Lunes, 15 de mayo de 2006 12:33
Muy señores nuestros,
A través de la información
que proporciona la consulta .whois., se ha tenido
conocimiento de que su organización figura
como titular del nombre de dominio (.registrant.)
LACAIXA.CN. Dicho nombre de dominio contiene el
nombre y signo distintivo de esta Entidad.
La Caixa d.Estalvis i Pensions
de Barcelona .la Caixa., es legítima titular
del nombre comercial .la Caixa., de naturaleza notoria
y renombrada, el cual identifica a la entidad en
el tráfico mercantil en el territorio español,
distinguiéndola de las demás empresas
y entidades que desarrollan actividades idénticas
o similares. También es titular de la marca
internacional para la República Popular China
núm. 724.947, registrada para diferentes
actividades, entre las que figuran los servicios
financieros.
Asimismo, el nombre .la Caixa.,
está registrado como marca internacional
y territorialmente, en más de 40 países
del mundo, tanto como marca o como nombre comercial,
entre los cuales figuran todos los países
de la Unión Europea.
.la Caixa., en ningún momento
ha autorizado la utilización de su denominación
o signo distintivo para el registro y/o utilización
del nombre del dominio antes citado, por lo que
dicha utilización puede constituir una vulneración
de la Directiva del Consejo 89/104/CEE, relativa
a la aproximación de las legislaciones de
los Estados miembros en materia de marcas y de la
Ley española 17/2001 de 7 de diciembre de
Marcas. Conforme a las mencionadas disposiciones
legales, el titular de la marca o nombre comercial,
ostenta el derecho exclusivo a utilizar los mismos,
en el tráfico económico y en consecuencia,
ostenta también el derecho a prohibir que
terceros sin su consentimiento, puedan utilizar
cualquier otro signo idéntico o semejante,
incluso en redes de comunicación telemáticas
y como nombre de dominio.
Por consiguiente, le requerimos
a usted, como titular del nombre de dominio LACAIXA.CN
que autorice, en el plazo de cinco días a
contar desde la recepción de la presente,
la transferencia del citado nombre de dominio a
nuestro favor. A tal efecto le rogamos se sirva
firmar el documento que se adjunta al presente mensaje
con el fin de autorizar la transferencia del nombre
de dominio y remitirlo por correo a nuestra dirección
con el fin de tramitarlo ante las entidades de registro
correspondientes.
Caixa d'Estalvis i Pensions de
Barcelona, "la Caixa"
Asesoría Jurídica
Avenida Diagonal 621-629 T. I pl.16
08028 Barcelona (Spain)
De no acceder a nuestras peticiones,
esta Entidad se verá obligada a entablar
cuantas acciones de tipo judicial o extrajudicial
fueran necesarias para la recuperación del
nombre de dominio.
Atentamente,
Sebastián Sastre
Director Ejecutivo de la Asesoría Jurídica
Caixa d'Estalvis i Pensions de Barcelona "la
Caixa"
Diagonal 621-629
08028 Barcelona
tel. 934047149
fax 934046255
e-mail: ssastre@lacaixa.es
[ENGLISH TRANSLATION]
Dear Sir/ Madam,
We have had knowledge, through
the information provided by the WHOIS database that
can be found at the URL http ://www.uwhois.com,
that you are the current registrant of the following
domain name: LACAIXA.CN, which contains the name
and sign of this lending institution.
Caixa d'Estalvis i Pensions de
Barcelona "la Caixa", is the business
name's lawful holder, of well-known and famous nature,
which identifies the institution in the Spanish
market, being distinguished from other business
that may develop the same or similar activities.
Also, .la Caixa. is the owner o the international
trademark with the same name, number 724.947, registered
in People.s Republic of China for different activities,
Likewise the name of "la
Caixa" is registered as an international trade
mark, and also, territorially, in over 40 countries
in the world, both trade mark or business name;
within these countries there are all the European
Union countries.
"la Caixa" has never
authorized the use of its trade name or sign to
become a part of the domain name above-mentioned,
therefore its use may break the Council Directive
89/104/EEC of 21 December 1988 to approximate
the laws of the Member States relating to trade
marks and the Spanish Act 17/2001 of 7th December
on trade marks. In accordance with this regulation,
a trade mark or business name's holder has the exclusive
right to use them in the market and therefore it
also holds the right to forbid the use of any other
identical or similar sign by third parties without
its authorization, even in telematic communications
networks as a domain name.
Therefore, we request you, as the
current registrant of the domain name:
LACAIXA.CN, to authorize the transfer
of this domain name to Caixa d'Estalvis i Pensions
de Barcelona "la Caixa", within 5 calendar
days from the day you receive this letter. To this
end, we ask you to sign and complete the attached
document and send it back to us to the following
address in order to proceed with the transfer before
the register institutions:
Caixa d'Estalvis i Pensions de
Barcelona, "la Caixa"
Legal Department
Avenida Diagonal 621-629 T. I pl.16
08028 Barcelona (Spain)
If you do not accept our request,
this institution will be obliged to take the legal
or out-of-court actions that might be necessary
to the recovery of the domain name.
Yours faithfully,
Sebastián Sastre
Executive Director of the Legal Department
Caixa d'Estalvis i Pensions de Barcelona "la
Caixa" Diagonal 621-629
08028 Barcelona (Spain)
Phone: 934047149
Fax: 934046255
e-mail: ssastre@lacaixa.es
(See attached file: Transfert
document (SP-EN).doc)
P.D.:La presente comunicación se ha enviado
por correo electrónico puesto que en el sitio
web de ustedes, sito en la dirección URL
http://catalanhost.com no figuran datos relativos
a su denominación social ni domicilio, tal
como es preceptivo según la Ley 34/2002,
de 11 de junio, de Servicios de la Sociedad de la
Información y de Comercio electrónico.
