WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Caixa D’Estalvis I Pensions de Barcelona v. Fastrack Concepts
Case No. D2006-1642
1. The Parties
The Complainant is La Caixa D’Estalvis I Pensions de Barcelona, Barcelona, Spain, represented by Rodes & Sala Abogados, Spain.
The Respondent is Fastrack Concepts, Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December�22,�2006 by e-mail and on January�4,�2007, in hardcopy. On December 27, 2006, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On December�29,�2006, Tucows, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, technical and billing contact. 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”).
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 January�8,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January�28,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January�30,�2007.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on February�7,�2007. 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 trademark upon which the Complaint is based is LA CAIXA. According to the documentary evidence and contentions submitted, Complainant owns a large number of trademark registrations around the world for the name LA CAIXA and for terms close to LA CAIXA, including the trademark CAIXA ON LINE SERVICES. Examples of such registrations are Spanish Trademark and Patent Office (“OEPM”) Registrations Ns. 2.100.533, issued December�5,�1997, 1.054.083, issued March�6,�1987, 1.054.082, issued March�5,�1985, 1.054.081, issued March�6,�1987, 1.053.032, issued March�6,�1987, 836.481, issued December�20,�1978, 836.456, issued April�24,�1978, 1.946.889, issued September�4,�1995, 1.996.117, issued April�22,�1996, 2.158.606, issued September�21,�1998, and 1.168.636, issued April�17,�1989. OEPM Registrations Ns. 2.246.049, issued November�16,�2000, 2.246.050, issued November�11,�2000, and 2.246.051, issued November�16,�2000, relate to trademark CAIXA ON LINE SERVICES. U.S. Trademark Registration N. 1.567.492, issued November�21,�1989, relates to trademark CAIXA DE PENSIONES “LA CAIXA” for banking services. Reference is made to Annexes 4, 5 and 6 of the Complaint.
According to the documentary evidence and contentions submitted, Complainant owns a variety of domain names which incorporate the terms LA CAIXA or CAIXA, including the domain names , , , and . Reference is made to Annexes 7 and 9 of the Complaint.
According to the documentary evidence and contentions submitted, Complainant is the result of the merger in 1990 of Caja de Barcelona, founded in 1844, and Caja de Pensiones, founded in 1904, all of which have been devoted to insurance, financial and related services and constitute one of the leading financial institutions in Spain and within Europe. Further, Complainant is known by the name LA CAIXA, as evidenced by articles of the press and by the results of a search on the keyword LA CAIXA in certain search engines. Reference is made to Annexes 8 and 10 of the Complaint.
The notoriety of “LA CAIXA” sign has been recognized in a number of prior WIPO UDRP decisions, as for instance in Caixa D�Estalvis I Pensions de Barcelona (“La Caixa”) v. Awanebi David, WIPO Case No. D2006-0632 (“the Complainant has a well renowned name in the financial sector in Spain (currently being among the foremost Spanish savings banks) and Europe”); Caixa D�Estalvis I Pensions de Barcelona (“La Caixa”) v. Inversiones G.O.S. S.A., WIPO Case No. D2006-0506 (“El Demandante ha probado que “La Caixa” es en Espa�a una conocid�sima y prestigiosa entidad financiera”); Caixa D�Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464 (“As sufficiently evidenced by the Complainant, the Panel accepts that La Caixa is a well-known and reputable European banking group, which owns trademark registrations for the mark LA CAIXA in Mexico, Andorra and Spain”).
According to the documentary evidence and contentions submitted, Respondent registered the domain name with Tucows, Inc. on April�12,�2006. On May�31,�2006, Complainant sent a letter to Respondent requiring the transfer of the disputed domain name. Reference is made to Annex 11 of the Complaint. Complainant states that Respondent never answered to this letter.
5. Parties’ Contentions
A. Complainant
Complainant argues that the disputed domain name is identical or confusingly similar to the trademarks LA CAIXA and CAIXA ON LINE SERVICES because (i) the word “online” is a descriptive term and the term “lacaixa” is the essential part of the disputed domain name and the registered trademarks, (ii) the term “online” is generally associated with an Internet based service or product and the combination of that term with “lacaixa” is liable to create confusion in the public because of the common practice of attaching the suffix “online” to registered trademarks for indication of a company’s presence on the Internet, (iii) the disputed domain name contains a slight spelling variation (letter “b”) of the term “online”, which variation is not sufficient to avoid confusion and is also a generic word, and (iv) the suffix “.com” does not interfere with the valuation of identity or similarity.
Complainant contends that Respondent does not have legitimate rights or interests regarding the disputed domain name because (i) Respondent is not the owner of any trademark registration protecting the denomination “la caixa” or “caixa on line services”, and is not commonly known by the domain name at issue, (ii) “la caixa” is a term in Catalan language spoken in very few places and the term LA CAIXA is a well-known trademark, (iii) is a variation of the similar domain names owned by Complainant, (iv) Respondent did not respond to Complainant letter of May�31,�2006, and (v) there is no website to which the disputed domain name resolves.
