WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Caja de Ahorros Y Monte de Piedad de Las Baleares v. Sa Nostra QC Case No. D2010-0062 1. The Parties
The Complainant is Caja de Ahorros Y Monte de Piedad de Las Baleares of Palma de Mallorca, Spain, represented by INTERDOMAIN, S.A., Spain.
The Respondent is Sa Nostra QC of Quebec, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2010. On January 14, 2010, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain name. On January 19, 2010, R Corp. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 10, 2010.
The Center appointed John Swinson as the sole panelist in this matter on February 18, 2010. 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 operates a banking and financial services business known as “Sa Nostra” or “Sa Nostra Caixa de Balears”, which is based in the Balearic Islands in the Mediterranean sea.
The Complainant owns a number of Spanish trade mark registrations which contain or consist of the term “Sa Nostra”, and many of these trade mark registrations have been in existence for more than a decade. The Complainant also owns a Community Trade Mark (Registration No. 000274647) for a graphic representation of “SA NOSTRA” CAIXA DE BALEARS which was filed on July 16, 1996.
The disputed domain name was first created on May 26, 2004.
The website operating from the disputed domain name provides a search mechanism, but also contains a list of links relating to subjects such as “banking”, “online banking”, “credit cards”, “mortgages” and “business credit”. Clicking on these links takes a user to sponsored listings, the majority of which are related to the financial services industry.
The Respondent appears to reside in Canada. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
The Complainant (also known as Sa Nostra) is one of the oldest banks in Spain. It was founded in 1822 and currently provides banking services to more than 650,000 clients.
The Complainant owns a number of Spanish trade marks, including Trade Mark numbers 2101127, 2101128, 2101129 and 2101130 (in force from June 26, 1997) for “SA NOSTRA”, and Community Trade Mark number 000274647 (in force from July 16, 1996) for “SA NOSTRA” CAIXA DE BALEARS. The Complainant owns a number of other Spanish trade mark registrations which include the term “Sa Nostra” as well as other terms such as “Caja De Baleares” or “D'or”.
The Complainant owns exclusive rights over the mark “SA NOSTRA” due to its trade mark registrations. The Complainant also owns a large number of domain names containing the term “Sa Nostra”. For example, the Complainant is the registrant for the domain name (and has been since January 12, 1997), and the and domain names (since February 17, 2000).
The disputed domain name contains the Complainant's “SA NOSTRA” trade mark in its entirety.
The trade mark “SA NOSTRA” has been associated with the Complainant's business for more than a century. When conducting an Internet search for “Sa Nostra”, the first one hundred results received relate to or are connected with the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain name because:
- The term “Sa Nostra” is written in Balearic, which is a kind of dialect derived from the Catalonian language, meaning “The ours (bank)” in English and “La nuestra” in Spanish. Use of this dialect is strictly limited to Balearic Islands and the term does not have a meaning in any other language.
- The Respondent seems to have created the name “Sa Nostra QC” to avoid any complaint from the original owner of the mark “SA NOSTRA”, creating the false impression that it is legitimated to hold the disputed domain name. The use of “QC” with the Complainant's trade mark may be understood as meaning a Canadian branch (QC standing for Quebec) of the Complainant, even though the Complainant has no presence in Canada.
- The Respondent is acting as a professional cybersquatter. The Respondent has followed a pattern of registering domain names by declaring itself as an entity holding the same name as the domain name applied for.
- The Complainant is the sole owner of the “SA NOSTRA” trade mark.
There is a high probability that the Respondent knows of the Complainant and its activities, and the registration of the disputed domain name is a clear act of cyber occupation. The term “Sa Nostra” is written in a specific dialect used within a very narrow territory. The Respondent seems to be located in Canada and therefore is unlikely to have access to this language.
The disputed domain name is clearly registered to be monetized and auctioned. The disputed domain name is currently for sale for USD 999.
The Respondent is a “professional domainer”, and owns a large portfolio of domain names. The links displayed on the website at the disputed domain name are not included by chance, and certain links relate to financial banking services, or links to “CA NOSTRA”. If the Respondent is responsible for choosing these links, it is clear evidence of bad faith as monetization is being made trading off the Complainant's rights.
The disputed domain name is being retained with no use, and for the only purpose of a further resale to the Complainant.
The Respondent has used the file ROBOTS.TXT in relation to the disputed domain name, to block any crawling of the website by tools such as WayBack Machine, denying the Complainant the opportunity to collect evidence relating to its past use. The Complainant has attempted to collect evidence for the past two years in relation to the disputed domain name, but this has been impossible.
The Respondent appears to be the true owner of the following domain names, which are registered in the name of the corresponding registrant:
- - CandyWorld QC
- - Garbanzo's Quebec
- - Youville Blog
- - Renesse Travel
The Complainant has evidence of the Respondent's email accounts and telephone numbers being tied to two thousand other domain names, and therefore the only reasonable conclusion is that the Respondent is a professional cybersquatter.