DOCUMENTO ADJUNTO
D._________________, actuando en
representación de (CATALANHOST.COM), con
domicilio social en ________________________, titular
del nombre de dominio LACAIXA.CN de Internet, según
consta en la consulta “whois”, autoriza
la transferencia del citado nombre a la Caixa d’Estalvis
i Pensions de Barcelona “la Caixa”, renunciando
así a cualquier derecho sobre el mismo. Asimismo,
se compromete a colaborar con la entidad de registro
del citado nombre de dominio (JOKER.COM) y con el
CINIC (China Internet Network Information Center)
en cuantas acciones y gestiones le sean requeridas
por su parte o por las demás entidades participantes
en el sistema de registro de nombres de dominio
para llevar a cabo la transferencia efectiva del
citado nombre de dominio a favor de “la Caixa”.
Mr._________________ , representing
(CATALANHOST.COM), having the following address:________________________
, as de current registrant of the internet domain
name: LACAIXA.CN, according to the information provided
by the WHOIS database, AUTHORIZES the transfer of
the domain name above-mentioned to Caixa d’Estalvis
i Pensions de Barcelona, (from now on “la Caixa”),
doing an abandonment of any right concerning this
domain name. To this end and in the even of being
necessary for the transfer, he indicates below the
keys of access and use. Likewise, he undertakes
to collaborate with the registrar of this domain
name (JOKER.COM) and the CINIC (China Internet Network
Information Center), on any action, measures or
steps that might be required in order to transfer
this domain name to “la Caixa”.
Claves / Keys:[…]
[Firma / Signature]
Hong Kong International Arbitration
Centre
Statement of Complaint Transmission
Cover
This Complaint is made against
you (the Company) as defendant at the Hong Kong
International Arbitration Centre ("HKIAC"),
a domain name dispute resolution service provider
authorized by China Internet Network Information
Center ("CNNIC"), in accordance with the
CNNIC Domain Name Dispute Resolution Policy (the
"CNNIC DRP") issued by CNNIC on 17 March
2006.
The CNNIC DRP has been automatically
incorporated as part of the domain name registration
agreement between you (the Company) and the domain
name registrar. Pursuant to the CNNIC DRP, should
any third party ("Complainant") file with
HKIAC a complaint in respect of a domain name registered
under you (the company), you (the company) shall
be obliged to take part in the administrative proceedings.
The letter of complaint attached to this complaint
transmission cover sheet contains the name of the
Complainant, contact details and the domain name
in dispute.
You (the Company) are not required
to make any response at this stage. After HKIAC
has completed its preliminary examination of the
statement of complaint filed by the Complainant
and is satisfied it has complied with the formal
requirements on statement of complaints under the
CNNIC DRP and CNNIC DRP Rules and after payments
the Complainant is required to make have been received,
HKIAC will send/transmit to you (the Company) a
proceedings commencement notice and a copy of the
confirmed statement of complaint. According to the
requirements of the CNNIC DRP Rules, you (the Company)
shall submit a response to the complaint of the
Complainant within 20 days from the formal commencement
of the proceedings. If required, you (the company)
may appoint a lawyer to represent you in the proceedings.
You may view the CNNIC DRP, CNNIC
DRP Rules and the Supplemental Rules and other information
concerning domain name dispute resolution on HKIAC's
website at www.hkiac.org. Should any question arise,
you may also directly contact HKIAC for copies of
the said materials.
By filing a complaint with HKIAC
using this form of complaint, the Complainant confirms
that it shall comply with and be bound by the relevant
provisions under the CNNIC DRP, CNNIC DRP Rules
and the Supplemental Rules.
Barcelona October 26th, 2006
Hong Kong International Arbitration
Centre
Complaint in accordance with the
CNNIC Domain Name Dispute Resolution Policy
COMPLAINANT:
CAIXA D’ESTALVIS I PENSIONS
DE BARCELONA (“LA CAIXA”)
Av. Diagonal 621-629, 08028 Barcelona (SPAIN)
Phone: + 34 93 404 73 58
Fax + 34 93 404 62 55
Lucía Palacín Prieto
lpalacin@lacaixa.es
Jordi Kohn Espinilla
jordi.j.kohn@lacaixa.es
RESPONDENT:
CATALANHOST.COM
Mareestrasse 29
9490 Vaduz
Liechtestein
+371.6563920
domains@catalanhost.com
DISPUTED DOMAIN NAMES:
LACAIXA.CN
LA-CAIXA.CN
I. Introduction
1. This complaint shall be decided
in accordance with the provisions under the CNNIC
Domain Name Dispute Resolution Policy ("CNNIC
DRP") and the Rules for CNNIC Domain Name Dispute
Resolution Policy ("CNNIC DRP Rules")
issued by the China Internet Network Information
Center ("CNNIC") that became effective
on March 17, 2006, and the HKIAC Supplemental Rules
for CNNIC DRP and CNNIC DRP Rules, issued by the
Hong Kong International Arbitration Centre, that
became effective on September 30, 2002.
II. Parties
(I) Complainant
2. CAIXA D’ESTALVIS I PENSIONS
DE BARCELONA (“LA CAIXA”)
CAIXA D’ESTALVIS I PENSIONS DE BARCELONA is
an entity formed by the merger in 1990 of Caja de
Pensiones para la Vejez y de Ahorros de Cataluña
y Baleares (founded in 1904) and Caja de Ahorros
y Monte de Piedad de Barcelona (founded in 1844).
It is registered under number
1 in the Register of Catalan Savings Banks of the
Directorate-General of Financial Policy of the Department
of Economy and Finance of the Catalonia Autonomous
Community Government (“Generalitat of Catalonia”).
On November 16, 1990, it was entered
under number 3003 in the Barcelona Mercantile Register,
in volume 20.397, page 1, sheet B-5614, first entry.
It is registered with code number 2100 in the Bank
of Spain’s Special Register of General Savings
Banks.
“LA CAIXA” is presently the leading Spanish
savings bank. It is also ranked third in the European
savings bank sector, with 9.6 million clients. The
“LA CAIXA” Group manages a total of 169,470
million euros in client resources. It has a commercial
network throughout Spain which at the end of 2005
included 5,053 branches staffed by 25,254 employees.
