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La Caixa d’Etalvis i Pensions de Barcelona v. Unaci Inc. [2005] GENDND 1472 (5 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

La Caixa d’Etalvis i Pensions de Barcelona v. Unaci Inc.

Case No. D2005-0567

1. The Parties

The Complainant is La Caixa d’Estalvis i Pensions de Barcelona, Barcelona, Spain, represented by Rodes & Sala Abogados, Spain.

The Respondent is Unaci Inc., Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <wwwlacaixa.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2005. On June 1, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On June 6, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com 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, billing, and technical contact. 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 June 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2005.

The Center appointed Felipe Claro as the sole panelist in this matter on July 22, 2005. 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, La Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”), is the result of the merger, in 1990, between the Caja de Pensiones, founded in 1904, and the Caja de Barcelona, founded in 1844. It is a financial entity with over 150 years of history. Currently, it has over 4,800 offices and nearly 25,000 employees, and close to 7,000 banking self-service terminals. These figures, together with its status as the premier payment network in Spain, are some of the most significant facts about “la Caixa”, one of the leading financial institutions in Spain and within the European savings bank industry, with 9.2 million clients at the end of 2004.

“La Caixa” maintains a Foundation which conducts a wide range of social and cultural activities. The 2004 results have allowed allocating a budget of Euro 255 million to social activities through the Fundación “la Caixa” for financial year 2005.

It conducts important cultural activities, and it is also noteworthy for sponsoring sporting events, which gives it great popularity and notoriety.

Registered trademarks: La Caixa d’Estalvis i Pensions de Barcelona normally operates under the name “La Caixa” and is the owner of the trademark “LA CAIXA” for a vast range of products and services.

The Complainant has also registered and is using on a daily basis a great deal of terms close to “La Caixa” for the marketing of its products and services, all including the highly distinctive word “la caixa”. Thus, the Complainant is also the holder of the trademarks “CAIXABANK”, “CAIXATRUST”, “FUNDACIÓ LA CAIXA”.

A number of WIPO Domain Name Decisions acknowledge the notoriety of the sign:

For “LA CAIXA”:

- WIPO Case No. D2001-0360 (Caixa d’Estalvis i Pensions v. Namezero.com).

- WIPO Case No. D2002-0486 (Caixa D'Estalvis i Pensions de Barcelona v. Senota Comunicación Visual S.L.).

- WIPO Case No. D2004-0515 (Caixa D’Estalvis i Pensions de Barcelona ”La Caixa” v. Steve Martins).

For “CAIXABANK”:

- WIPO Case No. D2001-0438 (Caixa D’Estalvis i Pensions de Barcelona ”La Caixa” v. EnricJosep)

- WIPO Case No. D2001-0437 (Caixa D’Estalvis i Pensions de Barcelona ”La Caixa” v. Gaspar Saludes) for CAIXABANK.

At an international level, La Caixa has also registered different trademarks.

“LA CAIXA” is a duly registered trademark in different forms and combinations, in Spain and abroad.

Domains: There are different registered domain names used by the Complainant including the terms “La Caixa” or “Caixa”.

Notorious identification of the Complainant with the name “La Caixa”: The Complainant is well-known by the name “La Caixa” to the press, to economic operators and to any consumer and user.

5. Parties’ Contentions

A. Complainant

- Since the Complainant’s business opened, its reputation and fame have grown through different means.

- The Complainant owns a number of trademark registrations for the LA CAIXA mark, and variations thereof all of which are detailed in the Complaint.

- The Complainant’s Marks have gained wide recognition and have become very well known. Moreover, the Complainant’s Marks were firmly associated with the Complainant prior to the Respondent’s registration of the Domain Name, as a result of the Complainant’s continuous business operation for more than 150 years.

- The LA CAIXA registered marks were registered long before Respondent’s registration of the Domain Name.

- Respondent registered the disputed domain name in bad faith and has no legitimate rights or interests in it.

B. Respondent

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

6. Discussion and Findings

In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainants’ undisputed representations. In that regard and apart from judging this proceeding through mere default of the Respondent, the Panel makes the following specific findings.

A. Identical or Confusingly Similar

The similarity between the trademarks “La Caixa” and the domain name <wwwlacaixa.com> is obvious.

The “tradition” of registering domain names resulting from minor typing errors in order to divert the traffic from the lawful site to the copy is long (some people call it “typosquat”). Examples of this may be WIPO Case No. D2000-1271, Nokia Corporation vs. Private, concerning <wwwnokia>; WIPO Case No. D2001-1115, NIKE, Inc. v Alex Nike, concerning <wwwnike>; WIPO Case No. D2001-1199, Pfizer, Inc. v. Seocho and Vladimir Snezko, concerning <wwwpfizer>; NAF FA0096493 –concerning <wwwvictoriasecrets>-; or WIPO Case No. D2000-1259, Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc., concerning <wwwdowjones.com> among others-.

