policy by the Panel, but also because "there has been no demand for payment for transfer orf wallmartcanada [the domain name involved]" and, although to a very limited extent, some "criticism" or "parody" of Wal-Mart was in fact offered by the Web site ;

(11) In the case of McLane Company, Inc. v. Fred Craig (Case No. D2000-1455), the Panel addressed the case of a disgruntled former employee of the McLane Company, who had registered and used, inter alia, a domain name in order to criticize its former employer; the Panel found that this use was protected by free speech and proved that Respondent had a "legitimate interest" in his �SUCKS domain name;

(12) In the case TPI Holdings, Inc. v. AFX Communications a/k/a AFX (Case No. D2000-1472), the Panel found that, in general, "a finding that a �sucks�-formative domain name is confusingly similar to a trademark does not automatically flow from a per se rule that �sucks�-formative domain names are confusingly similar to trademarks. The issue is context-specific. (�) �Sucks�-formative domain names are not necessarily confusingly similar to trademarks, nor are they necessarily immunized from confusing similarity". In this case, the resulting domain name was "used to divert Internet traffic to a commercial Web site that directly competes in Complainant�s channel of commerce": the use was regarded as being in bad faith, and transfer of the domain name to Complainant was ordered, notwithstanding the fact that Respondent had offered to transfer itself the domain name to Complainant against a simple reimbursement of its out-of-pocket expenses;

(13) In a French case, Soci�t� Accor contre M. Philippe Hartmann (Case No. D2001-0007), the Panel examined a domain name , allegedly to be used in the future for a site where complaints against the hotels and restaurants of Complainant may be posted. The Panel noted that, at any rate, "under French law, whether a trademark may be freely used for a parody is controversial" and "in the case of a public not speaking English, or even speaking some English but being unfamiliar with the slang, the meaning of the word �sucks� may not be understood, nor its use in order to designate Web sites aimed at �cyberprotest�". The latter comments are particularly significant for our case.

Although Panels have expressed different views about the �SUCKS domain names, in fact their views are more consistent between themselves than it may appear at first sight. The decisions (3), (4), (5), (6), (7) and (8) all refer to cases where the main aim of Respondents was selling their domain names for money, rather than using them for criticizing Complainants. The case (12) is somewhat different, but Respondent was still trying to make a profit by "divert[ing] Internet traffic to a commercial Web site that directly competes in Complainant�s channel of commerce". In all these cases, Panels found in favour of Complainants. As opposite to this, in the U.S. cases (1) and (2), and in the decisions (9), (10) and (11) rendered under the Policy, relief was denied to Complainants, based on the fact that Defendants were really using (to a larger or to a more limited extent) their -SUCKS domain names for the purpose (protected by free speech principles) of criticizing Complainants.

The general principle taught by precedents seems to be that, when a �SUCKS domain name has been registered for the main purpose of making money, it has been registered in bad faith, while when the purpose was really to provide criticism, political or otherwise, a finding of bad faith would not be appropriate.

Should we apply, somewhat automatically, these precedents to our case (assuming, again, that we could "bypass" Namezero and look at the position of its customer), the findings of fact would be somewhat ambiguous. On the one hand, the original Web site operated under the domain name was, in fact, a site critical of capitalism, the international banking system, and Complainant. On the other hand, among the links provided one was directed to a site where domain names were sold and auctioned.

Perhaps the political intent was, however, prevailing, and would have led to conclusions similar to those reached in cases (9), (10) and (11). However, another element should also be taken into account. In the case of , the Panel noted that it is not obvious, given the international character of the Internet, that everybody, in every country of the world, would immediately recognize what "sucks" means. Even most foreigners speaking English would have learned English at school, where the use of words such as "sucks" is certainly not encouraged nor taught. The same argument, it seems to this Panel, applies to our case. Although converting "c"s into "k"s is a way of expressing feelings similar to those expressed by the word "sucks" in English, this practice is part of a countercultural Latin jargon and is unlikely to be understood by most Internet users throughout the world. They would not understand LAKAIXA as a political parody of LA CAIXA, but as something phonetically identical, and graphically confusingly similar, with respect to Complainant�s world-famous trademark LA CAIXA. Respondent (or, rather, Respondent�s customer) could not ignore that, once selected, a domain name would have been perceived as such by a large majority of the international Internet users, and the countercultural meaning of political criticism would have been understood only by a minority.

The criteria of Paragraph 4 (a) of the Policy should, obviously, be interpreted with reference to the majority of the Internet users. In this respect:

(i) the domain name is phonetically almost identical, and graphically confusingly similar, to the trademark and service mark LA CAIXA in which Complainant has a right;

(ii) Respondent Namezero certainly has no rights or legitimate interests in respect of the domain name; the political interest of Namezero�s customer, in turn, may be understood as such only by a minority of Internet users, and as such is not "legitimate";

(iii) Respondent (or Respondent�s customer) should have known both that LAKAIXA looked very much like LA CAIXA, and that the political meaning of substituting a "k" to a "c" would have been understood only by a minority of Internet users; as a conclusion, it registered the domain name in bad faith;

(iv) Even without considering the rather suspicious link to a domain name auction Web site, the initial use of the domain name by Respondent�s customer was in bad faith, since it should have been obvious that the political and countercultural meaning of the use of "k"s in place of "c"s was not immediately understandable by the majority of international Internet users.

The Panel concludes that on all four points of Paragraph 4 (a) of the Policy, and particularly on the four points considered together, Complainant should prevail.

7. Decision

Pursuant to Paragraph 4 (i) of the Policy and Rule 15 of the Uniform Rules, this Panel orders that the domain name be transferred to Complainant.

Dr. Massimo Introvigne
Sole Panelist

Dated: May 3, 2001

Full & Egal Universal Law Academy