The symbol of “LA CAIXA”
was created by the renowned international artist
Joan Miró. It consists of an irregular 5-pointed
blue star with two rounded shapes of different sizes
–the smaller one is yellow, and the larger
one is red– with the name “LA CAIXA”
appearing under. Since they appear frequently on
the streets and in advertising, the “LA CAIXA”
star and the “LA CAIXA” name are very
well-known throughout Spanish territory.
As evidence of its financial soundness
and its presence in Spanish territory, a copy of
the 2005 Annual Report, which may also be obtained
on the http://www.lacaixa.es Web site, has been
attached hereto as DOCUMENT 1.
LA CAIXA has been a pioneering
company in the Internet banking sector in our country.
It offers an extensive products and services portal
that can be accessed on Web sites such as: http://www.lacaixa.com,
http://www.lacaixa.es, http://www.lacaixa.net and
http://www.lacaixa.org. Electronic banking services
are also offered through the “Línea
Abierta” or “Línia Oberta”
[Open Line] links which can be accessed from the
“la Caixa” portal or directly on the http://www.lineaabierta.com
and http://www.liniaoberta.com Web sites.
At this time, thanks to “LA
CAIXA”´s advanced ATM technology, the
complainant has approximately 7,200 ATM terminals
available. This makes it the leading banking services
entity as regards number of ATM terminals, and also
the leading payment network in Spain.
LA CAIXA is an entity whose company
name is well-known on the market, as demonstrated
by its frequent appearance in newspaper articles.
A copy of several newspaper articles related to
the LA CAIXA company name are attached hereto as
DOCUMENT 2. These articles have been printed in
well- known Spanish and foreign newspapers, and
in all cases the entity is identified by the “La
Caixa” name.
As a result of introduction of the entity throughout
Spanish territory and its position in the European
financial ranking, as well as its participation
in socio-cultural and charitable activities, it
is impossible to imagine that its renown on the
market has gone unnoticed.
“la Caixa” is presently
based in France and Andorra through its subsidiaries
CAIXABANK FRANCE and CAIXABANK, S.A.
As proof of LA CAIXA’s renown,
copies of the results of a search on the http://www.google.com,
http://www.yahoo.com/, http://www.altavista.com
Web sites are attached hereto as DOCUMENTS 3, 4
and 5. These results demonstrate that when the term
“LA CAIXA” is entered in the search engine,
most of the results which appear refer to the complainant.
In WIPO Case No. D2000-0647, Societé
Le Monde interactif vs. Monsieur Elphège
Frèmy, the panelist indicates in his decision
that “if the principal search engines (Yahoo,
Alta Vista, Lycos) show the “Le Monde”
newspaper Web site in the first place on the list
of search results, this constitutes proof of its
implementation on the international level and on
the Internet.”
To this extent, it can be stated
that if a large number of references to the “la
Caixa” entity can be found on the most frequently
used search engines, this shows that it is clearly
a recognized and renowned trademark. (Referent to
the above, see WIPO arbitration resolution D2000-1402).
The above demonstrates that the
complainant is known as “la Caixa” in
Spain as well as internationally, and that it is
famous and renowned.
3. Contact details of the Complainant:
(Lucía Palacín)
Av. Diagonal 621-629, 08028 Barcelona (SPAIN)
Phone: + 34 93 404 73 58
Fax + 34 93 404 62 55
E.mail: lpalacin@lacaixa.es
4. Authorized representative of
the Complainant in the proceedings:
Jordi Kohn
CAIXA D’ESTALVIS I PENSIONS DE BARCELONA (“LA
CAIXA”)
Av. Diagonal 621-629, 08028 Barcelona (SPAIN)
Phone: + 34 93 404 73 59
Fax + 34 93 404 62 55
E.mail: jordi.j.kohn@lacaixa.es
5. Preferred method of communication
with the Complainant in these proceedings:
All electronic communications should be addressed
to the lawyer representing the complainant, Mr.
Jordi Kohn, at the E-mail address jordi.j.kohn@lacaixa.es.
Hard copies delivered by post should be addressed
to Caixa d’Estalvis i Pensions de Barcelona
“la Caixa”, Av. Diagonal 621-629, 08028
Barcelona (Spain).
(II) Respondent
6. The complaint is directed against CATALANHOST.COM.
The e-mail address for CATALANHOST.COM appears in
the CNNIC WHOIS database, as shown in the search
carried out in this database and submitted with
this complaint as DOCUMENT 6.
domains@catalanhost.com
7.According to the WHOIS database, the CATALANHOST.COM
domain name is registered by CATALANHOST.
Mareestrasse 29,
Vaduz (Lichtenstein).
This query also indicates the same
contact e-mail as shown in the searches carried
out in this database, submitted with this complaint
as DOCUMENT 7.
Language of the Proceedings
According to article 8 of the Rules:
"Unless otherwise agreed by the Parties or
determined in exceptional cases by the Panel, the
language of the domain name dispute resolution proceedings
shall be Chinese. The Panel may order that any documents
submitted in languages other than Chinese be wholly
or partially translated into Chinese."
In this case, the disputed domain name was registered
using the Roman alphabet. Both parties communicate
in English and both parties reside outside of the
People’s Republic of China. The Respondent,
by means of his representative, who resides in Indianapolis
(USA), has no difficulty writing extensively in
English (see 12.3).
This is an exceptional case in which the language
of the proceedings shall be English rather than
Chinese (see HKIAC Case No. DCN 300006 Salvatore
Ferragano Italia v. Kotobi Group).
III. Registrar
8.The following domain names are
the subject of dispute in this case:
LACAIXA.CN
LA-CAIXA.CN
9. The registrar of the domain
names is CSL Computer Service (d.b.a.), Joker.com.
