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Dr. Ing. h.c. F. Porsche AG contre Mr. Paolo De Gaetano [2005] GENDND 457 (21 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caja de Ahorros de Vitoria y Álava v. Luis VI, Candelas

Case No. D2005-0041

1. The Parties

The Complainant is Caja de Ahorros de Vitoria y Álava of Vitoria-Gasteiz, Spain, represented by Clarke, Modet & Co. of Spain.

The Respondent is Mr. Luis VI, Candelas of Estella, Spain.

2. The Domain Name and Registrar

The disputed domain name is <cajavitalkutxa.com> (hereinafter, the ”Domain Name”) and it is registered with Intercosmos Media Group d/b/a directNIC.com (hereinafter, ”directNIC.com”).

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 directNIC.com a request for registrar verification in connection with the Domain Name. On January 15, 2005, directNIC.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 (hereinafter, the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, 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 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2005.

The Center appointed Mr. Albert Agustinoy Guilayn as the sole panelist in this matter on March 14, 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 is a Spanish savings bank established in 1990 as a result of the merger of Caja de Vitoria and Caja de Álava, two of the most important financial entities of the northern part of Spain.

At present, the Complainant employs more than 700 people and owns a network composed by more than 100 branches distributed in the Spanish territory, offering all kind of financial services and products to its clients.

Moreover, the Complainant is very active in the promotion and development of an important number of non-for-profit activities aimed at promoting social and public-interest projects. Among others, it supports and sponsors cultural events, local sport competitions and teams, exhibitions or gastronomic meetings in the territories of Navarre and the Basque Country. In all these activities, the Complainant uses its corporate name and trademarks “Caja Vital”, “Vital Kutxa” or “Caja Vital Kutxa”.

As previously stated, for the development of its activities, the Complainant owns and uses an important number of trademarks based on or composed by the name “Caja Vital Kutxa”. Among others, the Complainant is the owner of the following trademarks:

- Spanish trademark No. 1645442, “Caja Vital Kutxa”;

- Spanish trademark No. 164443, “Caja Vital Kutxa”;

- Spanish trademark No. 1531115, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536841, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536842, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536843, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536844, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536845, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536846, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536847, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536848, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536849, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536850, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536851, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536852, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536853, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536854, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536855, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536857, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536858, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536859, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1536860, “Caja Vital. VitalKutxa”;

- Spanish trademark No. 1997357, “Caja Vital. Vital Kutxa”;

- Spanish trademark No. 1997358, “Caja Vital. Vital Kutxa”.

Due to the extensive use by the Complainant of its trademarks in the Northern part of Spain, they have become well-known in the said part of the Spanish territory.

In addition, the Complainant has registered, inter alia, the following domain names based on the name “Caja Vital Kutxa”:

- <cajavitalkutxa.net>;

- <cajavitalkutxa.org>;

- <cajavitalkutxa.biz>;

- <cajavitalkutxa.es>;

- <cajavitalkutxa.com.es>;

- <cajavitalkutxa.org.es>;

All those domain names are connected with the Complainant’s corporate website, where information on the Complainant, its activities services and products is provided. Moreover, such website allows the Complainant’s clients to manage their accounts and financial products by means of its own online financial platform so-called “Vitalnet”.

The Respondent seems to be a Spanish citizen residing in Estella (Navarre). He has not provided this Panel with any information on him as he has neither filed a response to the Complaint nor any other type of document during this proceeding. Thus, the only initial information this Panel had regarding the Respondent was the one contained in the Whois database. Nonetheless, this Panel considers quite likely that such an information is deliberately incomplete or even false, taking into account the following facts:

- The Complainant sent the Respondent a cease-and-desist letter on September 7, 2004, being returned by the Spanish Postal Office as the address indicated in the Whois database was incorrect. As a matter of fact, the Postal Office did indicate the Complainant that no Carlos VI Street exists in the city of Estella. Apart from the above-mentioned cease-and-desist letter, the Complainant did also send the Respondent several e-mail communications in order to urge him to transfer the Domain Name. None of these communications has been answered by the Respondent.

- Luis Candelas is the name of one of the most famous Spanish bandits of the XIX century. Indeed, he became almost a legend as he used to rob only wealthy people distributing part of his benefits among the poorest. Moreover, he was described as a “respectable bandit” as he never used violent methods for his robberies and even when he was about to be executed and he was offered with the possibility of escaping, he refused as such a fact would not be a “honorable behavior”. The fame of Luis Candela has survived during almost two centuries and even today tourists in Madrid may take a picture of an actor dressed like the original bandit at the door of a well-known restaurant named “Las Cuevas de Luis Candelas” (the caves of Luis Candelas, in Spanish). The Complainant points-out in its Complaint that there exists a clear connection between the use of this name by the Respondent and the use of the name “El Tempranillo” (another Spanish bandit who lived in the XIX century) by the original registrant of the domain names <cajavital.com>, <cajavital.net> and <cajavital.org>. Such domain names were challenged by the Complainant under the Policy and they were transferred to it by order of the corresponding decision (Caja de Ahorros de Vitoria y Álava – Araba Eta Gazteiko Aurrezki Kutxa Caja Vital v. El Tempranillo, WIPO Case No. D2004-0066). In such a case, the panel considered that there were significant elements that forced him to consider that the respondent in that case aimed at hiding his real identity by using the name of a legendary bandit. These circumstances seem to be given in this case as well, as it will be further analyzed.

