WIPO Domain Name Decision D2002-0026 for caja-madrid.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caja de Ahorros y Monte de Piedad de Madrid v. D. Manuel Rojo Dosaujos

Case No. D2002-0026

1. The Parties

1.1 The Complainant is Caja de Ahorros y Monte de Piedad de Madrid �Caja Madrid-, seated in Plaza Celenque, no. 2, 28013 Madrid, Spain.

The authorized representative for the administrative proceeding is Mr. Luis Martín Cubillo, as stated in the Complaint.

1.2 The Respondent is Mr. Manuel Rojo Dosaujos, domiciled, as stated in the registration of the domain name, in Almogavares, 7, 30-10, 08915 Barcelona, Spain.

2. The Domain Names and Registrar

2.1. The domain name in the Complaint is .

2.2. The Registrar of the domain name is Internet Names WorldWide, seated in Australia, Level 2, 120 King Street, 3000 Melbourne, Victoria, Australia.

3. Procedural History

3.1. A Complaint, in accordance with the "Uniform Domain Name Dispute Resolution Policy", hereinafter "the Policy", as implemented by ICANN on August 26, 1999, and under the Rules, similarly implemented by ICANN for such Policy, hereinafter "the Rules", was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center, hereinafter "the Center", on January 11, 2002, and confirmed by mail on January 16, 2002, the receipt of which was acknowledged by the Center on January 17, 2002.

3.2. The registration data were verified on January 21, 2002, and on January 31, 2002, the Complaint was notified to the Respondent, who did not answer it within the term established, i.e. February 26, 2002. On that date, the Center sent to the other party a notification of Respondent default.

3.3. Finally, in accordance with the request of the complainant that the dispute was settled by a Panel composed of a sole Panelist, the Center invited María Baylos to act as the sole Panelist of the Group of Experts in this proceeding.

3.4. After forwarding the relevant declaration of impartiality and independence, the Center appointed María Baylos as sole Panelist of the Administrative Group of Experts and on March 18, 2002, sent a notification to the remaining parties to this proceeding informing them about such appointment and fixing April 1, 2002, as due date for the reception of the Decision.

3.5. In the Complaint, no reference is made to the language of the proceeding. However, Art. 11 of the "Rules", establishes that the language of the administrative proceeding will be the language of the registration agreement unless the parties agree it otherwise or the Group of Experts, making use of the faculty granted by such article, determine the language. In this case, the language of the registration decision is English and, furthermore, the Complaint was filed in English as well as most of the related documentation and the Respondent has not answer to it.

For the above reasons, the Panel understands that the language of the proceeding should be English.

4. Factual Background

4.1. The Complainant is the Spanish entity Caja de Ahorros y Monte de Piedad de Madrid, a well known Spanish bank, founded in 1702 as a Pawnbroking institution, and in 1838 as a Savings Bank and both became a single institution in 1869.

It was registered with the Mercantile Registry of Madrid (Spain) in 1992 and is also registered with the Special Registry of Savings Banks of the Spanish Ministry of Economy and Finance. All in accordance with annex no. I attached to the complaint.

This entity is the holder of the following trademarks registered with the Spanish Patent and Trademark Office, currently in force:

- cajamadrid No.: 1.131.973(9)

- Caja de Madrid No.: 1.130.105 (8)

- CAJA MADRID No.: 2.107.959 (5)

- Caja de Ahorros y Monte de Piedad de Madrid No.: 971.361

Annexe no. IV includes a Certificate of all these trademarks issued by the Spanish Patent and Trademark Office.

The complainant is also the holder of the domain name , from where the trademark "CAJA MADRID" has its presence in the Net.

4.2. The Respondent is Mr. Manuel Rojo Dosaujos, domiciled, in accordance with the "Whois" database, in Almogávares, 7, 3�, 1�, 08915 Badalona, Barcelona, Spain.

Such Respondent is the holder of the Domain name under dispute, .

5. Parties� Contentions

5.1. Complainant

The Complainant affirms:

- That it is a prestigious Spanish bank, generally known under the name CAJA MADRID, established in 1702 in Madrid, (Spain). It is registered as a Savings Bank with the Bank of Spain and is a member of the Deposit Guarantee Fund for Savings Banks.

- That it is one of the largest and oldest Spanish financial institutions, ranking fourth at national level and is the first bank of the Autonomous Community of Madrid.

- That it operates in Spain, Portugal, Cuba and Ireland and is used approximately by 5,000,000 clients.

- That it has developed significant electronic banking activities through the domain , which is the URL address accessed by Net surfers to find out information about CAJA MADRID and its services.

- That, furthermore, the Complainant is well known both at national and international level, not only for its banking and financial services but also for its broad range of activities related to the sponsorship of cultural and sports events, the most significant ones being listed in the complaint. Similarly, the entity is engaged in different activities related to education, promotion of scientific research and environment.

- That the Respondent in the website offers different products and services through various links and banners, as it can be appreciated in annexe VII to the Complaint.

