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Total S.A. v. LaPorte Holdings [2005] GENDND 448 (22 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

La Caixa d'Estalvis I Pensions de Barcelona v. Tony Eweka

Case No. D2005-0043

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 Tony Eweka, Great Horkesley, Colchester, United Kingdom of Great Britain and Northern Ireland; and of Mississauge, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <la-caixa-trust-bank.net> is registered with SafeNames Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2005.

On January 14, 2005, the Center transmitted by email to SafeNames Ltd. a request for registrar verification in connection with the domain name at issue.

On January 31, 2005, SafeNames Ltd. 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 February 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2005.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2005.

The Center appointed Jérôme Huet as the sole panelist in this matter on March 16, 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, owns several trademarks on which the complaint is based, namely:

LA CAIXA,

CAIXATRUST,

and CAIXABANK.

The ownership of the said trademarks is not disputable. The Complainant filed notarized copies of documents which provide evidence of the ownership of the trademark LA CAIXA and documents issued by the Spanish Office of Patents and Trademarks as proof of registration of the trademarks CAIXA TRUST and CAIXA BANK.

The Complainant also refers to Caixa D'Estalvis i Pensions de Barcelona ("La Caixa") v. Gaspar Saludes, WIPO Case No. D2001-0437, in which it was found that the trademark CAIXABANK owned by La Caixa D’Estalvis I Pensions de Barcelona is well-known, and that the complainant had rights to the domain names <caixabank.org> and <caixabank.net>.

All these trademarks owned by the Complainant were registered prior to the Respondent’s registration of the disputed domain <la-caixa-trust-bank.net>, on April 9, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant, La Caixa D’Estalvis i Pensions de Barcelona, stresses that it is a well-known financial institution, a pioneer in rendering electronic banking services, that it operates under the name “La Caixa”, and that it owns several trademarks among which LA CAIXA, CAIXATRUST, and CAIXABANK, and that the domain name <la-caixa-trust-bank.net> registered by the Respondent embodies words which are all comprised in the said trademarks.

Consequently, in accordance with Paragraph 4(i) of the Policy, the Complainant requests the Administrative Panel appointed in this administrative proceeding to issue a decision that the contested domain name be transferred to La Caixa D’Estalvis i Pensions de Barcelona.

B. Respondent

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

6. Discussion and Findings

The Panel has reviewed the claim of the Complainant and has taken into account the lack of answer by the Respondent.

It also has taken into account the following panel decisions, Caixa d’Estalvis y Pensions de Barcelona ("La Caixa") v. Namezero.com, WIPO Case No. D2001-0360, concerning the domain name <lakaixa.com>, Caixa D'Estalvis i Pensions de Barcelona ("La Caixa") v. Gaspar Saludes, WIPO Case No. D2001-0437, concerning the domain names <caixabank.org> and <caixabank.net>, Caixa d’Estalvis del Penedes v. Carlos Mesa Orrite, WIPO Case No. D2001-0397, concerning the domain name <caixadelpenedes.com>, Caixa D'Estalvis i Pensions de Barcelona v. Senota Comunicación Visual S.L., WIPO Case No. D2002-0486, concerning the domain name <lacaixa.biz>, Caixa d’Estalvis I Pensions de Barcelona v. Steve Martins, WIPO Case No. D2004-0515, concerning the domain name <bancolacaixa.com>, in all it was ordered that the domain names be transferred to the Complainant.

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant claims that the domain name <la-caixa-trust-bank.net> is confusingly similar to the trademarks LA CAIXA, CAIXATRUST, and CAIXABANK.

The Complainant underlines that, internationally,it also has registered trademarks comprising the word “la Caixa” or “Caixabank”, such as 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), as evidenced by the certifications issued by the Mexican Institute of Industrial Property and the Office of Trademarks of the Principality of Andorra, respectively.

In such a context, it sustains that the similarity between the disputed domain and any of the above-mentioned trademarks held by the Complainant, the financial entity “La Caixa”, is obvious.

The Complainant also claims that the device of the Respondent, consisting of making forced combinations using three words and hyphens is only designed to elude the trademark protection.

In addition, the Complainant demonstrates that it ranks among the top positions of the first-level domain names when performing searches on Google, Yahoo and Lycos with keywords such as “La Caixa”, “Caixa trust”, and “Caixabank”. With these search engines, the website of the Complainant appears as the first result, and services associated therewith appear as successive results, which demonstrates an active policy of domain name registrations.

In this regard, it refers to Société Le Monde interactif c/ Monsieur Elphège Frémy, WIPO Case No. D2000-0647, in which the decision states: “Cela vaut certainement pour la France et probablement même au-delà de ce pays. A cet égard, les principaux moteurs de recherche, américains en tête (Yahoo, Alta Vista, Lycos), renvoient, lorsqu’on tape “le monde”, au site du journal, en premier de la liste. Ce qui constitue une preuve de son implantation internationale, y compris dans l’espace dématérialisé de l’Internet.”

The Panel shares the Complainant’s opinion that the consumer is induced into thinking that the domain name <la-caixa-trust-bank.net> relates to the financial entity called “La Caixa” or “La CaixaBank”, or “La CaixaTrust”, words corresponding to the trademarks registered by the Complainant. It also shares the Complainant’s point of view that introducing additional qualifiers (prefixes, suffixes, adjectives, etc.) to a third-party trademark does not entail a differentiation in such a manner that it makes its use legitimate.

