The Complainant is Visa Europe Limited of Paris, France, represented by Inlex Conseil of France.
The Respondent is C of Madison, Mississippi, United States of America. 2. The Domain Names and Registrar
The disputed domain names , and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2010. On September 10, 2010, the Center transmitted by email to GoD, Inc., a request for registrar verification in connection with the disputed domain names. On September 13, 2010,
GoD, Inc. 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 September 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2010.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 15, 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. 4. Factual Background
It is open for the Panel to infer from the Respondent’s failure to file a Response that the Respondent does not dispute the Complainant’s contentions and otherwise to make such inferences from this as the Panel may see fit.
The Complainant is the assignee of activities previously carried out by GIE Groupement Carte Bleue and by the SAS CARTE BLEUE.
The GIE Groupement Carte Bleue was created in 1971 and entered in 1973, into a partnership with the American company Bank of America. Since then, many services have been developed, directly linked to the PREMIER credit cards.
The first PREMIER cards were issued in 1998 by a group of banks, and these cards permitted their customers to withdraw and spend money.
The Complainant is very well known and provides more than 200 banks with a wide range of cards, including the range of PREMIER cards, in order to meet the needs of the bank’s customers who are both individual and companies.
PREMIER products and services are well known in France since VISA EUROPE LIMITED is one of the main companies in the bank card activity which helps banking institutions and banks in developing credit card services.
Nowadays, VISA EUROPE LIMITED counts more than 34 millions bank cards, and the number of PREMIER cards is more than 3 million.
The Complainant is the owner of the following trademarks:
- PREMIER, classes 9 and 36, Community Trade Mark (with Device) N° 000708396, registered on 7 August 2002 and duly renewed in 2007.
- PREMIER, classes 9 and 36 Community Trade Mark (with Device) N° 4002705, registered on 14 December 2005.
- PREMIER, classes 9, 36 and 38, France (with Device) N° 3310133 registered on 27 August 2004.
The Respondent registered the disputed domain names , and on June 8th, 2008. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the domain names contain the trademark PREMIER with the terms “credit cards” and ”now”. Therefore, the Complainant alleges that these registrations could be associated to the PREMIER credit cards.
The Complainant adds that the element PREMIER is dominant and that the element “credit cards” is totally descriptive of the products it relates to and that the element “now” is only an adverb of time, whose function is to give time information about the element it refers to.
The Complainant says that the retrieving of PREMIER within the sign PREMIERCREDITCARDSNOW brings out a strong similarity between the signs, which could lead the consumer to confusion.
The Complainant says that it has not licensed or otherwise authorized the Respondent to use neither its trademarks nor its domain names, and even less the PREMIER denomination.
The Complainant alleges that PREMIER is a well-known trademark for credit cards, and the association of the elements PREMIER and credit cards in the contested domain names cannot be considered as a coincidence. Therefore, the Complainant concludes that the registrant necessarily knew the trademark PREMIER and the service of PREMIER credit cards.
The Complainant asserts that it is obvious that when the Respondent registered the contested domain names, he clearly knew of the existence of the Complainant’s trademarks, and such knowledge indicates the Respondent’s bad faith when registering the domain names.
The Complainant adds that the disputed domain names are redirecting to “”, and thus used to promote an affiliation program which gives the opportunity for private individuals to market credits cards for financial institutions through their own website. The Complainant says that this clearly means that the current registrant is using these domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant must prove the following:
(i) the Respondent’s domain names are 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 names; and
(iii) the Respondent’s domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has shown that it owns trademark registrations of the mark PREMIER in different countries.
The disputed domain names , and combine the registered PREMIER trademark in its entirety with the addition of the terms “credit cards” and “now”. The name PREMIER is clearly the dominant element of the domain name. The Panel has had little difficulty in finding that the domain name is confusingly similar to the trademark PREMIER, as the additional elements are, in a trademark sense, descriptive.
There is plenty of authority under the Policy to conclude that confusing similarity is warranted where the disputed domain names embody the Complainant’s mark in its entirety, despite the addition of descriptive terms.
In sum, the domain names are confusingly similar to the Complainant’s marks. Therefore, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the domain names or to use the trademarks. The Complainant has prior rights in the trademarks which precede the Respondent's registration of the domain names by several years. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.1).
The Respondent has failed to show that it has acquired any trademark rights in respect of the domain names or that the domain names are used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Respondent's actions, with respect to the disputed domain names, constitute bad faith registration and use.
The Complainant's allegations with regard to the Respondent's registration and use of the domain names in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent because of its default.
Given the use of the Complainant’s trademarks for credit cards and the combination of the trademark PREMIER and the terms “credit cards” and “now”, it is inconceivable to the Panel that the Respondent registered the domain names without prior knowledge of the Complainant’s marks.
With respect to the use in bad faith, the Panel visited the domain names and was able to check that the domain names and redirected to a domain name where it is possible to find, as stated by the Complainant, the promotion of affiliate programs which give the opportunity to private individuals to market credit cards for financial institutions through their own website. The domain name contains information used to compare and promote cards offerings from well-known banks and credit card companies, most of whom are in competition with the Complainant.
The Panel therefore finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants' mark (See, Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784; L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Hoffmann-La Roche Inc. v. Online Pharma,WIPO Case No. D2006-0628; Sanofi-Aventis, Aventis Pharmaceuticals Inc., Aventis Pharma S.A. v. Conor O' Connor,WIPO Case No. D2006-1310 and Aventis Pharmaceuticals Inc., Aventis Pharma SA v. Goldie Fishero,WIPO Case No. D2004-0094).
Therefore, the Panel finds that the domain name was registered and is being used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii), are also fulfilled 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 names , and be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Dated: October 29, 2010
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