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Caja de Ahorros y Monte de Piedad de Madrid v. Yokngshen Kliang [2004] GENDND 1379 (6 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caja de Ahorros y Monte de Piedad de Madrid v. Yokngshen Kliang

Case No. D2004-0619

1. The Parties

The Complainant is Caja de Ahorros y Monte de Piedad de Madrid, Madrid, Spain, represented by D. José Felipe Gómez de Barreda, Spain.

The Respondent is Yokngshen Kliang of Nanning, Guangxi, China.

2. The Domain Name and Registrar

The disputed domain name is <cajamadrid.com> registered with Tucows (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2004.

On August 6, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On the same date, Tucows 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 and technical contact.

On August 17, 2004, the Complainant submitted further evidence in support of the Complaint in the form of updated scanned copies of certificates issued by the Spanish Trademark Authorities.

In response to a notification by the Center sent to the Complainant on August 18, 2004, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint that was received on August 19, 2004.

The Center verified that the Complaint together with the amendment to 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”).

On August 20, 2004, in accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and that the proceedings had commenced on said August 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2004.

On September 14, 2004, as no Response had been submitted the Center sent a Notification of Respondent Default to the Respondent.

The Center appointed James Bridgeman as the Sole Panelist in this matter on September 22, 2004. 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 registered as a savings bank with the Bank of Spain, Number 99, Folio 60 and inscribed in the Madrid Mercantile Registry, Folio 20, General volume 3,067, Page 52,454, first inscription. The Complainant is a member of the Deposit Guarantee Fund for Savings Banks.

The Complainant has provided evidence that it is the owner of the following registered trademarks: CAJAMADRID registration number 1.131.973(9); CAJA DE MADRID registration number 11.130.105 (8); CAJA MADRID registration number 2.107.959(5); and CAJA DE AHORROS Y MONTE DE PIEDAD DE MADRID registration number 971.361.

The Complainant has submitted its “Annual Report”, for the year 2003 as an annex to the Complaint and referred this Administrative Panel to a copy of same available at on the Internet.

The Complainant has established a website at “www.cajamadrid.es”.

As no Response has been filed the only information about the Respondent available to this Administrative Panel is the registration details on the Registrar’s database.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the domain name <cajamadrid.com> be transferred to the Complainant and submits that in accordance with Policy, Paragraph 4(a), the Respondent is required to submit to a mandatory administrative proceeding because:

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

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

(3) The domain name was registered and is being used in bad faith.

The Complainant’s Rights

The Complainant refers to its registered trademarks, supra, and submits that it is a well-known Spanish bank, generally known under the name “CAJA MADRID”, founded in 1702 in Madrid.

The Complainant further submits that it is one of Spain’s largest and oldest financial institutions holding the fourth position at a national level and first position for banks located at the Autonomous Community of Madrid. Besides its banking activities, the Complainant is engaged in different fields of activity such as sporting and cultural sponsorships and community welfare actions.

The Complainant submits that in 2003 it operated 1,878 offices and 3,000 ATM’s distributed across Spain, Portugal, Ireland and Cuba that were used by approximately 6,200,000 customers. The Complainant further submits that it has developed an important electronic banking activity, through its Internet offices for individuals and enterprises with 400,000 customers operating online.

The Complainant submits that during the past five years it has been developing its presence on the Internet. The Complainant manages twenty-three Internet Financial Portals where its services are promoted and commercialized online. A printout of the homepages of these Portals has been included as an annex to the Complaint. As a consequence, nowadays, the Complainant claims to be one of the most important and popular online financial institutions in Spain with 400,000 people using its online services.

The Complainant claims to have a national and international reputation due to continuous reference to its activities in the press, radio and television. The Complainant has provided an example of such press coverage and refers this Administrative Panel to its website at “www.cajamadrid.es” for further information about its activities.

The Complainant has also provided evidence of its television advertising campaigns.

The Complainant submits that it has established a national and international reputation extending beyond those familiar with its banking and financial services, due to its sponsorship of a wide variety of sporting, cultural and community support activities. The Complainant explains that it is obliged to engage in such activities due to its “foundational aim to collaborate with the social development of its community”.

The Complainant has submitted evidence of its involvement in the sponsorship of the following list of sporting events and activities:

• Euro 2000 (European National Football Team Championship), as official sponsor of the Spanish National Football Team;

• the Sydney and Athens Olympic Games, as member of the Spanish Olympic Sports Association;

• the World Motorcycling Championships in the 125 cc category, as sponsor of Derbi motorcycling team;

• the 2000 Davis Cup Final, as sole sponsor of the Spanish team which beat Australia to carry off the tennis world’s most prestigious trophy;

• sponsorship of the candidacy of the city of Madrid to host the Olympic Games in 2012.

