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Caixa d’Estalvis I Pensions de Barcelona v. Steve Martins [2004] GENDND 1227 (7 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caixa d’Estalvis I Pensions de Barcelona v. Steve Martins

Case No. D2004-0515

1. The Parties

The Complainant is Caixa d’Estalvis I Pensions de Barcelona, of Spain.

The Respondent is Steve Martins, of United States of America.

2. The Domain Name and Registrar

The disputed domain name <bancolacaixa.com> is registered with Melbourne IT Ltd.

3. Procedural History

The complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2004. On July 14, 2004, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the domain name at issue. On July 16, 2004, Melbourne IT Ltd. 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”), 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 July 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for response was August 10, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2004.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on August 25, 2004 “The Panel”. 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 owns trademark registration “LA CAIXA” no. 364.159 registered in Mexico in the name of “la Caja de Pensiones para la Vejez y de Ahorros de Cataluña y Baleares”, which merged in 1990, with “La Caja De Barcelona” in the form of the Complainant, and now owns many trademark registrations containing “LA CAIXA” in Spain and other countries.

The Respondent registered the domain name <bancolacaixa.com> on January 19, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant is the result of the merger, in 1990, between “La Caja de Pensiones” founded in 1904, and “La Caja de Barcelona” founded in 1844. At present, it has more than 4,500 offices, 23,000 employees, 6,800 self-service banking terminals and is the first payment network in Spain. It is one of the leading financial institutions of Spain and in the European savings bank sector, with 8.3 million clients at the end of 2002.

Currently, the customer can carry out his banking operations 24 hours a day. A network of 6,791 automatic teller machines and “ServiCaixa” terminals are at its service in Spain. Likewise, the Complainant is a pioneer in the use of the Internet in the Spanish banking industry.

La Caixa D’Estalvis I Pensions de Barcelona operates commercially under the name “La Caixa”. “La Caixa” is the most popular and habitual manner of identifying the Complainant.

The Complainant is the holder of the trademark “LA CAIXA” in Mexico (registered on May 24, 1988, number 364,159, classes 35 and 36) and Andorra (registered on January 24, 1997, number 3,008, classes 16, 35, 36 and 38) and owns many trademark registrations in Spain and in other countries containing “LA CAIXA”.

The Complainant is also the owner of many top-level domain names with the denomination “La Caixa”, which shows an active policy of registering domain names.

The domain name <lacaixa.es> owned by Complainant corresponds to Spain, where NIC-ES allows an individual to register a domain name if it is not “associated to another organisation” and constitutes “proper names or last names, unless (...) it literally corresponds to a trademark or commercial name (...)”

“LA CAIXA” is a famous and registered trademark of the Complainant, who offers and provides financial services. In Spain, if there is a financial entity known as “La Caixa”, it is the Complainant.

The only relevant difference between the domain name and the trademark “LA CAIXA” is the term “Banco”. This term (Bank), is popularly used to refer to any financial entity. For this reason, a consumer will consider Banco La Caixa as the financial institution La Caixa. This confusion is not by chance and this is shown by the fact that, in referring to the term “banco”, Repondent uses the Spanish language, which is spoken by a greater number of internauts than Catalan, the language used in the name La Caixa.

The term “banco” cannot be alleged as indicative of a distinctive element of the registered domain name regarding the trademark of the Complainant, as it is a generic term.

On this subject, there are similar cases, instigated by the Complainant, where the transfer of the domain name in favour of “La Caixa” was ordered: Caixa D’Estalvis I Pensions de Barcelona “La Caixa” v. EnricJosepCaso WIPO Case No. D2001-0438,: The Panel pointed out the fact that “La Caixa” has a stronger right than the respondents; Caixa D’Estalvis I Pensions de Barcelona “La Caixa” v. Gaspar Saludes WIPO Case No. D2001-0437. The panel transferred the domains <caixabanc.com> and <caixabank.org> and <caixabank.net>, respectively. It considers the domain names confusingly similar to the trademark “La Caixa”.

Both cases are similar to the current case since the term “banco” is “banc” in Catalan and in English “bank”.

Respondent offers in its web page financial services and private banking, without being recognised by the competent Authority. Respondent’s web page creates the appearance in the market of a private bank and operates under false and incorrect information. The owner of the domain is a physical person, Steve Martins, which offers reasonable indications to doubt the veracity of its identity. This name appears in the Whois database of the concerned Registrar. All this injures the Complainant and causes risks for its customers.

The similarity of the name and the services offered by the Respondent and the Complainant creates confusion among Internet users who trust the prestige of Complainant.

The Respondent has no rights or legitimate interests in respect of the domain name. There is no record of a financial entity of any kind recognised as “Banco La Caixa” in the European Union, England, Spain and Switzerland, territories in which the web page of the disputed domain name indicates that it operates.