The latter decision states the following: “The Complainant has produced exemplary copies of its trade and service marks contained in the disputed domain names, “wwwdowjones.com” “wwwwsj.com” “wwwbarrons.com” “wwwbarronsmag.com”, that have been registered and are still valid in the United States of America and in many countries abroad (the trademark “Dow Jones” on the principal register in the United States, registration no. 1,434,595 dated March 31, 1987; the service mark “wsj.com”on the principal register in the United States, registration no. 2,119,170 dated December 9, 1997; the service mark “Barron’s” on the principal register, registration no. 1,118,216 dated May 15, 1979; see Complaint Annex E). In registering the disputed domain names, Respondent incorporated Complainant’s trademarks while introducing small typographical changes or deliberate errors. These errors or changes, adding a fourth “w” or leaving out a dot, are generic, and do nothing to change Respondent’s infringement of the core trademarks which Complainant has shown convincingly that it owns.”.

The suffix “.com” which accompanies the name does not interfere with its valuation, as can be deduced from numerous decisions, such as, for instance, WIPO Case No. D2002-0810, Benetton Goup SPA. v. Azra Khan, regarding the domain <unitedcolourofbenetton.com>, which was resolved in favour of Benetton Group, SPA on the basis of its better right, arising from owning the trademark “United Colour of Benetton”. In this case, the panelist considered the disputed domain name identical to the trademark, notwithstanding the use of gTLD “.com”.

B. Rights or Legitimate Interests

The Respondent lacks legitimate rights and interests over the disputed domain, since it has not proved ownership of any trademark registration that protects the denomination “La Caixa” and it is not commonly known by the domain name in dispute.

Furthermore, it can be concluded that there is little possibility that such legitimate right or interest exists, since “LA CAIXA” is a term in Catalan language, a language which is spoken in very few places. Thus, it can be confidently said that the notoriety of “LA CAIXA” includes all the territories in which Catalan is spoken and that any use or attempt to use this term in these territories would have been stopped by La Caixa using its trademarks.

In view of the foregoing and in concert with prior Policy decisions, the Panel is satisfied that the Complainant has shown prima facie evidence with respect to the second element paragraph 4(a) of the Policy, thus shifting the burden of proof on Respondent. Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553; and Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467.

As a result, the Panel chooses to view Respondent’s failure to submit a Response to the Complaint as evidence that it lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 (finding that respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

In sum, on the evidence and legal argument submitted, it is not apparent to this Panel that any of the defenses set forth in paragraph 4(c) of the Policy is available to Respondent.

As a result, the Complainant has demonstrated the second limb of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name has been registered and is being used in bad faith, with the only purpose of diverting traffic.

Paragraph 4(b) of the Policy offers some examples of bad faith. In sub-paragraph (iv), it states: “by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.”

It is obvious that the Respondent knew the existence and identity of the Complainant when registering the domain name. As it has been proved “La Caixa” is a well-known Spanish financial institution in the financial world.

The chain of transfers caused by the request of the Complainant is an indication of bad faith. First, the domain name was registered in favour of Mr. Alvaro Collazo in August 2004. After the Complainant’s request, to which the Respondent did notanswer, the domain name was transferred to Unasi Management. This first transfer shall be considered an unmistaken indicator of bad faith. Additionally, Mr Collazo has a clear record of cybersquatting conflicts:

a) WIPO Case No. D2003-0417, Société Air France v. Alvaro Collazo, concerning <arifrance.com>. Mr. Collazo did not respond and the Panel ordered the transfer of the domain name.

b) WIPO Case No. Case D2003-0716, Expedia, Inc. v. Alvaro Collazo, concerning <expediua.com>. Mr. Collazo did not respond and the Panel ordered the transfer of the domain name.

Unasi Management, Inc. is also a known cybersquatter. First, it has recently been ordered to transfer domain names <statefarmcareer.com>, <statefarmbankclassiccreditcard.com> and <statefarmbankplatinumcreditcard.com> to the complainant (State Farm Mutual Automobile Insurance Company v. Unasi Management Inc., Claim Number: FA0503000442558 of April 27, 2005).

Finally, concerning the last transfer, the email contact and the fax and telephone numbers of Mr. Collazo are identical to the contact details of Unasi Management, Inc., the Respondent. Again, there is no doubt that the transfer is a consequence of the Respondent’s wish not to be located.

In virtue of what is explained above, there exists sufficient evidence to show bad faith in the behaviour of the Respondent. The Respondent is found to have registered and to be using the dipusted domain 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 <wwwlacaixa.com> be transferred to the Complainant.

Felipe Claro
Sole Panelist

Dated: August 5, 2005