The contact details for the registrar of the disputed
domain name are as indicated in the contact details
on the JOKER.COM Web site:
CSL Computer Service (d.b.a. Joker.com)
EIS AG
Baarerstrasse 8
Po Box 458
CH-6300 Zug
Switzerland
Fax: +41 41 758 05 86
Joker.com is provided byCSL Computer Service Langenbach
GmbH
Hansaallee 191-193
40549 Düsseldorf
Germany
Fax: +49 211 867 67 10
IV. Jurisdiction
10. The dispute in this case is
within the scope of jurisdiction of the CNNIC DRP,
and the panel has competent jurisdiction to decide
on the disputed matter. The CNNIC DRP have been
incorporated into and become a part of the domain
name registration agreement whereby the disputed
domain name is registered. A copy of the CNNIC DRP
which is applicable for the disputed domain name
is attached hereto as DOCUMENT 8.
11. Pursuant to the CNNIC DRP,
the Respondent is obliged to take part in these
proceedings, because:
(1) The disputed domain name is
identical to or confusingly similar to the Complainant's
name or the mark in which the Complainant has civil
rights and interests;
(2) The disputed domain name holder
has no legitimate right or interest over the domain
name or the major part of the domain name;
(3) The disputed domain name holder
has registered or is using the disputed domain name
in bad faith.
V. Facts and Reasons
12. This complaint is made on the
following grounds:
The LACAIXA.CN and LA-CAIXA.CN
domain names registered by the respondent are confusingly
similar to the trademarks registered by the complainant,
as demonstrated by the search carried out on May
9, 2006 in the CNNIC WHOIS data base, attached hereto
as DOCUMENT 6. This search showed that the domain
names appearing at that time were registered with
the name of the respondent.
Our client undeniably has sounder
rights, as we shall prove based on the following
allegations:
12.1. THE DISPUTED DOMAIN NAMES,
LACAIXA.CN AND LA-CAIXA.CN, ARE IDENTICAL TO THE
LA CAIXA REGISTERED TRADEMARK AND OTHER MARKS
The complainant “la Caixa”
is holder of the LA CAIXA registered trademark and
other marks .
“LA CAIXA” TRADEMARK:
The complainant is owner of the
“LA CAIXA” trademark in Mexico and Andorra,
as demonstrated by the certificate issued by the
Mexican Institute of Industrial Property, and the
certificate issued by the Trademark Office of the
Principality of Andorra, both of which are attached
hereto as DOCUMENT 9 and DOCUMENT 10.
As indicated, the complainant,
holds the “LA CAIXA” trademark in Andorra,
number 3.008 for classes 16, 35, 36 and 38, registered
on January 24, 1997, which is prior to the date
of registration of the domain name . The complainant
also holds the “LA CAIXA” trademark in
Mexico, number 364.159 for classes 35 and 36, which
was registered on May 24, 1988, a date also prior
to registration of the domain names.
The complainant also holds the
composite “LA CAIXA” trademark registered
with the Spanish Patent and Trademark Office on
November 14, 1986. The certificate granting the
composite trademark 1.168.636 is attached hereto
as DOCUMENT 11. The search conducted on the Spanish
Patent and Trademark Office Web site in which this
trademark is shown to be active is attached as DOCUMENT
12. An application for registration of the same
company name and graphic design as a Community trademark
has also been submitted previously in Chile. The
search conducted on the Office for Harmonization
in the Internal Market (OHIM) Web site, which shows
the status of the application, is attached hereto
as DOCUMENT 13.
As mentioned at the beginning of
this complaint, the “la Caixa” entity
has acquired prestige and renown, and is recognized
as such. The article “la” has been added.
This gives it singularity, while other entities
must always identify themselves with their complete
company name. Therefore, any name which includes
the term “la Caixa” evokes the Catalan
bank CAIXA D’ESTALVIS I PENSIONS DE BARCELONA
in the mind of the consumer.
Therefore, taking into account
the fact that this name has been used in the sector
for over 25 years; its volume and geographic scope,
with over 5,000 branches distributed throughout
Spain; the prestige it has acquired on the Spanish
market; as well as the general public’s awareness
of the mark, there is no doubt as to the nature
of the well-known “LA CAIXA” mark.
"la Caixa" recently opened
its first branch office in the People’s Republic
of China, in the city of Beijing.
Moreover, the complainant is also
the holder of many other marks in which the name
“LA CAIXA” appears as a distinctive element.
These marks are registered in Spain as well as in
49 other countries throughout the world, either
in the countries themselves or as an international
trademark.
OTHER MARKS
The complainant not only holds
registration of the trademarks mentioned in the
previous sections of this document, but also holds
a large number of similar registered trademarks.
All of them have a common characteristic, which
is that they include the term “la Caixa”
as a distinctive element (see DOCUMENT 14).
As a result, by virtue of ownership
of the “LA CAIXA” trademark the holder,
in this case the complainant, is entitled to exclusive
use of the aforementioned name to identify its products
and services in commercial trade on the Internet,
to prevent third parties from using it without authorization,
and even to prevent them from using it to identify
products or services which could cause confusion.
By virtue of the provisions of
article 34 of Spanish Trademark Law, registration
of a mark grants the holder the right to exclusive
use in commerce. Therefore, use of the LACAIXA.CN
and LA-CAIXA.CN names on the Internet by the respondent
constitutes intentional misappropriation of the
rights which the mark grants to its holder since
we are dealing with a sign which, because it is
identical or confusingly similar to the trademarks
previously registered by the complainant, may cause
confusion by the general public.
It is evident that well-known marks
receive special protection in Spain and the European
Union. This is the case of the “LA CAIXA”
mark since, as demonstrated in this complaint, this
name is a mark that is well-known not only in the
sector, but also among the general public. Therefore,
its protection from third parties acting in bad
faith must be reinforced.
All of the marks named in this
document were registered before the disputed domain
name. Based on all that has been mentioned up to
this point, the exclusive rights to the LACAIXA.CN.
and LA-CAIXA.CN domain names held by the complainant
CAIXA D’ESTALVIS I PENSIONS DE BARCELONA (“LA
CAIXA”) are unquestionable.
