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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Caixa DґEstalvis I Pensions de Barcelona (“La Caixa”) v. Awanebi David

Case No. D2006-0632

 

1. The Parties

The Complainant is Caixa DґEstalvis I Pensions de Barcelona (“La Caixa”), Barcelona, Spain, internal authorized representative, Barcelona, Spain.

The Respondent is Awanebi David from Irving, Texas, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <lacaixa-access.com> is registered with Schlund + Partner AG.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2006. On May 23, 2006, the Center transmitted by email to Schlund + Partner AG a request for registrar verification in connection with the domain name at issue. On May 30, 2006, Schlund + Partner AG 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 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2006.

The Center appointed Ana Marнa Pacуn as the sole panelist in this matter on August 3, 2006. 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.

The language of this proceeding is English.

 

4. Factual Background

The Complainant is a corporation in Barcelona, Spain. It is a savings bank. For the identification and promotion of its products the Complainant has registered the trademark LA CAIXA for – among others - “financial and insurance services” in Spain, Mexico and Andorra and, said marks having been issued on November 14, 1986, May 24, 1988 and January 24, 1997, respectively. Likewise, the Complainant is the owner of several trademarks which contain the name LA CAIXA registered in Spain and in 49 other countries world wide for similar services.

According to a printout of the WHOIS database of May 30, 2006, the disputed domain name <lacaixa-access.com> is registered in the name of Awanebi David since November 17, 2005.

 

5. Parties’ Contentions

A. Complainant

1. Similarity

The Complainant takes the position that the contested domain name is confusingly similar to its well-known trademark LA CAIXA hence satisfying the confusing similarity requirement of paragraph 4(a) of the Policy and paragraph 3(b) of the Rules.

The Complainant refuses any possible arguments regarding the generic character of the name <lacaixa-access.com>, due to the renown of the name LA CAIXA. The Complainant cited a lot of decisions having held that a generic element may have a distinctive character by virtue of its renown.

The addition of <access> in the domain name is not sufficient to avoid misleading the Internet users about the real identity of the holder of the domain name. The Complainant quoted different decisions having held that generic elements are not relevant when examining the similarity between the contested domain name and the registered trademark.

Finally, the addition of a dash between a trademark and a generic word does not alter the visual and phonetic identity of the expression.

2. No legitimate interests

The Respondent does not have a registration or pending trademark application for the mark LA CAIXA or any other mark similar to the aforementioned.

3. Bad faith

The fact that the Respondent registered a domain name almost identical with the Complainant’s trademarks demonstrates bad faith on the part of the Respondent.

The Respondent has, at no time, made commercial use of the disputed domain name. This demonstrates a lack of legitimate interests regarding said domain name.

Moreover, as has been demonstrated by the Complainant, the Complainant has a well renowned name in the financial sector in Spain (currently being among the foremost Spanish savings banks) and Europe. Therefore, it can be assumed that the Respondent has known the Complainant’s rights in the trademarks LA CAIXA.

The inclusion of the generic name “access” in the disputed domain name is not casual, but is evocative of the Respondent’s intention to mislead the consumers or at least to obtain some type of economic gain by using the contested domain name.

Finally, on December 21, 2005, the Complainant sent a letter to the Respondent in order to inform him that LA CAIXA is an international registered trademark for banking services. No response was received. The Complainant points out that the address stated in the registry information, at that time, was coincident with the address of the Respondent in a previous case (<lacaixa-online.com>). This appears for the Complainant as a sign of the Respondent’s false data in the registration agreement.

B. Respondent

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

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

2) the Respondent has no rights or legitimate interests in respect of the domain name.

3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

A Complainant must establish two elements under paragraph 4(a)(i) of the Policy: i) the Complainant has rights in a trademark or a service mark, and ii) the disputed domain name is identical or confusingly similar to the mark.

The Complainant has provided sufficient evidence of its rights to the trademark LA CAIXA in Spain and other countries, as well as to other trademarks that contain the phrase LA CAIXA. The only difference between the Complainant’s trademark LA CAIXA and the domain name <lacaixa-access.com> is the addition of the term “access”.

The addition of the generic name “access” makes reference to use of the bank. Therefore, the consumer may think that the contested domain name constitutes a variation of the trademark LA CAIXA owned by the Complainant.

Finally, the addition of a dash between the trademark LA CAIXA and the generic word “access” does not alter the visual and phonetic identity of the expression.

B. Rights or Legitimate Interests

According to paragraph 4a(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name.

Paragraph 4(c) sets out certain circumstances, in particular but without limitation, which if found by the Panel to be proved on its evaluation of all the evidence presented, shall demonstrate rights or a legitimate interests on the part of the Respondent. The Respondent has not submitted a response and has failed to invoke any circumstances that demonstrate any right or legitimate interest in the domain name.

The Respondent did not give any explanation for why it chose the name “lacaixa-acces” to conduct any sort of legitimate business.

The Complainant does not appear to have licensed or otherwise authorized the Respondent to use its trademark or any domain name incorporating the trademark.

Upon this circumstantial background, it can be inferred, that the Respondent registered the domain name containing a known trademark for the purpose of unfairly obtaining an economic gain.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and used the disputed domain name in bad faith. Policy Paragraph 4(a)(iii) requires that both bad faith registration and bad faith use be proved.

The Policy, paragraph 4(b), indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith.

In the present case, the Respondent’s bad faith is suggested by the following elements:

- There are several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the domain name at issue. The Complainant’s trademarks are well known in Spain and at least in Europe. The Complainant submitted many pages of exhibits evidencing the widespread recognition of its financial services.

- As already discussed, the disputed domain name is almost identical to the registered trademarks of the Complainant. The domain name was registered after the Complainant registered its trademarks.

- The inclusion of the term “access” reflects the Respondent’s in all likelihood intented intention to associate the domain name with the Complainant’s trademark.

- Since the Respondent is using a domain name which is similar to the Complainant’s trademark, internet users may be confused as to the Complainant’s sponsorship or affiliation with the associated website.

- In the absence of any logical explanation for the Respondent choosing the domain name <lacaixa-access.com>, it is likely that the Respondent did intend to profit from the confusion created with the Complainant’s trademarks.

The combination of the above factors makes it inconceivable to the Panel that the Respondent was not aware of the Complainant’s trademark when it registered the contested domain name. Thus, the Panel concludes that the disputed domain name was registered and is being used 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 <lacaixa-access.com> be transferred to the Complainant.

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Ana Marнa Pacуn
Sole Panelist

Dated: August 17, 2006