ADMINISTRATIVE PANEL DECISION

La Caixa D’Estalvis I Pensions de Barcelona v. Molina Georgesen

Case No. D2006-1615

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 Molina Georgesen, Madrid, Spain.

2. The Domain Name and Registrar

The disputed domain name <blacaixa.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2006. On December 27, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On December 29, 2006, 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 January 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2007.

The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on February 22, 2007. 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 company located in Barcelona incorporated under the name” “Caixa D’Estalvis i Pensions de Barcelona” in 1990, as the result of the merger between Caja de Pensiones para la Vejez y de Ahorros de Cataluсa y Baleares (established in 1904) and the Caja de Ahorros y Monte de Piedad de Barcelona (established in 1844).

From the evidence submitted by the Complainant, as annexes to the Complaint, the Complainant is the proprietor of numerous marks containing the expression “LA CAIXA” and which essential part of those trademarks appears to be the term “LA CAIXA”.

The Complainant has also registered numerous domain names containing the term “LA CAIXA” to present the company and offer its internet services, e.g. <lacaixa.es>, <lacaixa.com> or <lacaixa.org>.

The Complainant has been involved in many other UDRP procedures in respect “LACAIXA” and “CAIXABANK”.

The Respondent is the current registrant of the disputed domain name which does not display to an active web site.

The disputed domain name <blacaixa.com> was registered on August 16, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is identical or confusingly similar to the Complainant’s trademark “LACAIXA”, except for one letter (the “b”)

Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark

The Complainant also alleges that on the basis of previous WIPO UDRP decisions it has also been consistently affirmed that the mere addition of a slight spelling variation (in this case, the letter “b” before “LACAIXA”) does not create a different trademark and cannot be considered sufficient to avoid confusion between a domain name and the Complainant’s trademark.

In any case, if the “b” addition was to be considered a semantic contribution (“b” standing for bank, for instance), it should be taken into account that “la Caixa” is holder of the trademark “CaixaBank”, and consequently the disputed domain name would be identical or confusingly similar to “CaixaBank”.

In respect the Respondent’s lack of legitimate rights and interests over the disputed domain name, the Complainant declares the Respondent is not the owner 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 extraordinarily well-known in Spain and holds the majority of the related trademarks.

Finally, the Complainant is convinced that the disputed domain name has been registered in bad faith, with the only purpose of obtaining some type of economic gain from its sale. The Complainant asserts it is obvious that the Respondent knew the existence and identity of the Complainant when registering the domain name.

In respect the use of the domain name in bad faith the Complainant considers that the evidence of inactivity and lack of use of the disputed domain name amounts to passive holding by the Respondent and a finding in the circumstances of use in bad faith and also states that the postal address declared to the registrar is incorrect.

B. Respondent

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

6. Discussion and Findings

In order for the Panel to grant the remedy of transfer of a domain name to a Complainant under the Policy, it is necessary that the Complainant must prove, as required by paragraph 4(a) of the Policy, that:

(i) the disputed 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 interests in respect of the domain name; and

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

The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.

Thus where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. (Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques., WIPO Case No. D2000-0004; State of Wisconsin v. Pro-Life Domains, Inc., WIPO Case No. D2003-0432). Here, since the Respondent has defaulted, the Panel may draw such adverse inferences of fact against Respondent that it deems appropriate.

A. Identical or Confusingly Similar

The Complainant has made continuous use of its registered and incontestable marks where “LA CAIXA” appears to be a distinctive element and has spent much time, money and effort promoting the mark and has established significant good will.

Previous panels have decided that “essential” or “virtual” identity is sufficient to meet the first element. Accordingly, in the present case, the addition of the prefix “b-” to the domain name is not sufficient to distinguish new internet sources from existing service sources. Therefore, the Panel is prepared to accept the submission of the Complainant that the addition of the prefix “b-” to the Complainant’s trademarks to form the domain name <blcaixa.com> is insignificant and consequently the domain name is confusingly similar to the Complainant’s trademark.

The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the domain name within the meaning of paragraph 4(a) of the Policy.

This finding is based on the following non-disputed circumstances brought forward by the Complainant.

- There is no indication in the file that the Respondent is known under the disputed domain name;

- The Respondent appears not to be owner of any trademark registration;

- “LA CAIXA” is extraordinarily well-known in Spain and holds the majority of the related trademarks;

- There is no web site to be found at the disputed domain name.

Furthermore, the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

The Panel has considered Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the domain name in bad faith. By not submitting a response, the Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the domain name in bad faith.

The Complainant has also established that its trademarks have been used extensively in Spain and in many other countries and that the Complainant’s trademarks are famous and valuable.

There are other facts that suggest bad faith in this case, e.g., the Respondent submitted false contact details to the Whois database as the address given does no exist. It has been held that the taking by a Respondent of deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made is evidence of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Here, and based on previous UDRP decisions, eg. World Wrestling Federation Entertainment Inc (WWFE) v. M. de Rooij, WIPO Case No. D2000-0290, the Panel is in a position to make a finding of bad faith based on the fact that the website with the domain name had not been developed: “the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts.”

Given the evidence put forward by the Complainant, and the lack of any response from the Respondent, this Panel finds that the domain name <blacaixa.com> has been 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 <blacaixa.com> be transferred to the Complainant.

Manuel Moreno-Torres
Sole Panelist

Dated: March 8, 2007