WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caixa d’Estalvis i Pensions de Barcelona (“La Caixa”) v. Thomas Walsh
Case No. D2006-0405
1. The Parties
The Complainant is Caixa d’Estalvis i Pensions de Barcelona (“La Caixa”), Barcelona, Spain.
The Respondent is Thomas Walsh, St. Louis, Missouri, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2006. On March 31, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 1, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on April�6,�2006. The Center verified that the Complaint, together with the Amended 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the Amended Complaint, and the proceedings commenced on April 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2006.
The Center appointed Emmanuelle Ragot as the sole panelist in this matter on May�31,�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.
4. Factual Background
The Complainant is La Caixa d’Estalvis i Pensions de Barcelona, a major bank widely known, whose main business is in the field of pensions, banking and financial services. The group is known under the trade name “La Caixa”.
The Complainant has registered, since 1986, numerous trademarks containing as the essential part the term “la caixa” in classes 16, 35, 36, 38 in Spain, Andorra and Mexico.
The Complainant has also registered, since 1995, numerous domain names containing the term “la caixa” to present the company and offer its Internet services.
The domain name was registered on June 12, 2005.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that it owns numerous trademarks, and that it has registered numerous domain names that include the term “la caixa”.
The Respondent has registered and used the disputed domain name which, according to the Complainant, is confusingly similar to the La Caixa group’s trademarks.
The Complainant contends that the Respondent does not hold any registration for the trademark “la caixa” or a similar mark. The Complainant also states that the Respondent does not hold any license or any other type of authorization given by the legitimate holders of said trademarks to use them.
The Complainant also alleges that the Respondent has not made any use whatsoever of the domain name and thus does not use the domain name for a legitimate non-commercial or fair use. The Complainant also contends that the domain name was registered in bad faith, probably for the purpose of selling it for profit.
Accordingly, the Complainant requests the Administrative Panel to issue a decision to transfer the domain name to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
“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”.
Paragraph 4(a) of the Policy states that the Complainant must prove that each of the three following elements are present:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The term “la caixa” is the essential part of numerous trademarks of the Complainant which are registered in several countries.
The disputed domain name is a combination of “bancos” and the trademark LA CAIXA.
The Spanish word “bancos” (banks in English) is used to refer to any financial institution.
Confusion between a trademark and a domain name occurs if the trademark used in the domain name is the distinctive or predominant element (cf. Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002).
In the case at hand, the term “bancos” is a generic term, which does not, in combination with the term “la caixa”, create a new wording of its own.
The combination of the financial term “bancos” and the trademark “la caixa” is likely to create confusion between the trademark and the disputed domain name, particularly as the trademark is precisely used in the financial sector to refer to a particular banking entity.
The Panel notes that the confusion is likely to be enhanced by the fact that the Complainant owns the domain name . It is also likely that the Respondent registered the domain name in order to cause confusion with the Complainant’s domain name , possibly to benefit at some point from typographic errors of Internet users trying to reach the website of the Complainant at “www.”.
The Panel concludes that the domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well established from previous WIPO decisions (cf Croatian Airlines dd v. Modern Empires Internet Ltd, WIPO Case No. D2003-0455) that while the overall burden of proof rests with the complainant, the burden of proof shifts to the respondent where the complainant establishes a prima facie case showing the lack of rights and legitimate interests of the respondent to the disputed domain name. If the respondent fails to rebut the complainant’s case, a complaint is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark or any domain name incorporating the trademark. The Complainant argues that the Respondent has at no time made any commercial use of the disputed domain name, and that the Respondent is not known by the term “bancoslacaixa”. The Panel notes that there appears to be no use being made at all of the domain name , and that no website exists at that address. There is no evidence to suggest that the Respondent is using or making preparation to use the disputed domain name in connection with any bona fide offering of goods or services. Having regard to this, the Panel finds that a prima facie case has been made out in relation to paragraph 4(c) of the Policy.
The Respondent has not submitted any Response and thus failed to demonstrate that he has rights or legitimate interests in the domain name pursuant to paragraph 4(c)(i), 4(c)(ii) or 4(c)(iii) of the Policy.
The Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”.
The Panel notes that the Complainant has not provided any direct evidence to satisfy any of the above four criteria. However, in certain circumstances, the mere passive holding of a domain name may be held to constitute a use of the domain name in bad faith (cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In the case at hand, the Panel considers that the domain name has been registered and used in bad faith. Indeed, the Respondent would in all likelihood have been aware that the term “la caixa” is a well-known name of a banking institution of Spanish origin. This view is corroborated by the fact that the Respondent intentionally associated the term “bancos” to the “la caixa” trademark.
The Panel considers that the domain name has been used in bad faith by passive holding. The particular circumstances of this case which lead to this conclusion are:
(i) The disputed domain name contains a known trademark used in combination with a generic term taken from the sector of activity of the trademark holder. It appears therefore that the Respondent has registered and used the domain name to create an association with the Complainant and use its reputation to attract visitors to the web site to which the disputed domain name resolves and its future content.
The fact that the domain name is identical but for one character to an existing domain name of the Complainant corroborates this view.
(ii) The Respondent has voluntarily chosen not to take advantage of the several possibilities to respond to the allegations of the Complainant by refusing the registered mail of the Complainant, and by not responding within the timeframe to the Complaint. The Respondent did not deny the facts and conclusions asserted by the Complainant.
(iii) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the domain name. Registration of a known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith (cf. Soci�t� pour l’Oeuvre et la M�moire d’Antoine de Saint Exup�ry - Succession Saint Exup�ry - DAgay v. Perlegos Properties, WIPO Case No. D2005-1085).
Given all of these elements, it is hard to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate and not constitute an infringement of the Complainant’s rights.
The Panel concludes that the Respondent’s registration and passive holding of the domain name is a registration and use in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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 domain name be transferred to the Complainant.
Emmanuelle Ragot
Sole Panelist
Dated: June 14, 2006
Full & Egal Universal Law Academy