WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION SAS Carte Bleue v. Jean Philippe Perl Case No. D2010-0535 1. The Parties
The Complainant is SAS Carte Bleue of Paris, France, represented by Inlex Conseil, France.
The Respondent is Jean Philippe Perl of Paris, France. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2010. On April 9, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 9, 2010 eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 12, 2010.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on May 26, 2010. 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.
Regarding the language of the proceeding, the Center ascertained from the Registrar that the language of the Registration Agreement is English. Accordingly, the Panel determines that pursuant to paragraph 11(a) of the Rules the language of the proceeding is English, i.e. the language of the registration agreement. 4. Factual Background
The evidence submitted by the Complainant, which, in the absence of any Response by the Respondent remains undisputed, indicates that the Complainant, a simplified company by shares organized under the laws of France, provides to about 200 banks charge cards which are issued by them to more than 34 million customers. As part of its business, the Complainant or its assignor and predecessor in interest, GIE Groupement Carte Bleue, has secured a variety of French and Community trademark registrations for the mark CARTE BLEUE, the earliest one dating back to 1967.
The disputed domain name was registered by the Respondent on July 23, 2009. 5. Parties' Contentions A. Complainant
(i) The Complainant asserts that in the field of bank cards for individuals and companies, its Carte Bleue marks are famous, especially in France, and that due to the many services linked to the Carte Bleue cards, including the consultation of bank accounts online by Internet, it has to be extremely vigilant.
(ii) The Complainant contends that the Respondent's domain name is nearly identical to and confusingly similar to the Complainant's marks, because it incorporates in its entirety the Complainant's famous CARTE BLEUE mark with the mere addition of the possessive pronoun “my” preceding it.
(iii) The Complainant contends that since the Complainant's adoption and extensive use of the marks predates the registration date of the disputed domain name, the burden is on the Respondent to establish rights or legitimate interests in the disputed domain name, and that the Respondent cannot demonstrate any such rights or legitimate interests.
(iv) The Complainant contends that the Respondent's bad faith registration and use of the disputed domain name is established by the fact that the latter consists of Complainant's famous mark, with the addition of the prefix “my”, that the Respondent had received no authorization, license or permission to use it, that the Respondent had constructive notice of Complainant's registered trademarks due to their being famous, and by the fact that the disputed domain name, by attracting Internet's users to the Respondent's web site, creates a likelihood of confusion with the Complainant's famous marks as to the source, sponsorship affiliation or endorsement of the Respondent's web site.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Procedural aspects
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the time limit set by the Policy and Rules.
Paragraph 10(a) of the Rules gives the Panel broad discretion to conduct the proceedings and paragraph 10(b) of the Rules also obligates the Panel to give each party “a fair opportunity to present its case”.
At the same time, the Panel must ensure that the proceedings take place “with due expedition”.
Accordingly, in the interest of fairness and of deciding the case on the basis of the most complete available record, the Panel has undertaken some limited factual research into matters of public record insofar as it felt it needed the results of such research to reach its decision.
The Panel thus ascertained that the Respondent's web site is no longer showing to be under construction and in fact cannot currently be accessed at all.
Under paragraph 4(a) of the Policy, it remains the Complainant's burden to establish that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that the Panel shall proceed to a decision on the Complaint. Under paragraph 14(b) of the same Rules, the Panel is empowered to draw such inferences from the Respondent's default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by the Complainant.
In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant's arguments that the Respondent has acted in bad faith. 6.2 With respect to the requirements of paragraph 4(a) of the Policy A. Identical or Confusingly Similar
In comparing the Complainant's mark to the disputed domain name, it is evident that the latter, , consists solely of the Complainant's trademark CARTE BLEUE, preceded by the generic term “my”. The addition of generic terms does not ordinarily serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor,WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 and Allianz AG v. Marian Dinu,WIPO Case No. D2006-0318.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's CARTE BLEUE marks, despite the addition of this generic term.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
There is no evidence in the record in this case that persuades the Panel that the Respondent has any rights or legitimate interests in the disputed domain name. The Complainant credibly states that the Respondent has no rights or legitimate interests in the disputed domain name and the Panel finds that this contention is unrebutted as a consequence of the Respondent's lack of any Response.
Neither does the use of the disputed domain name appear to the Panel to be in connection with a legitimate noncommercial or fair use, nor to be without the intent to misleadingly divert customers for commercial gain.
As such, on balance, the Panel is entitled to infer that the Respondent has no rights or legitimate interests in the disputed domain name and as a consequence, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. The fourth is the intentional attempt “to attract, for commercial gain, Internet users to [the Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site or location or of a product or service on [the Respondent's] web site or location.”
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant's arguments that the Respondent has acted in bad faith.
In this case, the Respondent, who has his address in France, registered the disputed domain name more than 30 years after the Complainant began using its mark in France.
The Panel also notes that the Center's website lists two cases, SAS Carte Bleue contre Association des Amis des Malades de l'Hôpital Cochin,WIPO Case No. D2005-1147 and SAS Carte Bleue v. Business Affiliation Ltd., WIPO Case No. D2006-1583 (the first of which where the decision was rendered in the French language), in which the Complainant is the complainant, and finds that the Respondent must have been aware of the Complainant's trademark rights at the time he registered the disputed domain name. See Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel also notes that the conduct of the Respondent since receiving notification of the Complaint is strongly indicative of bad faith, in line with Sanofi-Aventis v. New Health Care Inc., Kevin Josh,WIPO Case No. D2008-1881, insofar as he seems to have declared in writing on or about September 24, 2009, i.e. prior to receiving notification of the Complaint, to be amenable to “terminate” the disputed domain name, but has not acted accordingly, mentioning on the contrary for awhile on its web site under construction “Carte Bleue pour tout le monde”, thus not even using the prefix “my” of the disputed domain name any longer.
Moreover, the Respondent has held passively the disputed domain name. It is well established since Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003, that the mere passive holding of a domain name may in appropriate circumstances constitute bad faith use.
The Panel concludes in the present circumstances that the Respondent registered and used the disputed domain name in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case. 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 be transferred to the Complainant.
Louis-Bernard Buchman
Sole Panelist
Dated June 6, 2010
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