- That the URL of the Respondent is identical and confusingly similar to the trademarks of the Complainant that include the term CAJA MADRID.

- That the trademark CAJA MADRID is distinctive and is the name by which the products and services offered by the Complainant are known and is used for advertising purposes in Spain and abroad.

- That thanks to this aggressive publicity, the name CAJA MADRID is automatically associated to the Complainant by clients and public in general

- That the inclusion of the hyphen is an insignificant difference that does not avoid the confusing similarity with the trademarks and brands registered by the Complainant.

- That both the Complainant and the Respondent belong to the same cultural, linguistic and geographical area where the term "CAJA" when linked to a business activity is associated with the financial services that are the main activity of the Complainant.

- That when Net surfers enter the URL they expect to find the services normally offered by CAJA MADRID through its electronic banking services that have nothing to do with the pornographic material, banners and links that are displayed on such URL.

- That the Complainant has a legitimate interest in the domain name since it is the name known by its clients and the public in general.

- That the Respondent is not known as a company, either as an individual or corporation, related to the term CAJA MADRID to offer services and products to the market and has neither registered such domain name as a trademark.

- That according to the provisions of the Spanish national rules governing the ".es" Territorial Code, CAJA MADRID registered the domain name which is identical to the domain name of this proceeding which evidences the interest of the Complainant in such name since the Respondent has no legitimate interest or right on such registered domain.

- That the Respondent is using in bad faith the domain with the object of soliciting netsurfers for commercial purposes, taking advantage of the goodwill of the complainant.

- That such bad faith is also derived from the evident knowledge of the renown institution CAJA MADRID on the part of the Respondent.

- That on August 3, 2001, the Complainant sent a warning letter to the Respondent and to his technical contact, after having checked the "Whois" database, the contents of which are included in Annexe VI to the complaint. In such warning letter, the Respondent was ordered to stop using the name and the trademark CAJA MADRID; to cancel all present or future information that he could send through the Domain name ; to cancel the Websites and Domain name and all the e-mails containing the name , and to notify such cancellation to CAJA MADRID within 8 days upon the reception of the warning letter.

- That the Domain name be transferred to the Complainant.

5.2. Respondent

The Respondent has not responded to the Complaint despite the fact that, in accordance with the documentation filed in the proceeding, the Complaint had been notified on January 31, 2002, and having expressly submitted to the Dispute Resolution Policy implemented by ICANN on October 24, 1999, as stated in the registration agreement attached as Annexe II to the Complaint.

There is neither an evidence of the fact that the Respondent has answered the warning letter sent by the Complainant before the filing of this Complaint, despite the fact that Mr. Carlos Bataller, Notary Public of Badalona, had personally delivered such warning letter to the Respondent, as stated in the certificate prepared to that effect on August 8, 2001, attached as Annexe VI to this Complaint.

The first contact of the Respondent with this proceeding took place through a first e-mail sent to the Center on February 27, 2002, stating his surprise when he received the notification of Respondent default. Such e-mail message is included in the documentation sent by the Center to this Panel and is manually identified as number 6.

The Center approached the Respondent through the Case Manager, and put itself at his disposal.

Finally, that February 27, 2002, the Respondent responded to the Center alleging a series of excuses to refuse to transfer the Domain name to the Complainant, as stated in the private document sent by the Center to this Panel and manually identified as number 7.

6. Discussion and Findings

6.1. Applicable rules

Section 15.a) of the Rules entrusts the Panel with the resolution of the Complaint on the basis of:

- The statements and the documentation filed by the parties.

- The provisions of the Policy and the Rules themselves.

- Any Rules and Legal principles that the Panel considers applicable.

6.2. Analysis of the elements established in section 4.a) of the Policy

They are:

- That the domain name registered by the respondent is identical or confusingly similar to a trademark of products or services on which the Complainant has rights.

- That the Respondent lacks any right or legitimate interest in the domain name, and

- That the domain name has been registered and used in bad faith.

6.2.1. Analysis of the identify or similarity between the Domain name and the trademarks

The Complainant has evidenced to this Panel that it is the holder of different trademarks consisting of the name CAJA MADRID, registered with the Spanish Patent and Trademark Office and currently in force.

The name that constitutes the domain name is practically identical to the trademarks "cajamadrid" or "Caja de Madrid" of the Complainant, since the hyphen is not a distinguishing element and neither the ".com" extension, which indicates the first level generic code.

Therefore, in the opinion of this Panel, it is evident the confusion that could undoubtedly derive from the coexistence of the Domain name and the trademarks "CAJA MADRID" or "Caja de Madrid" of the Complainant.

For the above reasons, this Panel understands that the first requisite called for by section 4 paragraph (a)(ii) of the Policy is met.

6.2.2. Analysis of the eventual existence of a right or legitimate interest on the part of the Respondent in the domain name of this proceeding

From the factual background it can be inferred that the Respondent lacks any authorization or license to use the trademark of the Complainant as domain name, and he is neither known as a company in connection with the name CAJA MADRID.