The Complainant further submits that it develops important and public cultural activities not only in Madrid but at a national and international level participating and organizing a wide variety of cultural events:

The Complainant has further submitted evidence of its sponsorship of social and cultural activities and submits that during the year 2002 the Group spent a total of 143,436 euro on such sponsorship including:

• involvement in the opening by their Majesties, the King and Queen of Spain of the cultural centre La Casa Encendida, for the promotion and diffusion of contemporary culture, voluntary work, respect for the environment, filmmaking and varied kinds of training in Madrid, on December 3, 2002;

• in the year 2002, 189 exhibitions were held in Group’s Spaces for Art and 632 acts were organized in the Spaces for Culture;

• the co-production of the Teatro de la Zarzuela season, whose 93 performances attracted upwards of 100,000 spectators;

• sponsorship of the Teatro Real season and organization of a contemporary music cycle, in conjunction with the Madrid Regional Government;

• sponsorship of Sacred Music Cycles in Spanish Cathedrals, Lied Cycle, Spanish Music Cycle, “Los Siglos de Oro”.

The Complainant submits that it is also engaged in community support in the fields of education, promotion of scientific researching, environmentalism, and has actively engaged in social and cultural projects over almost three hundred years.

Identical or Confusingly Similar

The Complainant submits that the domain name in dispute is identical or confusingly similar to the trademarks registered by the Complainant in that it contains partially or completely, jointly or separated the term “cajamadrid” as it appears in the Complainant’s registered trademarks.

The Complainant submits that its trademarks are inherently distinctive and are the means by which the products and services of the Complainant are identified and distinguished from similar products and services of others. The Complainant has continuously and extensively advertised and promoted its services using the term “caja madrid” throughout Spain, as well as internationally, by means of brochures and branch office displays, various media, including radio, newspapers, periodical publications, direct mail and the Internet and sponsoring cultural and sporting activities. As a result of its continuous and exclusive use by the Complainant the term, “caja madrid” is automatically associated by consumers and by the public generally with the Complainant’s services.

The Complainant submits that there is a likelihood of confusion between the domain name and the Complainant’s registered trademarks.

Respondent’s Rights and Interests

The Complainant submits that the Respondent registered the domain name that is the subject of this administrative proceeding with the Registrar on November 19, 1998, and updated this record on December 30, 2003. The website established by the Respondent at this address contains a number of search boxes and the tag “is Under Construction”. The Complainant has submitted a printout of the homepage as an annex to the Complaint.

The Complainant submits that the Respondent is not commonly known by the term “caja madrid” as an individual, business, or other organization. Neither does it trade in any product or service connected with the term “caja madrid”. Furthermore the Respondent has not registered any mark containing these words. Additionally, the Complainant has neither authorized, nor licensed the Respondent, to use any of its commercial names or registered trademarks to develop any economic or non-economic activity.

The Complainant has made further submissions relating to the Spanish regulation governing the registration of the Spanish ccTLD “.es” and submits that it has complied with the criteria required in order to be assigned a Spanish ccTLD.

The Complainant’s commercial name and registered trademarks are identical to its Spanish ccTLD, “www.cajamadrid.es”, and to the domain name subject of this dispute. The Complainant submits that its compliance with the requirements of the Spanish regulation and the fact that it is the owner of the identical Spanish ccTLD, reinforces the rights that the Complainant claims over the name “cajamadrid”. Furthermore this implies the absence of any legitimate interest or right by the Respondent over the domain name that is the subject of this dispute. In this regard the Complainant cites the decision of the administrative panel in Banco Urquijo, S.A. v. Fernando Labadía Pardo, WIPO Case D2000-1502.

Bad Faith

The Complainant submits that the Respondent has registered the domain name in bad faith.

The Complainant submits that the Respondent shows a knowledge of the business and economic background of the cultural, linguistic and geographic area of Spain as the Respondent registered another domain name viz. <bankoa.com> which was the subject of a successful UDRP procedure by BANKOA, S.A., another well known company operating as a banking institution in the Spanish and European financial sectors.

In this regard the Complainant cites the decision of the administrative panel decision BANKOA, S.A. v. Yokngshen Kliang, WIPO Case D2004-0005.

The Complainant submits that the term “caja” in the Spanish language describes the Complainant’s economic activities. There is no evidence of the existence of the term “caja” in any of the languages spoken in China. The city of Madrid, being the capital city of Spain, is internationally known, as it hosts a wide variety of cultural, sports and political events throughout the year. There is no evidence of the existence of any place named “Madrid” in the region of the Respondent’s contact address.

The Complainant further submits that it would be difficult, perhaps impossible, for the Respondent to use the domain name <cajamadrid.com> as the name of any business, product or service for which it would be commercially useful without violating the Complainant’s rights. Nonetheless the Respondent’s registration of the domain name in dispute prevents the Complainant from legitimately reflecting its trademarks and its corresponding commercial activities on the Internet.

The Complainant submits that the Respondent has registered several domain names identical or similar to third parties registered trademarks, such as <gaggia.com> and <bankoa.com>. The Complainant cites a number of decisions under the UDRP that it claims establish that “registration in bulk” of domain names can establish bad faith on the part of a respondent. In particular the Complainant refers to the decisions of the administrative panels in Excmo Ayuntamiento de La Coruña v. Vicente Mota Jiménez, WIPO Case D2004-0006, Valencia Club de Futbol, S.A.D. v. Miguel García, WIPO Case D2004-0009, Banco Zaragozano S.A. v. Constramat & Fernando Labadía Pardo, WIPO Case D2004-0044.

