The Complainant is Caja de SegurosReunidos of Madrid, Spain, represented by Ubilibet, Spain.
The Respondent is Milan Kovac of Bratislava, Slovakia; Privacy--P of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HebeiGuojiMaoyi (Shanghai) LTD aka Hebei International Trading (Shanghai) Co., LTD dba HebeiD. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2011. On November 21, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 29, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 1, 2011. On November 29, 2011 the Center transmitted an email communication to the parties in both Slovak and English regarding the language of the proceedings. On November 30, 2011, the Complainant confirmed its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.
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” 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 December 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2011.
The Center appointed George R. F. Souter as the sole panelist in this matter on January 9, 2012. 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 a Spanish insurance company, founded in 1942. It currently has acirca 4.5% share of the Spanish insurance market, 20,000 points of sale throughout Spain, and, in 2010, its turnover was EUR 2,566 million (two thousand, five hundred and sixty-six million EUR).
The Complainant has a number of Spanish national trade mark registrations covering its CASER and CASER SEGUROS trade marks, including CASER SEGUROS, No. 2517969, in Classes 16, 36 and 38, dating from 2002, CASER, Nos. 2447345 and 2517970, in Classes 16 and 36, and 36 respectively, both dating from 2002. It also has a Spanish registration of CASER.COM, No. 2265387, in Class 38, dating from 1999.
It operates a website offering its services at , with international access, and has widely registered domain names including its trade marks CASER and CASER SEGUROS at gTLD level, and ccTLD level.
The disputed domain name was registered on March 2006. 5. Parties’ Contentions A. Complainant
The Complainant contends that it’s CASER and CASER SEGUROS trade marks “are well known fully registered trade marks”, which are “known nationally and internationally by the general public”. They also contend that “the most important on-line and traditional newspapers worldwide constantly publish news and advertisements about Caser”, and have provided some evidence of this usage. They allege that the disputed domain name is confusingly similar to trade marks in which they have rights.
The Complainant also alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and has provided arguments in support of this allegation, with reference to a number of prior UDRP decisions in this connection.
The Complainant contends that their trade mark CASER is a “fantasy” trade mark, and, alone and in combination with the word “seguros”, is “well known and widely recognized, both nationally and internationally, to identify the Complainant”, consequently “it is quite simply impossible that who carried out the registration was unaware of the existence of Caser, a renowned insurance company, at the time that he registered the domain name”, and points to a number of prior UDRP decisions in support of this proposition.
The Complainant further contends that the fact that the disputed domain name has been unused for five years after registration constitutes use in bad faith, and points to a number of UDRP prior decisions in support of this proposition. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name of the Respondent be transferred to the Complainant or be cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel in this case finds that the Complainant’s trade mark CASER, either alone or in combination with SEGUROS, is well known in Spain, and known abroad.
It is well established in decisions under the UDRP that indicators (“.com”, “.info”, “.net”, “.org”) are legally irrelevant to the consideration of confusing similarity between a trade mark and a domain name. In this Panel’s view, all the Respondent has done in this case has been to take the Complainant’s CASER SEGUROS trade marks combination, and add the indicator “.com”. In these circumstances the Panel considers the Complainant’s arguments in relation to confusing similarity to be compelling, and, therefore, finds that the Complainant has satisfied the provisions of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
According to well established UDRP precedents, it is sufficient that a complainant shows a prima facie case that the respondent lacks rights or legitimate interests in the domain name, in order to shift the burden of proof on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the domain name, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel draws the appropriate conclusion. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that the Complainant’s trade mark CASER, alone or in combination with SEGUROS is well known in Spain, and known abroad.
The Panel is of the view that, in the case of a well-known mark, the finding that the Respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel considers that the circumstances of this case as outlined by the Complainant, in which, in its view, the Respondent’s registration of the disputed domain name was the result of pre-knowledge of the Complainant’s well-known trade marks, and was, consequently, opportunistic, are such as to justify a finding that the disputed domain name was registered in bad faith.
The wording of paragraph 4(a)(iii) of the Policy requires, in the Panel’s opinion, also a consideration as to whether the disputed domain name is being used in bad faith.
The Complainant relies, inter alia, on the decision In Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the logic of which has generally been followed by subsequent panels. In that case, the panel considered whether circumstances could exist in which the passive holding of a domain name by the respondent could amount to the respondent acting in bad faith, and concluded that such circumstances could exist. The panel considered four circumstances applying to that case, two of which are non-applicable to the present case, and two of which are, namely that the complainant’s trademark has a strong reputation and is widely known, and that the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name. After examination of the specific circumstances of that case, the panel considered whether it would be possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the complainant’s rights under trademark law. Unable to conceive of such circumstances, the panel concluded that the respondent’s passive holding of the domain name in that particular case satisfied the requirement of paragraph 4(a)(iii) that the domain name "is being used in bad faith" by respondent, the respondent’s passive holding of the domain name in that particular case satisfied the requirement of paragraph 4(a)(iii) that the domain name "is being used in bad faith" by respondent.
In the present case, the Panel is unable to conceive of any plausible or contemplated active use of the disputed domain name that would not be illegitimate in view of the Complainant’s trade mark rights, and, accordingly, finds that the Respondent’s passive holding of the disputed domain name in this case satisfies the requirement of paragraph 4(a)(iii) that the domain name "is being used in bad faith" by Respondent. 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 disputed domain name be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Dated: January 23, 2011
Full & Egal Universal Law Academy