Although the word “caixa"
with the article “la” means "the
box" in Catalan, the term "la Caixa"
has been used for a very long time. It has become
disassociated from the literal meaning and has become
a specific, distinct term used to identify the business
that has a special connection to the complainant.
As proof of this, it is sufficient to cite the decision
of HKIAC Case No. DCN-0300008, Hugo Boss AG vs Wenzhou
Lucheng District Shangshu Sunbird Department Store
and Zhao Ke Jian as reference.
Finally, we would like to add that
any contention that the respondent may make in its
response referring to the generic character of the
“LA CAIXA” name would have absolutely
no relevance in this proceeding.
As proof of this it is sufficient
to cite the following World Intellectual Property
Organization (WIPO) decisions in which the disputed
names included generic names as reference:
In case D2000-0012, Stella D’oro
Biscuit Co., Inc vs. The Patron Group, Inc. the
panelist stated: “the fact that Stella D’oro
has a discrete and identifiable meaning in Spanish,
as Stella D’oro’s trademark registrations
demonstrate, does not detract from the identity
of the domain name in issue with the Stella D’oro
trademark”.
In case D2000-0143, Raimat, S.A.
vs. Antonio Casals, the panelist states: “the
respondent’s allegation that Raimat is a geographic
identifier or the name of a municipality is irrelevant
in this proceeding”.
In case D2000-0647, Societé
Le Monde Interactif vs. Monsieur Elphège
Frémy, regarding the use of the generic term
“Le Monde” to designate a common product
of the company Societé Le Monde Interactive,
its well-known newspaper, the panelist states that
a company may conduct a commercial activity which
grants such distinctiveness to a generic expression
that this leads to a material evocation of it. Therefore,
a generic element may have a distinctive character
by virtue of its renown.
To this extent the decisions in
WIPO cases D2000-0604, Editora Globo, S.A. vs. Mundo
on line Net; D2000-0166, Plaza Operating Partners,
Ltd. vs. Pop Data Technologies, Inc. and Joseph
Pillus; D2000-0162, Cortefiel, S.A. vs. The Gallery
Group; D2000-0007, Alcoholics Anonymous World Services,
Inc. vs. Lauren Raymond; D2000-0019, Which? Limited
vs. James Halliday; D2000-0065, Surfdog, Inc. vs.
Dr. Charles Cooper; D2000-0073, The Hamlet Group,
Inc. vs. James Lansford; D2000-0141, Cortefiel,
S.A. vs. Javier García Quintas; D2000-0140,
Cortefiel, S.A. vs. Miguel García Quintas;
D2000-0201, Guillermo J. Fesser Pérez de
Petinto y Juan L. Cano Ambros vs. R&t y Tino
Hernández; D2000-0238, Gestevision Telecinco,
S.A. y Estudios Telecinco, S.A. vs. Silher Investments
Group, S.L., D2000-0362, Oxygen Media, LLC vs. Primary
Source; D2000-0384, Easyjet Airline Company Limited
vs. Mahmoud Panjehshahi; D2000-0751, Port Aventura,
S.A. vs. Miguel García Quintas; D2000-0823,
El Rincón del Vago, S.L. et. al. vs. Nettika,
S.L.; D2000-0839, Gruner+Jahr Printing & Publishing
Co. vs. Luis Tobena; D2000-0969, General Optica,
S.A. vs. Alfredo Labadía Pardo; D2000-0970,
General Optica, S.A. vs. RMC, S.L.; and D2000-0910,
Port Aventura, S.A. vs. Próspero Morán
are also illustrative.
Based on the criteria repeatedly
pointed out by the panelists in the aforementioned
decisions, we may state that, due to its special
renown, the “LA CAIXA” name has a distinctive
character that separates it from any possible generic
evocation that may be associated with it.
Furthermore, the complainant holds
the following generic domain names: LACAIXA.COM,
LACAIXA.NET, LACAIXA.ORG, LACAIXA.BIZ and LACAIXA.INFO,
as well as the territorial domain names: LACAIXA.ES
(Spain), LA CAIXA.FR (France), LACAIXA.IT (Italian),
LACAIXA.LU (Luxembourg), LACAIXA.CO.UK and LACAIXA.ORG.UK
(United Kingdom), LACAIXA.LI (Liechtenstein), LACAIXA.BE
(Belgium), LACAIXA.DK (Denmark), LACAIXA.CH (Switzerland),
LACAIXA.TO (Tonga), LACAIXA.CAT (Catalonia) and
LACAIXA.EU (European Union). “la Caixa”
has also registered LACAIXA.NET.CN in China.
12.2. THE HOLDER OF THE DISPUTED
DOMAIN NAME HAS NO LEGITIMATE RIGHT TO OR INTEREST
IN THE DOMAIN NAME
According to the information obtained
in the CNNIC WHOIS database, the disputed domain
name was registered by Catalanhost.com.
The current holder of the domain
name disputed in this complaint does not hold the
“LA CAIXA” registered trademark, nor any
other trademark which is similar to the aforementioned,
nor any license or other type of authorization for
use granted by the legitimate holders of such trademarks.
Therefore, the respondent does not have any legitimate
right to or interest in use of the term “LACAIXA”
as a domain name nor, consequently, to identify
itself by use of this term.
As the panel can observe, the respondent
has not used the domain name in connection with
any bona fide offering of goods or services. At
present, the LACAIXA.CN Web site does not have any
contents. It only offers the home page with different
links to searches using the Google search engine.
Therefore, the respondent is only using the domain
name to operate a Web site featuring links to some
commercial Web sites through Google.
The contents of the Google search
engine already show that the respondent does not
seek to present a Web site with its own contents,
but rather that it is only attempting to give the
impression that it is using the domain name.
Furthermore, the respondent has
not yet acted this way. The next case can be seen
in the National Arbitration Forum decision, Claim
No. FA0602000637920 The University of Houston System
vs. Salvia Corporation.