The Respondent, has no apparent legitimate interest in the disputed domain name and has failed to use it during the period of nearly six years since the domain name was registered in November 19, 1998.

The Complainant points out that the Respondent has not included any content in its website established at the <cajamadrid.com> address. The only contents displayed have been posted by the Registration Service Provider viz. a search box and the tag “under construction”. The tag “under construction” is commonly accepted by the Internet users as meaning that the website is inactive. The absence of content has been repeatedly considered as, an utilization of the domain name in bad faith in several UDRP decisions, such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case D2000-0003, Gaggia S.p.A. v. Yokngshen Kliang, WIPO Case D2003-0982 and Cellular One Group v. Paul Brien, WIPO Case D2000-0028.

The Complainant further submits that the domain name has been used by the Respondent in bad faith by intentionally attempting to attract Internet users who expect to reach the Complainant’s website, therefore creating confusion with the Complainant’s trademarks. The contents posted on the website established by the Respondent at <cajamadrid.com>, are not related with the products or services of the Complainant. There is a diversion of the Complainant’s online customers to this website. Instead of receiving the expected financial services and information from the Complainant on this site, Internet users are confused.

The fact that the contents that appear on the website can be freely accessed does not imply that the Respondent is not making profit from the use of the domain name. The existence of several directories and links, one of the most common activities for a website, indicates that the site may obtain an economic profit from the goodwill of the Complainant.

B. Respondent

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

6. Discussion and Findings

There is an onus on the Complainant to establish

(1) that the domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(3) that the domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the owner of the following registered trademarks: CAJAMADRID registration number 1.131.973(9); CAJA DE MADRID registration number 11.130.105 (8); CAJA MADRID registration number 2.107.959(5); and CAJA DE AHORROS Y MONTE DE PIEDAD DE MADRID registration number 971.361. The Complainant has also submitted and provided evidence that it has an international reputation through its business activities and sponsorship of sporting, cultural and social activities both in Spain and internationally over many years of its existence.

The domain name in dispute <cajamadrid.com> is clearly identical to the Complainant’s registered trademarks.

B. Rights or Legitimate Interests

There has been no Response filed and therefore there is no evidence of any rights or legitimate interest that the Respondent may have in the domain name. On the other hand there is ample evidence that the Complainant has substantial rights in the trademarks that are identical to this domain name. Furthermore, the Complainant has pointed out that any commercial use of the domain name by the Respondent would in all probability be an infringement of the Complainant’s rights. This Administrative Panel accepts that this is certainly the case in Spain and in the many jurisdictions where the Complainant can prove that it has a business reputation and common law rights.

The Complainant has not given any authority or licence to the Respondent to use this domain name and there is no business connection between the Parties.

This Administrative Panel therefore accepts that in the absence of any explanation from the Respondent, on the balance of probabilities, the Complainant has established that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

On the balance of probabilities the Respondent was aware of the Complainant and its business and sponsorship activities when the domain name was registered. This allegation by the Complainant is supported by the fact that the Respondent clearly was aware of the Spanish banking business as this Respondent has been cited as a respondent in other administrative proceedings by another Spanish Bank. While one does not necessarily accept the Complainant’s submissions that its trademarks are inherently distinctive, the Complainant has clearly become known as and has established a reputation in the use of the name CAJA MADRID to the extent that it would be expected by its customers that it would use this name as a website address.

Furthermore the Respondent has never established an active website at this address. Since the Respondent first registered the domain name almost six years ago on November 19, 1998, it would appear on the balance of probabilities that there has never been an intention on the part of the Respondent to establish such a site. Furthermore this finding is supported by the fact that this Administrative Panel accepts that any commercial use of the domain name by the Respondent would in all probability be challengeable as an infringement of the Complainant’s rights in Spain and other jurisdictions.

On the balance of probabilities this Administrative Panel is satisfied that the Respondent was aware of the Complainant’s reputation when the domain name was first registered. Furthermore the registration of the domain name was made in bad faith as the Respondent clearly was endeavouring to prevent the Complainant from registering the “.com” gTLD domain name that was identical to the Complainant’s trademarks. It is difficult to imagine circumstances in which such a registration may have been in made in good faith. The Respondent has continued to hold and use this domain name in bad faith and deprive the Complainant from establishing a presence on the Internet with the “.com” gTLD that is identical to its registered trademarks.

This Administrative Panel accepts therefore that the Complainant has established that the domain name was registered and is being used in bad faith.

As the Complainant has established the three elements in the test set out in paragraph 4 of the Policy, the Complainant is entitled to succeed in its application to have the domain name in dispute transferred.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, this Administrative Panel orders that the domain name <cajamadrid.com> be transferred to the Complainant.

James Bridgeman
Sole Panelist

Dated: October 6, 2004