At the moment of filing the Complaint, the Domain Name was inactive. Nevertheless, the Complainant has provided with a copy of a historical follow-up and it shows that from its registration until, at least, February 1, 2004, the Domain Name had been linked with the Complainant’s website, without indicating in any moment that the Domain Name did not belong to the Complainant.

5. Parties’ Contentions

A. Complainant

The complainant contends in the Complaint that:

- The Domain Name is identical to the “Caja Vital Kutxa” trademarks on which it holds rights, as the only difference among them is the inclusion of the suffix “.com” in the Domain Name; and

- The Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, the Complainant states that the Respondent is not known under the name “Caja Vital Kutxa” or any similar term. Moreover, a fair and legitimate non-commercial use is not made since the Domain Name is not active; and

- The Respondent was aware of the Complainant’s trademarks, as they are well-known in Navarre (where he seems to live) due to its extensive use by the Complainant. Moreover, the Complainant sent the Respondent a cease-and-desist letter as well as a number of e-mails expressly indicating him that the registration and use of the Domain Name breached its rights on the “Caja Vital Kutxa” and “Caja Vital. Vital Kutxa” trademarks, without receiving any kind of answer from the Respondent; and

- The Respondent registered and uses the Domain Name in bad faith. Moreover, after having tried to contact the Respondent by postal mail by using the information provided by means of the Whois database, the Complainant has been able to verify that such information was not correct.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel the following three circumstances in order to obtain the transfer of the Domain Name:

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

(B) that the Respondent does not have any rights or legitimate interests in respect of the Domain Name; and

(C) that the Domain Name has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

According to the Policy, the first circumstance that must be proven by the Complainant is that the Domain Name may be considered as identical or confusingly similar to the Complainant’s trademarks.

A comparison of the Domain Name to the Complainant’s “CAJA VITAL KUTXA” trademarks shows that they are identical. The only difference between them is the inclusion of the “.com” suffix in the Domain Name. Such an inclusion is due to the current technical specificities of the Domain Name System (DNS). Therefore, said difference should not be taken into account in order to evaluate the identity or similarity between the Domain Name and the Complainant’s trademarks (at this respect, see, for example, New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172).

Therefore, the Panel considers that the Domain Name is identical to the “CAJA VITAL KUTXA” trademarks owned by the Complainant. Consequently, the condition set out by paragraph 4(a)(i) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, paragraph 4(c) of the Policy foresees a number of circumstances where the Respondent may be considered as holding said rights or interests. Those circumstances are:

- To have used the Domain Name or to have made demonstrable preparations for its use before any notice of the dispute in connection with a bona fide offering of goods and/or services; or

- To have been commonly known by the Domain Name, even when no trademark or service mark rights had been acquired; or

- To make a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In the present case, none of the above-mentioned circumstances seems to apply. Indeed, the Respondent has not been authorized by the Complainant to use its “CAJA VITAL KUTXA” or “CAJA VITAL VITAL KUTXA” trademarks, nor has he filed any document proving that he is commonly known by the Domain Name and/or that he has made demonstrable preparations for a bona fide use of the Domain Name.

In this respect, it is important to outline the fact that the lack of action by the Respondent in this proceeding indicates the Respondent’s clear absence of rights or legitimate interests in the Domain Name. Many decisions adopted under the Policy (see, for example, Adventis Pharmaceuticals Products Inc. v. Nejat, WIPO Case No. D2003-0401; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465; or Harrods Limited v. Vision Exact, WIPO Case No. D2003-0723) have considered that by defaulting and failing to respond, the Respondent fails to offer the Panel evidence of any of the circumstances foreseen by paragraph 4(c) of the Policy or any other aimed at providing evidence of its rights or legitimate interests in the Domain Name.

The Panel considers that this approach is fully applicable to the present case. Indeed, maybe emulating the original Luis Candela (who never refused any of the claims he was charged with), the Respondent has decided not to refute any of the evidences provided by the Complainant vis-à-vis his lack of rights or legitimate interests on the Domain Name.

Consequently, the Panel considers that the Respondent does not hold rights or legitimate interests in the Domain Name and that the second condition foreseen by the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The last of the elements foreseen by Paragraph 4(a) of the Policy is that the Complainant proves that the Respondent has registered and uses the Domain Name in bad faith.

(i). Registration of the Domain Name in bad faith

First of all, the Complainant must prove that, at the moment of registering the Domain Name, the Respondent was guided by bad faith purposes.