Passive holding of the disputed domain name by the Respondent also leads to a finding of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall 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 provides that a complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or a service in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proof lies with the complainant to establish that all these three elements are satisfied. A. Identical or Confusingly Similar
The Complainant owns a large number of registered trade marks in Spain (where it predominantly carries on its business) which consist of or incorporate the term “SA NOSTRA”. (See, for example, trade mark registration numbers 2686560, 2716107, 2804839, 2804841 and 2808265). The Complainant owns Spanish trade mark registrations for the term “SA NOSTRA” on its own, as well as in combination with other words, such as “SA NOSTRA D'OR” and “SA NOSTRA” CAJA DE BALEARES. The Complainant also has a Community Trade Mark registration for “SA NOSTRA” CAIXA DE BALEARS (Trade Mark No. 000274647).
The Complainant's trade mark registrations are longstanding, with many of the Spanish trade marks being registered in the early 1990s.
The Complainant clearly has registered trade mark rights in the trade mark “SA NOSTRA” (see Spanish trade mark numbers 2101127, 2101128, 2101129 and 2101130 which all cover the word mark “SA NOSTRA” on its own). The disputed domain name consists of this trade mark, together with the “.com” suffix which is of no relevance to the comparison. Accordingly, the disputed domain name is identical to a trade mark in which the Complainant has rights.
The first element of the Policy has been met. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“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 your 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.”
The evidence in this case shows that the Respondent has used the disputed domain name to publish sponsored links for third party websites, where the links promote financial goods or services. For example, one search heading published on the Respondent's website was for “Money Market Account”, which leads to a number of sponsored listings for businesses who provide banking products (such as Citibank).
Often the sponsored links published will be links to the Complainant's competitors' websites, and given the nature of sponsored listings, it is possible that links could be provided to the Complainant's own website. It is well established that this type of use of a domain name, which in effect trades off the Complainant's reputation and trade mark, and offers goods and services which compete with the Complainant, is not bona fide. (See for example, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847; BR IP Holder LLC v. Registrant [1966810]: Tech Administrator,WIPO Case No. D2009-1358). Such use is also obviously not legitimate noncommercial or fair use of the disputed domain name either, as the Respondent is entitled to receive a commercial benefit from the use of sponsored listings.
The Respondent has not been given any licence or other authorisation to use the Complainant's trade marks in the disputed domain name. However, the Respondent's name is “Sa Nostra QC”, which raises the issue of whether the Respondent is commonly known by the disputed domain name.
On this matter, the Complainant has put forward evidence which indicates that the Respondent engages in a pattern of behaviour of registering domain names, in the name of a fictional company or business. The name of the fictional company or business incorporates the domain name. The Complainant appears to have conducted extensive investigations in this regard, and the Panel accepts the Complainant's allegation that the Respondent engages in this type of behaviour in an attempt to hide behind paragraph 4(c)(ii) of the Policy. There is no evidence that “Sa Nostra QC” is a genuine trading business or company, which was created for bona fide purposes without any knowledge of the Complainant's business. The Panel can infer that the Respondent registered the disputed domain name in the name of “Sa Nostra QC” primarily for the purpose of avoiding UDPR proceedings; that the Respondent is not commonly known by the disputed domain name and is unlikely to trade or conduct any operations under that name; and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent, by defaulting in filing a response in the present proceedings, has not provided evidence of any circumstance which would convince the Panel otherwise.
Accordingly the second element under the Policy has been met. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(b)(iv) refers to circumstances where a respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website.
The Panel considers that such circumstances exist in this case, providing evidence of bad faith.
The Panel understands that “Sa Nostra” is not a common term, and is specific to a particular dialect originating from relatively small area of the Balearic Islands. The term is therefore in a language which is foreign to the Respondent, who appears to reside in Quebec, Canada. There is no other evidence that this term has any other meaning, or is used by third parties in relation to goods or services unrelated to the Complainant. Rather, all use of the term “Sa Nostra” appears to relate to the Complainant and its business activities.
As such, the Panel finds it extremely unlikely that the Respondent would have chosen the term “Sa Nostra” to comprise its domain name in good faith, without any knowledge of the Complainant's rights in the “SA NOSTRA” trade mark.
By using the Complainant's trade mark in its entirety without modification, the Respondent has created a likelihood of confusion with the Complainant, and its trade marks and websites.
The Panel accepts that the Respondent was and still is providing sponsored links from the disputed domain name, with an intention to receive commercial gain.
The Complainant has raised many other arguments of bad faith on the part of the Respondent, such as the contention that the disputed domain name has been listed for sale for USD 999, and that the Respondent is a “professional domainer” who engages in a number of bad faith practices such as creating false WhoIs contact information to mirror the domain name registered. The Complainant also contends that the Respondent has been passively holding the disputed domain name for five years. In light of the above finding of registration and use of the disputed domain name in bad faith, the Panel does not consider it necessary to explore each of these additional grounds of bad faith. However, based on the evidence provided by the Complainant, the Panel is of the view that the Respondent has engaged in several acts of bad faith.
For the reasons set out above, the Panel finds that the third element of the Policy has been established, in that the Respondent registered and has used the disputed domain name 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 domain name be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: March 4, 2010
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