The Complainant is Caixa d'Estalvis de Catalunya, Tarragona i Manresa (commercially known as Catalunya Caixa) ("Catalunya Caixa") and Catalunya Banc, S.A. (commercially known as Catalunya Banc) ("Catalunya Banc"), both of Barcelona, Spain, represented by UBILIBET, Spain.
The Respondent is P1ESOFT.COM of Miami, Florida, United States of America ("US"). 2. The Domain Names and Registrar
The disputed domain names and (the "Disputed Domain Names") are registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2012. On January 17, 2012, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain names. On January 18, 2012, OnlineNic, Inc. d/b/a China-C 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 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2012.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 22, 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 Catalunya Caixa is a Spanish bank that was founded in July 2010 as a result of a merger between Caixa Catalunya, Caixa Tarragona and Caixa Manresa. Since September 27, 2011, Catalunya Caixa's has delegated its financial business to Catalunya Banc, which was subsequently incorporated as a wholly owned subsidiary of Catalunya Caixa in or about June 2011. Catalunya Caixa owns community trade mark registrations for CATALUNYA CAIXA and CATALUNYA BANC in Europe dating from January 2011 and June 2011 respectively. Catalunya Caixa also holds registrations for numerous domain names that incorporate its CATALUNYA BANC trade mark (including , , , , , and ), which registrations date from January 2011.
The Respondent appears to be an entity located in the US. The Disputed Domain Names were registered by the Respondent on December 23, 2010. As at the date of this decision, the Disputed Domain Names resolve to landing pages featuring miscellaneous sponsored links and advertisements (the "Websites"). 5. Parties’ Contentions A. Complainants
The Complainants' contentions can be summarised as follows:
(a) The Disputed Domain Names are confusingly similar to the Complainants' CATALUNYA BANC mark, in which the Complainants have rights:
(i) the Complainant Catalunya Caixa is a savings bank founded in July 2010 and the Complainant Catalunya Banc is a wholly owned company of Catalunya Caixa, that has been responsible for its financial business since September 27, 2011;
(ii) Catalunya Caixa is the holder of numerous trade marks for CATALUNYA BANC, which marks are currently in use;
(iii) "Catalunya Banc" is also the corporate name of the Complainant Catalunya Banc, which was incorporated in June 2011;
(iv) the Disputed Domain Names are identical or almost identical to the "Catalunya Banc" corporate name and the CATALUNYA BANC trade marks that the Complainants own;
(v) the Complainant Catalunya Caixa holds numerous registrations for domain names incorporating CATALUNYA BANC, with the effect of causing the majority of Internet users to connect "Catalunya Banc" with the Complainants; and
(vi) CATALUNYA BANC is known nationally and internationally by the general public. Catalunya Banc has more than 4.1 million customers, a network of retail outlets with more than 1,200 branches, and over €81 billion in consolidated assets.
(b) The Respondent does not have legitimate rights or interests in the Disputed Domain Names:
(i) the Respondent is not listed as holding any distinctive mark that incorporates the name "Catalunya Banc" in the US Patent and Trademark Office, the Office for Harmonization in the Internal Market or in the WIPO;
(ii) the Complainants have not granted the Respondent any licence or authorisation to use their trade marks;
(iii) the name "Catalunya Banc" does not identify the Respondent's name;
(iv) the Respondent was never known as "Catalunya Banc" before registering the Disputed Domain Names, nor is it known now by such name;
(v) the Disputed Domain Names have been registered for more than one year, which is more than enough time to create websites, but the Disputed Domain Names are still parked / inactive. As such, the Complainants suspect that the Respondent’s main aim of registering the Disputed Domain Names is to sell them, and the Websites in fact state that the Disputed Domain Names are for sale; and
(vi) the Respondent's non-use of the Disputed Domain Names show that it has no legitimate interests in them.