It is evident that the respondent
cannot argue that it is known by the domain name
since there is no connection between the meaning
of the domain name in Catalan and the kind of services
offered on the site mentioned. There is no reason
for the respondent to choose this domain name, since
“LA CAIXA” is not a common name, and even
less so in China.
12.3. THE HOLDER OF THE DISPUTED
DOMAIN NAME HAS REGISTERED OR IS USING THE DISPUTED
DOMAIN NAME IN BAD FAITH
The complainant is convinced that
the domain names which are the subject of this complaint
were registered in bad faith. The respondent has
not used the disputed domain name commercially at
any time other than offering links to Web sites
through the Google search engine. This fact and
the evidence stated below demonstrate a lack of
legitimate interest regarding this domain name,
and suggest that it was registered due to evident
bad faith.
The literal form of the LACAIXA.CN
and LA-CAIXA.CN domain names has nothing to do with
the data provided by the holder when registering
this domain name. Therefore, the sole reason for
carrying out such registration could only have been
to later sell the domain name to the party that
actually had legitimate interests in it, and to
benefit from doing so.
As has already been clearly demonstrated,
the complainant is a well-known entity in Spain
and is ranked third in the European savings bank
sector. It has been shown that the aforementioned
trademark was registered long before the respondent
registered the disputed domain name, and also that
the complainant is a prestigious, well-known company
in Spain.
The respondent does not have and
does not presume to have any legitimate interest
in maintaining this domain name other than to give
the impression on its Web site that it is legitimate
to use the LACAIXA.CN and LA-CAIXA.CN domain names,
for the following reasons:
The respondent has Web sites called
“The Box of Sciences” and “La caixa
de ciències” under the LACAIXA.CN and
LA-CAIXA.CN domain names. However, the respondent
does not have any trademark or business name with
these names.
The respondent does not offer products
or services. It does not have any contents on its
Web sites except for some science-related hyperlinks
and the Google search engine.
Also, the respondent has not registered
the names of the Web sites, for example “Theboxofsciences”
or “lacaixadeciencies”, or “thebox”.
The respondent has only registered the “LA
CAIXA” trademark.
On May 11, 2006 an e-mail was sent
to the e-mail address provided to the registry by
the registrant. In this communication an attempt
was made to inform the respondent that CAIXA D’ESTALVIS
I PENSIONS DE BARCELONA (“LA CAIXA”) is
a bank that holds several national and international
registered trademarks, and that it has not provided
any authorization whatsoever to use the bank’s
distinctive signs as a domain name. It also requested
collaboration to transfer this domain name without
any charges. A copy of the document sent by e-mail
is attached hereto as DOCUMENT 15.
This statement could not be sent
by post since, as suspected, the address of the
WHOIS database was not accurate. This address in
Vaduz refers to a hotel, not a company. See DOCUMENT
16 attached.
The aforementioned fact appears
to suggest that the respondent used incomplete data
in the registration agreement to conceal his true
identity or to make it difficult to be able to contact
him. This implies bad faith and is an evident breach
of the registration agreement which all registering
agents are bound to. This agreement includes a clause
in which the registrant is bound to guarantee that
the information included in the registration form
is true, current, complete, and accurate.
Furthermore, in DOCUMENT 17 attached
there is an e-mail in which the registrant’s
representative requests that “la Caixa”
provide the sum of 3 million euros for sale of the
LACAIXA.CN domain name. This is evidence of the
bad faith of the respondent. In this e-mail the
registrant’s representative uses the English
language. The representative is an American lawyer
who resides in Indianapolis.
Subsequently, the complainant received
two more communications in which the respondent’s
representative insists on negotiating a price for
transferring the current domain name to “la
Caixa”. See DOCUMENTS 18 and 19.
It has been shown that the aforementioned
trademarks were registered a long time before the
respondent registered the disputed domain name,
and also that the complainant is a prestigious,
well-known entity in Spain. Therefore, when the
respondent registered this domain name, he was aware
of the fact that he was taking over a name which,
from a commercial point of view, is a key point
for the complainant.
In his decision on WIPO Case No.
D2002-0506, Caja de Ahorros del Mediterráneo
vs. Antonio Acuña Racero, the panelist found
the following: “Given the referred to renown,
is it clear that the Respondent registered the domain
name fully aware that he was infringing the rights
of the Complainant, and also aware that use of the
domain could cause confusion between Internet users
as to the real identity of the holder of the domain
[…] On the other hand, the fact that the Complainant
has not registered as a domain a name which coincides
with that of his marks, in its full version (although,
the Complainant has since applied to register the
syncopated version “cam” as a first level
domain) does not lead us to believe that it would
permit or tolerate the infringement of its rights
in general and particularly with regard to the registration
and use of the disputes domain. Obviously, the mere
acquisition of a domain name does not in itself
accredit the Respondent’s legitimate interest
(the findings of the panel were also similar in
its decisions in WIPO Case No. D2000-0003 “Telstra
Corporation Limited vs. Nuclear Marshmallows”;
WIPO Case No. D2001-0001, “City of Hamina vs.
Paragon International Projects Ltd.”). Furthermore,
in keeping with some of the panel’s decisions,
which need not be mentioned at this point, the previously
existing renown of the distinctive signs cause the
burden of proof to fall on the holder of the domain,
who, given that it would be impossible for the complainant
to do so, is in a better position to prove his good
faith, which he must do, and in so doing, his legitimate
interests.”
The lack of existence of legitimate
interest, as well as awareness of the “la Caixa”
entity with a solid presence on the market that
cannot be ignored by those who seek to register
a domain name that contains the name of the complainant
and the mark registered to the complainant, lead
to the conclusion that the only reason that the
LACAIXA.CN and LA-CAIXA.CN domain names were registered
was to obtain economic gain by selling them to “la
Caixa”.
Therefore, in accordance with the
statements made up to this point, the respondent
registered a domain name which is exactly the same
as the trademarks registered by one of the most
important banks in Spain and Europe, has not made
commercial use of this domain, and has registered
the domain with a contact address which appears
to be false, probably in order to make it difficult
to contact him.