Finally, Complainant argues that Respondent registered the disputed domain name in bad faith because (i) Respondent knew the existence of Complainant, (ii) LA CAIXA is a extremely well-known Spanish financial institution, (iii) Respondent knew that LA CAIXA is, from a commercial point of view, a key point for the Complainant, and (iv) Respondent knew the existence of at least the domain names . Complainant also contends that there is no service or product offered by the Respondent through the domain name in dispute and, relying on previous WIPO UDRP decisions, argues that lack of use or inactivity amounts to use in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No.�D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by the Complainants. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph�4(a) of the Policy to determine whether Complainant has complied with such requirements.
A. Identical or Confusingly Similar
The Panel notes that the issue of similarity involving other comparable domain names and the trademark LA CAIXA was addressed by previous WIPO UDRP decisions in connection with the domain names (Caixa D�Estalvis I Pensions de Barcelona v. N/A, WIPO Case No. D2005-0601), (Caixa D�Estalvis I Pensions de Barcelona v. Young N, WIPO Case No. D2006-0406) and (Caixa D�Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464). In all three decisions the panels decided that the disputed domain names were confusingly similar to the Complainant’s registered trademark.
In addition, it has been consistently decided that the addition of generic and descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the trademark. Sanofi-Aventis v. US-M, WIPO Case No. D2004-0809 (finding that the addition of the words “buy” and “online” does not remove a domain name from being confusingly similar); F. Hoffman La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049 (finding that the words “buy” and “online” are not sufficient to render a domain name dissimilar or to prevent consumer confusion).
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No.�D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582. In this type of combination it is clear that the registered trademark LA CAIXA stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the trademark. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.
As a result, this Panel concludes that the same reasons which warranted the previous WIPO UDRP decisions are applicable in the instant case because (i) Complainant is commonly known as “LA CAIXA” and this term is the essential part of Complainant’s trademarks, (ii) Complainant’s trademark LA CAIXA is included in its entirety in the disputed domain name, (iii) the word “online” is purely descriptive, does not generally affect a finding of similarity where a registered trademark is incorporated into a domain name, and is included in the Complainant’s trademark CAIXA ON LINE SERVICES, and (iv) the addition of the letter “b” is not sufficient to distinguish the Complainant’s trademark from the domain name.
Therefore, the Panel concludes that the domain name is confusingly similar to the trademarks LA CAIXA and CAIXA ON LINE SERVICES in which Complainant has rights. As a result, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Panel finds as reasonable Complainant’s contentions that (i) Respondent is not the owner of any trademark registration protecting the denomination “la caixa” or “caixa on line services”, and is not commonly known by the domain name at issue, and (ii) “la caixa” is a term in Catalan language spoken in very few places and the term LA CAIXA is a well-known trademark.
Also, the fact that Respondent never responded to Complainant’s letter of May�31,�2006, to assert any legitimate right or interest in the disputed domain name and the fact that the domain name is inactive are clear indications that Respondent lacks legitimate rights or interests in the disputed domain name.
The Panel finds that the Complainant has satisfied its burden of providing sufficient evidence to show that Respondent lacks rights to or legitimate interests in the disputed domain name. It has been established by previous WIPO UDRP decisions 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 lack of rights and legitimate interests of the respondent to the disputed domain name”. Caixa D�Estalvis I Pensions de Barcelona v. Young N, supra; Croatia Airlines dd v. Modern Empires Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
Complainant argues, relying on previous WIPO UDRP decisions, that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, without considering other elements.
The Panel is of the opinion that, in light of the reputation of the trademark LA CAIXA and the adoption by Respondent, residing in USA, of a Catalonian word which is confusingly similar to Complainant’s trademarks, Respondent in all likelihood knew of the existence of Complainant’s trademarks and of their relevance in the European market.
It is very unlikely that Respondent would have registered unless Respondent knew (i) of the existence of the domain name and (ii) that the domain name at issue might be of some type of economic advantage. (“knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”). Caixa D�Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, supra; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.
A consumer who finds Respondent’s domain name will likely be confused as to the source of, sponsorship by, affiliation with or endorsement by Complainant. See Pfizer Inc. v. Order Viagra Online, WIPO Case No. D2002-0366, where the panel held that respondent’s motivation was to exploit such inevitable user confusion.
Relying on previous WIPO UDRP decisions, Complainant also argues that “the evidence of the inactivity and lack of use of the disputed domain name amounts to passive holding by the Respondent and a finding in the circumstances of use of bad faith.” See Telstra Corporation Limited v. Nuclear Marshmallos, WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Net Power, Inc., WIPO Case No. D2000-0022; J. Garc�a Carri�n, S.A. v. Mar�a Jos� Catal�n Frias, WIPO Case No. D2000-0239.
The consensus view in the WIPO URDP Panel decisions has been that “[t]he lack of active use of the domain name does not as such prevent a finding of bad faith”, and that a panel must examine such circumstances as “complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 3.2).
The Panel is of the opinion that, under appropriate circumstances, passive holding evidences bad faith use. Bayer Aktiengesellschaft v. Henrik Monssen, WIPO Case No. D2003-0275. In the instant case the majority of the facts referred to above are present and, therefore, the Panel infers that the domain name was registered and used in bad faith
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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.
Manoel J. Pereira dos Santos
Sole Panelist
Dated: February 20, 2007
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