In such circumstances, the Panel believes that the domain name <la-caixa-trust-bank.net> is confusingly similar to a trademark in which the Complainant has rights and that the Complainant has proved the first element required in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel deems that the Respondent lacks legitimate rights and interests in the disputed domain name, since it is not the owner of any trademark registration that protects the denomination “la-caixa-trust-bank.net”, nor does it offer any service or product through it.

Indeed, the Respondent does not own the trademarks LA CAIXA, LA CAIXA TRUST, or LA CAIXA BANK which were registered by the Complainant prior to the registration of the disputed domain name, neither does he own a trademark in “la-caixa-trust-bank.net”.

Moreover, the Panel is sensitive to the fact that the Respondent apparently does not use the domain name <la-caixa-trust-bank.net> on the World Wide Web to lead to a website, since by typing these words one does not access any sort of website. In fact, the Respondent has not linked the domain name to any product offer or services proposal.

In the database of the Bank of Spain, corresponding to the “2004 Register of Entities” updated on March 26, 2004, there is no record of a financial institution of any type recognized as “La Caixa Trust Bank” (Banks, Savings Banks, Credit cooperatives, Reciprocal Guaranty Companies, etc...). It seems that there is neither any financial institution recorded as an accredited financial institution in the European Union, as shown by the fact that it does not appear in the 2004 List issued by the Central European Bank.

Likewise, as it is underlined by the Complainant, the Panel takes note of the fact that the holder of the domain name is a natural, not legal, person, which appears to be incompatible with a legitimate interest in carrying out any banking activities. Thus, it is not suprising that the Respondent is not recorded as a financial entity.

In view of these facts, the Panel is convinced that the Respondent has no rights or any legitimate interest in respect of the disputed Domain Name and that the Complainant has proved the second element required in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

1) Registered in bad faith

The Panel considers that there is a strong indication that the disputed domain name was registered in bad faith by the fact that it combines several words which are all included in trademarks in which the Complainant has rights and among which, one of them is of Catalan origin.

As the Complainant puts it, it is doubtful that the combination of words <la-caixa-trust-bank.net> is the fruit of the Respondent’s imagination, since the name itself denotes knowledge of the Catalan language or of the entity itself, given that it is in the countries of Spain and Andorra where said language is spoken and where the Complainant has the greatest notoriety. In fact, it is surprising that an individual, apparently British, uses Catalan words to choose a domain name.

Undoubtedly, the Respondent knew that the Catalan term “La Caixa” is used in Catalan language to designate a bank (in Spanish “La Caja” and in English “Savings Bank”) and, then, certainly knew about the Complainant’s existence and activity.

These findings are to be combined with the fact that “La Caixa” is, in Spain and Andorra, a well known financial entity, and that the registration of a well known trademark as a domain name is in itself an indication of bad faith (see, Cobega, S.A. v. Eagerbiz, S.L., WIPO Case No. D2003-0375; Banco Vitalicio de España, Compañía de Seguro y Reaseguros, S.A. v. A. López, WIPO Case No: D2002-0948).

2) Used in bad faith

In the Panel’s view, the use of the domain name in bad faith is evidenced by the fact that the Respondent retained the domain name <la-caixa-trust-bank.net> after having received from the Complainant a request to transfer the domain name to it and that the domain name does not lead to any website, are all circumstances which would suggest the possession of the said domain name to be in bad faith.

As ruled in several WIPO decisions (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, and in particlular: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 <telstra.org>, Transfer; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 <jupiterscasino.com> and <jupiters-casino.com>, Transfer; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131 <ladbrokepoker.com> among others, Transfer), the Panel considers that the lack of a link of the domain name to an “active” website does not prevent it from reasoning that the domain name is used in bad faith and that, combined with other elements, it allows to conclude that Respondent is using the disputed domain name in bad faith.

To support this analysis, the Complainant refers to decisions taken by the panel in the following instances:

- Clesa, S.A. v. Vesa Tecnologías, S.L., also known as VESATEC, WIPO Case No. D2000-1250 Use of Bad Faith: the inaction of the corresponding website leads to inferring that the use of the domain name is of bad faith.

- Caja de Ahorros del Mediterráneo v. Salvadora Racero Castilla, WIPO Case No.D2003-0015: it should be recalled that the mere passive holding can constitute justified cause of bad faith in the registration as well as in the use of the domain name.

In fact, in a multitude of cases it has been ruled that the passive holding of a domain name together with other indications (for example fame of the trademark of the Complainant, the lack of response to the complaint, etc.) directly implied the use of bad faith of the disputed domain name.

In view of the above, the Panel concludes that the domain name <la-caixa-trust-bank.net> was registered and is being used in bad faith, and that the Complainant has proved the third element required in paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, the Panel considers that the domain name is confusingly similar to trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered in bad faith and is being used in bad faith.

The Panel, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <la-caixa-trust-bank.net> be transferred to the Complainant.

Jérôme Huet
Sole Panelist

Date: March 30, 2005