VI. Remedies
13. In accordance with the CNNIC
DRP, and based on the reasons stated above, it is
requested that the expert panel decide to transfer
the disputed domain names considered in this case
to the complainant.
VII. Expert panel
14. The complainant chooses to
have the case considered and decided by a single-member
panel.
VIII. Other judicial proceedings
15. There are no judicial procedures
pending related to the aforementioned domain name.
IX. Payment of fees
17. The fees required for these
proceedings are RMB 6,000, which shall be paid by
bank transfer (DOCUMENT 20)
X. Final confirmation
18. The Complainant confirms that
the relevant complaint has been made in compliance
with CNNIC DRP, CNNIC DRP Rules and the Supplemental
Rules, as well other relevant laws and regulations.
Moreover, to the best of its knowledge, the information
provided in the complaint is complete and accurate.
The complaint as well as the remedies claimed are
made against the holder of the registered domain
name, and shall not affect the domain name dispute
resolution service provider nor the panelist in
any way, nor shall they have any effect whatsoever
on the domain name registry and registrar, the registration
officer, and the domain name agency.
The Complainant:
CAIXA D’ESTALVIS I PENSIONS DE BARCELONA “LA
CAIXA”
Date: October 26th 2006
ANNEX
DOCUMENT 1: “la Caixa”
2005 Annual Report.
DOCUMENT 2: Copies of several newspaper
articles regarding the LA CAIXA name, which appeared
in well-known Spanish newspapers. A summary of newspaper
articles prepared by the entity’s External
Relations and Press Department on [January 20, 2005].
DOCUMENT 3: A search carried out
on the http://www.google.com Web site which shows
that when the term “la Caixa” is entered
in the search engine, most of the results that appear
refer to companies founded by the complainant.
DOCUMENT 4: A search carried out
on the http://www.yahoo.com Web site which shows
that when the term “la Caixa” is entered
in the search engine, most of the results that appear
refer to companies founded by the complainant.
DOCUMENT 5: A search carried out
on the http://www.altavista.com Web site which shows
that when the term “la Caixa” is entered
in the search engine, most of the results which
appear refer to companies founded by the complainant.
DOCUMENT 6: A search carried out
in the CNNIC WHOIS database on September 22, 2006
in which catalanhost.com appears as holder of the
LACAIXA.CN and LA-CAIXA.CN domain names.
DOCUMENT 7: A search carried out
in the UWHOIS.COM database on September 20, 2006
in which CATALANHOST appears as holder of the CATALANHOST.COM
domain name, with the same e-mail as in previous
searches.
DOCUMENT 8: A copy of the CNNIC
DRP applicable for the current domain name dispute.
DOCUMENT 9: A copy of the certificate
issued by the Mexican Institute of Industrial Property,
which accredits ownership of “la Caixa”
in this country.
DOCUMENT 10: A copy of the certificate
issued by the Trademark Office of the Principality
of Andorra which demonstrates ownership of “la
Caixa” in this country.
DOCUMENT 11: A copy of the certificate
issued by the Spanish Patent and Trademark Office
which demonstrates ownership of the composite distinctive
sign under the “la Caixa” name.
DOCUMENT 12: A search carried in
the Spanish Patent and Trademark Office database
which demonstrates that the composite distinctive
sign “la Caixa” has not expired.
DOCUMENT 13: A search carried out
on the Office for Harmonization in the Internal
Market (OHIM) site related to the “LA CAIXA”
European Community trademark.
DOCUMENT 14: A list of marks held by the Caixa d’Estalvis
i Pensions de Barcelona (“la Caixa”) which
contain the “LA CAIXA” name.
DOCUMENT 15: A copy of the document
sent to the respondent claiming the LACAIXA.CN domain
name.
DOCUMENT 16: A search carried out
on the Internet about the respondent’s address
in Vaduz (Lichtenstein).
DOCUMENT 17: first e-mail received
written by the representative of the respondent.
DOCUMENT 18: second e-mail received
written by the representative of the respondent
in order to negotiate the transfer.
DOCUMENT 19: Third e-mail received
written by the representative of the respondent
in order to negotiate the transfer.
DOCUMENT 20: A copy of the receipt
for the money transfer to HKIAC.
CATALANHOST RESPONSE:
A. Identity or confusing similarity
to the trademark or service mark in which the complainant
has rights
“La Caixa” is a catalan
term which translates to “the box.” “The
Box” is a generic term like the house or the
car. CAIXA D.ESTALVIS I PENSIONS DE BARCELONA
has trademarked the term “lacaixa” in
Mexico, Andorra and Spain and is known as CaixaBank
or BancolaCaixa. The only country where the bank
is commonly known as La Caixa is Spain. In fact
on page 12 of the complaint, the Complainant itself
states that the term La Caixa would be virtually
unknown in China.
The trademarks held are limited
to the area where they are given and the fact that
the CAIXA D.ESTALVIS I PENSIONS DE BARCELONA
goes by the name CaixaBank in Andorra and France
and Bancolacaixa in Mexico shows the fact that La
Caixa is not an internationally business name. According
to their complaint, no claim is made to any rights
in China for the term “La Caixa”.
There have been multiple cases
brought before WIPO that show that common terms
cannot be completely controlled or owned. DeutschePost
AG v NJDomains Case No D2006-0001; Wal-Mart Stores,
Inc v Lynda’s Case No. D2003-0719; Gordon Sumner,
p/k/a/ Sting v Michael Urvan Case No. D2000-0596;
Sallie Mae Inc. v Michele Dinola Case No. D2004-0648
Goldline International v Gold Line Case No. D2000-1151and
AXA China Region Limited v Kannet Limited Case No
D2000-1377.
Panelist found in Sallie Mae Inc.
v Michele Dinola Case No. D2004-0648 agreed with
the findings in Etam, plc v Alberta Hot Rods that
a complainant does not have exclusive rights to
“to this fairly short, non fanciful name, [thus]
Respondent may legitimately its own use of that
name in an unrelated field.”