Furthermore, the Respondent could have responded to the warning letter sent by the Complainant, stating his reasons to use the domain name in question, thereby evidencing the existence of a right or legitimate interest, but there is no evidence of such response. Consequently, it must be understood that the Respondent kept silent and ignored the warning letter.

Similarly, the absence of the Respondent in this proceeding evidences the non existence of a right or legitimate interest in the name CAJA MADRID.

Furthermore, the fact that there is no eventual authorization, right or legitimate interest in the registration and use of the domain name stems from the contents of the e-mail sent by the Respondent himself to the Center on February 27, 2002, when stating that he acquired the domain without problems and for his spare time but without giving any other justification on the eventual existence of a right or legitimate interest in the name of his Domain name.

Since there is no other circumstance from which the Panel might infer the existence of such right or interest, the conclusion is that the second requisite set out in section 4.a)ii) of the Policy is met.

6.2.3. Analysis of the eventual existence of bad faith in the registration and use of the domain name of this proceeding on the part of the Respondent

Paragraph 4.b) of the Policy establishes the circumstances under which it is possible to understand that there is bad faith in the registration and use of the domain name in question. The Panel will independently consider whether, in the light of such circumstances and the specific circumstances of this case, there was bad faith in the registration and whether such bad faith is also present in the use of the domain name.

a) Bad faith registration

To determine whether the registration of a domain name has been made in bad faith, it should be taken into account the knowledge that the holder of the domain had about the Complainant and its trademarks at that time. The domain was registered on March 10, 2000, and there is no doubt that on that date the Respondent knew the name and the trademarks of the complainant owing to the fact that both had the same nationality and residence. In fact, the prestige of the name CAJA MADRID, at least in Spain, is obvious as evidenced in the Complaint and justified through the supporting documentation.

Trademarks as these ones must enjoy a special protection against their eventual exploitation by third parties that use others� prestige in their own benefit, as set out in paragraphs 246 and 262 of WIPO�s first report related to the domain names in the Internet and dated April 30, 1999.

Therefore, one cannot pretend, as alleged by the Respondent in his e-mail dated February 27, 2002, that the fact that he had no problems to access the domain name in question legitimates his behavior since he was conscious that he was registering a domain identical to the famous trademarks of the well known Spanish bank, Caja de Ahorros y Monte de Piedad de Madrid, whose advertising is massively made under the name CAJA MADRID which is registered as a trademark.

In such e-mail, the Respondent also acknowledges such knowledge since he presents the Complainant as a "powerful" entity that pretends to dispossess him of what, in his opinion, belongs to him.

When affirming this, the Respondent does not take into consideration that nobody can safely claim as his own a name that belongs to a third party and register it as a Domain name, even if it is available and, even more as in this case, if it is public and notorious that we are talking about a famous Spanish banking institution known in the market through the same name as the one that the Respondent has registered as domain name.

These circumstances lead the Panel to consider that the registration of the domain name was made in bad faith.

b) Use of bad faith

To judge whether such circumstance exists, it is necessary to examine the behavior of the Respondent since the registration of the domain name.

As stated in the Notarial Certificate issued on August 2, 2001, by Mr. Santiago Mora, Notary Public of Madrid, (annexe I to the Complaint), the website of the Respondent contains a series of banners and links to different websites with a content aimed at adults.

It is evident that the activities of the Complainant are far away from the information and services offered by the Respondent through his domain name. It would not be surprising that the surfer or even the clients of the Complainant enter the name CAJA MADRID with the ".com" extension of the Respondent to obtain information about CAJA MADRID or to use its electronic banking services and mistakenly access a page the contents of which represent an outrage against the prestige and reliability of the Complainant.

Consequently, such use of the contested domain name represents an action against good faith since undoubtedly the wish and aim are to attract surfers to oneself�s page taking advantage of the good name and notoriety of the trademarks of the Complainant possibly to make a profit because, otherwise, such links to pages that offer information and services through a subscription and the payment of certain amounts would have no sense.

The Panel has had the possibility of accessing the contents of the pages linked to the Web of the Respondent by entering the addresses that appear in the Notarial Certificate since, currently, it is not possible to access the page of the Respondent because it is not active either because he so wishes or owing to technical problems. In any case, the fact that the Domain name is not being currently used by the Respondent does not offset the bad faith in the use since even the mere passive holding of a domain that is in conflict with the trademark of a third party also represents a bad faith use because it prevents the legitimate and true holder of the trademark to access the Net with the generic extension desired.

Therefore, since there is also a bad faith in the use, the Panel considers that the third requisite of article 4.(a)(iii) of the Policy has been met.

7. Decision

In view of the above circumstances and facts, this Panel decides that the Complainant has evidenced the existence of the three necessary requisites mentioned in paragraph 4.(a) of the Policy and, therefore, in accordance with paragraphs 4.(i) of the Policy and 15 of the Rules, requires that the domain name be transferred to the Complainant, Caja de Ahorros y Monte de Piedad de Madrid.

María Baylos
Sole Panelist

Dated: April 1, 2001

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