It appears evident that Respondent is trying to confuse the consumer or user, announcing banking services, under a name confusingly similar to the trademarks registered by one of the most renowned companies in this field in Spain and creating a false appearance by using the famous trademark “LA CAIXA”.

The domain name is registered and is being used in bad faith. Respondent used false information in order to register the Domain Name, for purposes of impeding its effective identification. The name “Steve Martins” reasonably induces suspicion. In the event this point is verified, one would be misled as to the contact details in the attached “whois” databases. The inexactness and lack of truth in its web page, the banking activity not recognised by the Bank of Spain and the fake telephone number and address Respondent provides are evidence of Respondent’s bad faith.

Respondent’s “Bank” is located in Madrid under a false address. It is significant that an entity presented as being honest does not know the exact address of its headquarters and that it is written with spelling errors. The address of Respondent’s “Bank”, “calla: Canovas del Castillo”, in addition, does not exist: In addition, “calla” should be spelled “calle” and Canovas del Castillo is not a street but a plaza in this capital. On the web, Respondent affirms that they have a “Class A Banking License in Del Castillo, Madrid”. This class was checked and this distinction does not exist.

The Respondent tries maliciously to attract, for commercial gain (in the sense of section 4(b)(iv) of the Policy), Internet users to its website, creating confusion with the Complainant’s trademark in evident non-compliance with the Spanish law on trademarks, on unfair competition, and Personal Information.

Finally, the Complainant requests that the domain name be transferred.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the complaint and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

A. Identical or Confusingly Similar

The Complainant proved that it is the owner of several trademark registrations which include “LA CAIXA” as the principal element. Complainant also proved that it is the owner of the trademark registration “LA CAIXA” no. 364.159 registered in Mexico in the name of “la Caja de Pensiones para la Vejez y de Ahorros de Cataluña y Baleares”, which merged in 1990, with “La Caja De Barcelona” to createthe Complainant.

The Complainant alleged but did not prove that it is the owner of the trademark registration “LA CAIXA” no. 3008 registered in Andorra.

The disputed domain name is <bancolacaixa.com>.

The Panel finds that the term “banco”, which means “bank”, does not sufficiently distinguish the domain name from the Complainant’s mark, particularly in connection with Complainant’s activity, and that the domain name is confusingly similar to, at least, Complainant’s trademark registrations “LA CAIXA”.

Consequently, the Panel finds that the Complainant has proved the first element required in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Respondent offers in its web page financial and banking services under the name “Banco La Caixa”, which means “La Caixa Bank”. Banco La Caixa’s web page indicates that its main office is placed in Madrid, and that it has offices in Switzerland and in London.

On the contrary, Complainant has proved that there are no records of a financial entity of any kind named as “Banco La Caixa” in Spain, the European Union, United Kingdom or Switzerland.

Once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the Respondent, who is in a better position to offer the Panel evidence of its rights or legitimate interests.

In this case Respondent failed to file a reply and therefore it did not bring to these proceedings any element to show that it has rights or legitimate interests in the domain name in conflict.

In view of the above and in accordance with the paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules the Panel finds that the Respondent has no rights or legitimate interests in the conflicting domain name.

Consequently, the Panel finds that the Complainant has proved the second element required in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Respondent registered the domain name on January 20, 2004.

Complainant has proved that in Spain it is a well-known financial entity known for many years as “La Caixa”.

Therefore, the Panel finds that the Respondent almost certainly knew of the Complainant and its trademarks when it registered the domain name to host a site for a “bank” with offices in Madrid, Spain.

As alleged by Complainant, the webpage indicates that the headquarters of the “bank” are located in “calla: Canovas del Castillo, Madrid”, which is a false address since it is not complete, it is mispelled and the address does not exist. “Calla” should be spelled “calle” (which means “street” in English) and “Canovas del Castillo” is not a street but a square in Madrid.

Since Respondent offers on its web page financial and banking services under the name “Banco La Caixa”, which is confusingly similar to Complainant’s well-known trademark “LA CAIXA”, it is evident that Respondent is intentionally attempting “to attract, for commercial gain, Internet users, to your (Respondent’s) website 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 (Respondent’s) website or location or of a product or service on your website or location” (Paragraph (4) (b) (iv)).

Consequently, it is evident that Respondent registered and is using the domain name in bad faith.

The Panel finds that the above-given reasons constitute sufficient evidence of Respondent’s bad faith and therefore there is no need to further analyse whether Respondent is violating the Spanish regulations on trademarks; unfair competition; personal information protection; etc, which, on the other hand, would probably exceed the purpose of the Policy.

In view of the foregoing and in accordance with the paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules, the Panel finds that Respondent has registered and used the domain name in bad faith.

Consequently, the Complainant has proved the third element required in paragraph 4(a) 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 <bancolacaixa.com> be transferred to the Complainant.

Miguel B. O’Farrell
Sole Panelist

Dated: September 7, 2004.