Furthermore the respondent does
not offer services that could be confused with those
of CAIXA D.ESTALVIS I PENSIONS DE BARCELONA,
nor is it attempting to trick the public in to mistaking
it with the Claimant.
Finally, lacaixa.cn and la-caixa.cn
were established before the CAIXA D.ESTALVIS I PENSIONS
DE BARCELONA had an interest or presence in the
Chinese market.
B. Rights or legitimate interests in respect of
the domain name
In June of the 2005 lacaixa.cn
and la-caixa.cn were envisioned to establish an
open information portal to lead to the wider dissemination
and cooperation of international scientist and interested
lay people. Our strategy is based on activating
generic controls in different languages connected
and linked strategically to form networks that attract
visitors with academic interests and scientists
of different sub-areas.
The idea of naming this entity
La Caixa De Ciencies was born of a combined imagery
of both a tool box and a medicine chest, as well
as the mythological story of Pandora’s Box
(La caixa de Pandora in catalan). Using the term
“The box of” (the literal translation
of La caixa) is a common usage and turn of phrase
not connected to any specific business entity. The
fact that this web portal concept was developed
by an American and a Catalan led to the decision
to use the catalan word as www.thebox.cn was already
registered. Furthermore it was decided that theboxofsciences
or lacaixadecienceis would be too cumbersome and
easy to misspell to be used. Please see Attachment
A for sample of other uses of “the box of”
, or “la caixa.”
The Complainant’s contention that we do not
offer bone fide services through lacaixa.cn and
la-caixa.cn is a misunderstanding of the concept
behind open web portals. The fact that they dismissively
characterize our legitimate efforts at creating
an effective web portal is unfortunate. Web Portals
have a legitimate place on the World Wide Web and
a long history. Many of the portals started initially
web directories. We are modeling ourselves on portals
such as those in India (Rediff), (MswPower.Com)
China (Sina.com) Italy (Webplace.it) and so on.
Such portals reach out to the widespread diaspora
spread across the world. (See Attachment B for examples)
We have been working on the content of lacaixa.cn
for a year, and it is a site under construction.
We intend to improve day by day the information
that we make available and we expect that our presence
will continue growing until we can establish the
necessary infrastructures to create more interactive
content.
The immediate project offers part of those contents
translated in Chinese tongue to facilitate the accesses
to the visitors that arrive through http://lacaixa.cn.
Chinese network and the first connection of links
is published then that relates the searches in http://Google.com
and http://Google.cn under the concept "The
Box of Sciences". (Attachment C)
The endeavors of lacaixa.cn are
genuine. The website exists to help in our attempt
to position ourselves in the Chinese market. Our
website lacaixa.cn existed prior to the knowledge
that CAIXA D.ESTALVIS I PENSIONS DE BARCELONA
intended to open a branch in China, as this bank
has presence in European countries but would have
been unknown to the Chinese market at the inception
of Lacaixa.cn and la-caixa.cn.
C. Bad Faith
We made no attempt to contact CAIXA
D.ESTALVIS I PENSIONS DE BARCELONA during the
period that we owned the domain. No attempts were
made to sell our domain to them.
We feel that the characterization
of our good faith efforts at a non-profit oriented,
public edification web portal have been dismissed
and denigrated by CAIXA D.ESTALVIS I PENSIONS
DE BARCELONA, who assumes to have control over all
instances of the term “la caixa” worldwide.
The trademarks they hold are clearly limited to
those areas and CAIXA D.ESTALVIS I PENSIONS
DE BARCELONA did not have a known interest in the
Chinese market when we began our site.
Complainant has asserted that we did an offer to
sell the domain name and that this is evidence of
bad faith. It is evident that we never contacted
the complainant and it is not true that we did an
offer to sell our domain. Moreover, as noted in
Deutsche Welle v. DiamondWare Limited Case No. D
2000-1202, “The Panel does not interpret the
Policy to mean that a mere offer for sale of a domain
name for a large sum of money is, of itself, proof
of cybersquatting. … Indeed, some of the largest
sums of money paid for domain names have been for
generic names”
Our responses to CAIXA D.ESTALVIS I PENSIONS
DE BARCELONA have been in line with the threatening
and dismissive tone of their communications with
us (Attachment D). We just ignored them. Simply
because we are a small entity, CAIXA D.ESTALVIS
I PENSIONS DE BARCELONA feels it has the power
to force us to bend to their will. This is an instance
of attempted reverse domain hijacking. Reverse Domain
Name Hijacking is defined in paragraph 1 of the
Rules as meaning "using the Policy in bad faith
to attempt to deprive a registered domain name holder
of a domain name." (Attachment E)
Complainant has established bad
faith by asserting that we do not offer bone fide
services although our site has been active for over
1 year, just because the complainant does not see
the value of our offerings, does not prove that
they are not valid and useful to others. They also
establish bad faith by attempting to force us to
transfer the domain name to them through threatening
letters. Furthermore the complainant has a vested
financial interest in acquiring lacaixa.cn that
it has not disclosed. Before the establishment of
a presence of CAIXA D.ESTALVIS I PENSIONS DE
BARCELONA in China, CAIXA D.ESTALVIS I PENSIONS
DE BARCELONA took no issue with our use of the domain
name. Transfer of the Domain Name to Complainant
would effectively provide Complainant with all of
Respondent’s web traffic, which is due to Respondent’s
goodwill in the Domain Name lacaixa.cn and la-caixa.cn.
At present we receive around 50,000 monthly visitors.
A widely regarded case of reverse
domain hijacking occurred in 2000, when the Deutsche
Welle attempted to acquire the domain dw.com from
software company Diamond Ware. This attempt was
reprimanded as reverse domain hijacking in 2001
by the WIPO in Case No. D 2000-1202 http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-1202.html
We were not willing to comply with
the bullying of CAIXA D.ESTALVIS I PENSIONS
DE BARCELONA, but gladly accepted the offer to go
through the mediation process with the Hong Kong
International Arbitration Center.