(c) The Disputed Domain Names have been registered and are being used in bad faith:
(i) the Disputed Domain Names do not make sense per se except in relation to the Complainants. As a result of the foregoing, their registration by a third party cannot be for any reason other than to misappropriate the reputation of the Complainants and it is impossible to maintain that the Respondent's choice of the Disputed Domain Names is a pure coincidence and not intentional;
(ii) as the Disputed Domain Names are identical or almost identical to the "Catalunya Banc" corporate name and the CATALUNYA BANC trade marks that the Complainants own, there is a risk that Internet users may think that they belong to the Complainants or are controlled by the Complainants;
(iii) the name "Catalunya Banc" is well-known and widely recognised, both nationally and internationally, to identify the Complainants. Google searches for the terms "Catalunya Banc" and "Catalunya Caixa" show that thousands of results relate to websites that refer to the Complainants. Online news portals (including those of Bloomberg, Businessweek, and El Paίs) also constantly publish news and advertisements about the Complainants. As such, it is impossible that the Respondent was unaware of the Complainants when registering the Disputed Domain Names;
(iv) in Spain, the strategic change from a savings bank (in Catalan a "Caixa") to a bank (in Catalan and Spanish a "banc"), as adopted by the Complainants in June 2011, has been boosted by the Spanish Government's process of "bancarization". Media began publishing news about "bancarization" of the Spanish savings banks in the beginning of 2010. That is why the Respondent, predicting that Cataluyna Caixa would change from a "Caixa" to a "Banc", registered the Disputed Domain Names;
(v) it is the Respondent's clear intention to prevent the Complainants from legitimately becoming the owner of the Disputed Domain Names so that he can speculate on their sale;
(vi) the Respondent has a broad history of engaging in cybersquatting activity (see Certamen Miss España, S.L. v. P1ESOFT.com,WIPO Case No. D2006-0679; and ATLL Aigües Ter Llobregat v. P1ESOFT.com,WIPO Case No. D2004-0556), which strengthens the finding that the Disputed Domain Names were registered and are being used in bad faith; and
(vii) the very inactivity of the Disputed Domain Names / the Websites is proof of the Respondent's bad faith (see Don Cornelius Productions, Inc. v. Fred Fluker d/b/a Futurevision,WIPO Case No. DTV2001-0026). B. Respondent
The Respondent did not reply to the Complainants’ contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainants. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainants' evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainants to show each of the following three elements:
(a) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;
(b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(c) the Disputed Domain Names have been registered and are being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainants have rights in respect of the CATALUNYA BANC trade mark on the basis of Catalunya Caixa's CTM registration for such mark dated June 9, 2011, in which Catalunya Banc has rights in by virtue of its affiliation with Catalunya Caixa.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case and , should be disregarded (Rohde & Schwartz GmbH & Co. KG v Pertshire Marketing Ltd,WIPO Case No. D2006-0767).
The Disputed Domain Names incorporate the CATALUNYA BANC trade mark in its entirety and in terms of both visual and aural characteristics, is an identical reproduction of the Complainants' trade mark.
The Panel accordingly finds that the Disputed Domain Names are identical to the CATALUNYA BANC mark in which the Complainants have rights, and that element 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent who must discharge the burden of proving that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainants contend that they have not licensed or authorised the Respondent to use their CATALUNYA BANC mark. Further, the Complainants submit that the Respondent does not own any registrations for trade marks incorporating the “Catalunya Banc” name and has never been commonly known by the “Catalunya Banc” name. Accordingly, the Panel finds that the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names and the Respondent has the burden of proving that it does possess such rights or legitimate interests. As no Response has been submitted by the Respondent, the Panel will base its findings in this respect, on inferences that can be reasonably drawn from the Complainants' evidence.
As the Panel accepts that the Complainants have not licensed or otherwise authorised the Respondent to use the CATALUNYA BANC trade mark, the Respondent needs to demonstrate that it acquired rights or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy through use of the Disputed Domain Names in connection with a bona fide offering of goods or services, becoming commonly known by the domain name, or through legitimate, non-commercial or fair use of the domain name.
According to printouts / screenshots of the Websites (contained in the case file) dated November 7, 2011, and from the content of the Websites as at the date of this decision, the Respondent's use of the Websites appears to be minimal, the content of the Websites being limited to miscellaneous sponsored links. The Panel notes that the fact that a website is rudimentary in nature can indicate a lack of rights or legitimate interest in a related domain name by a respondent (see Portland Titles Limited v. Martin Baker,WIPO Case No. DTV 2000-0003). The sponsored links hosted on the Websites relate to miscellaneous goods and services provided by third parties, and there is no evidence of goods or services being offered by the Respondent, bona fide or otherwise, through the Websites.