The Domain Name is composed by the words “Caja”, “Vital” and “Kutxa”. Any combination of said words does clearly relate to the Complainant, not just due to the registration of the “Caja Vital Kutxa” and “Caja Vital Vital Kutxa” trademarks by the Complainant, but also due to the fact that “Kutxa” means savings bank in Basque language (just like “Caja” in Spanish). Thus, the Domain Name could only be related to the Complainant and it has no sense in any other way.

In addition, it is important to remind the fact that, according to the contact data included by the Respondent in the Whois database, he seems to live in Navarre, a region where the Complainant has an important presence. Thus, it seems completely out of place to consider that an “unfortunate coincidence” has been given in this case. On the contrary, the only feasible possibility in this case seems to be that the Respondent registered the Domain Name in order to unfairly breach the Complainant’s rights in the “CAJA VITAL KUTXA” and “CAJA VITAL VITAL KUTXA” trademarks. Moreover, such behavior constitutes not only a breach of the Policy but also of Clause 13 (“Representations and Warranties”) of directNIC.com’s registration agreement. Such a clause does expressly require from the registrant that warrants that the registration and use of the corresponding domain name does not infringe third-parties’ rights.

Finally, the Panel considers that the Respondent did deliberately use incomplete, or even false, contact data when registering the Domain Name. Therefore, it seems that by doing so the Respondent was aiming at avoiding the inclusion of contact information that could clearly identify him. As stated in many decisions adopted under the Policy (see, for example, Generalitat de Catalunya v. Thomas Wolf, Wolf Domains, WIPO Case No. D2002-1124; Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024; or Chanel v. 1. WIPO Case No. D2003-0218), such a behavior constitutes a clear evidence of bad faith in the sense of the Policy. Likewise, the use of false contact information also constitutes a breach of Clause 13 (“Representations and Warranties”) of directNIC.com’s registration agreement.

Consequently, the Panel must consider that the Respondent registered the Domain Name in bad faith.

(ii). Use of the Domain Name in bad faith

The Complainant considers that the Respondent’s current “passive use” of the Domain Name may be deemed as a bad faith behavior as foreseen by the Policy. At this respect it is important to remind the fact that the Panel has not been provided with any kind of evidence of an actual or intended use in good faith of the Domain Name by the Respondent. As it has been previously indicated, the only uses of the Domain Name by the Respondent have been firstly linking it to the Complainant’s corporate website and further deactivating it. Those uses shall be analyzed in order to consider if the may be deemed as made in bad faith according to the Policy.

In regards of the first use the Respondent has made of the Domain Name, the redirection of the Domain Name to the Complainant’s website seemed to be an express recognition by the Respondent of his knowledge not just of the Complainant but also of its online activities. At this respect, the Panel considers that such a use constitutes a clear evidence of bad faith, as no indication was made regarding the Respondent’s control on the Domain Name. Therefore, there was a significant risk for the Complainant and its users, as financial activities may be developed by the Complainant’s clients by means of its website. Other decisions adopted under the Policy (see, for example Banco Urquijo, S.A. v. Fernando Labadía Pardo, WIPO Case No. D2000-1502; Banco Zaragozano, S.A. v. Constramat y D. Fernando Labadía Pardo, WIPO Case No. D2004-0044; or Caja de Ahorros de Vitoria y Álava – Araba Eta Gazteiko Aurrezki Kutxa Caja Vital v. El Tempranillo, WIPO Case No. D2004-0066) have already adopted this approach in regards to similar circumstances.

In regards of the present “passive use” of the Domain Name, such use must also be considered as an infringement of the Policy if the circumstances applying to this case are taken into account.If the Panel adopts a factual approach to the Respondent’s behavior in connection with the Domain Name (similar to the one applied in many decisions adopted under the Policy, such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI, S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; eBay, Inc. v. Sunho Hong, WIPO Case No. D2000-1633; or Comerica, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615) there are significant reasons for considering the Respondent’s current use of the Domain Name as a use in bad faith under the Policy.

Among others, the following facts should be taken into account:

- As previously indicated, the only use of the Domain Name by the Respondent has been connecting it with the Complainant’s website, and

- There is no evidence of actual or intended use in good faith if the Domain Name by the Respondent. As a consequence of the Respondent’s behavior, the Complainant has been prevented from reflecting its trademarks in the Domain Name, unfairly suffering the damages derived thereof; and

- The Respondent has not filed a response to the Complaint. In consequence, the Respondent has not provided the Panel with any element or evidence of good faith in regards of the registration and use of the Domain Name and has not shown any interest in doing so; and

- There seems to exist a connection between the Respondent and the registration of other domain names based on the Complainant’s trademarks and its further use in bad faith, as the circumstances given in this procedure clearly relate to those that applied in the previously-mentioned WIPO Case No. D2004-0066.

Taking into account the above-mentioned facts, the Panel concludes that the evidences shown by the Complainant regarding the Respondent’s use of the Domain Name satisfy the requirements foreseen by the Policy.

Consequently, the Panel considers that the Complainant has successfully proved that the Respondent registered and uses the Domain Name 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 <cajavitalkutxa.com> be transferred to the Complainant.

Albert Agustinoy Guilayn
Sole Panelist

Dated: March 28, 2005