The consistent presence of sponsored links (or links thereto) on the Website also precludes a finding that the Disputed Domain Name was put to noncommercial or fair use, as the Respondent would presumably receive click-through revenue from each such link that is activated by Internet users. Further, there is no evidence to suggest that the Respondent would be commonly known by the Spanish name “Catalunya Banc”, given that the Respondent is apparently located in the US and not the Catalunya (or Catalonia) region, and is not a bank. There is also no evidence that the name “Catalunya Banc” is descriptive of, or otherwise connected to, the content of the Websites. As such, the Panel finds that no rights or legitimate interests in the Disputed Domain Names can be attributable to the Respondent.
The Panel accordingly finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Names. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainants to establish that the Respondent registered and used the Disputed Domain Names in bad faith.
For the Complainants to make good this claim, the Complainants must satisfy the Panel that the Respondent knew or was likely to have known of the Complainants’ trade mark at time of registration of the Disputed Domain Names. The Panel notes that a cursory search for “catalunya banc” on each of the search engines Google and Yahoo! reveals that the majority of search results relate to the Complainants. This fact, considered together with the Respondent’s choice of the Spanish domain name “Catalunya Banc” despite the fact that the Respondent is apparently neither located in Catalunya (Catalonia) nor a bank, and the fact that the name “catalunya banc” is in no way descriptive of the content of the Websites, renders it more likely than not that the Respondent had notice of the Complainants' CATALUNYA BANC trade mark at the time of registering the Disputed Domain Names. This presumption is further supported by the fact that the Respondent has a history of incorporating Spanish trade marks as domain names in bad faith (see Certamen Miss España, S.L. v. P1ESOFT.com,WIPO Case No. D2006-0679; and ATLL Aigües Ter Llobregat v. P1ESOFT.com,WIPO Case No. D2004-0556).
Although the Panel is mindful of the fact that the CATALUNYA BANC trade mark was registered after the registration of the Disputed Domain Names, the Panel notes that both Catalunya Caixa, and its spin-off company, Catalunya Banc, had commenced operations under their respective names prior to this time (although Catalunya Banc did not formally incorporate until June 2011). It would therefore be reasonable to infer, in the absence of any contentions by the Respondent to the contrary, that the Respondent, an entity that appears to be well-acquainted with and attentive to Spanish trade marks, was aware of the Complainants prior to registering the Disputed Domain Names. Given the Respondent's history, the Panel is further prepared to accept the Complainants' contention that the Respondent registered the Disputed Domain Names opportunistically, anticipating that Catalunya Caixa would formally recapitalise from a "caixa" (a savings bank) to a "banc" (a bank), in line with the Spanish, financial restructuring reforms known as "bancarization", which were publicly announced in 2010. On these cumulative facts, the Panel finds that bad faith registration can be inferred on the part of the Respondent.
Bad faith use of the Disputed Domain Names is indicated by their identical reproduction of the Complainants' CATALUNYA BANC mark and the use of the Websites to host sponsored links. Previous WIPO Panels have found it proper to infer from the existence of such “link farms” that the relevant website operator collects financial remuneration for every sponsored link that is activated by Internet users, and such Panels have established that this practice constitutes bad faith (see Novartis AG v. Jordan Smith / Stanley Pace,WIPO Case No. D2009-1738; and Viacom International Inc. v. Stanley Pace / M Smurth Waite,WIPO Case No. D2010-1149). The Panel concurs with such inferences in finding bad faith on the part of the Respondent, whose minimal use of the Websites, beyond hosting sponsored links, suggests that the Respondent has primarily used the Disputed Domain Names to intentionally attempt to attract, for commercial gain, Internet users to the Websites, by creating a likelihood of confusion with the Complainants' CATALUNYA BANC mark as to source, sponsorship, affiliation, or endorsement of the Websites and/or the services purportedly offered therein.
In these circumstances, the Panel finds that it is clear that the Respondent has registered and is using the Disputed Domain Names in bad faith, and element 4(a)(iii) of the Policy has been satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names, and be transferred to the Complainants.
Gabriela Kennedy
Sole Panelist
Dated: March 7, 2012
Full & Egal Universal Law Academy