The Complainant is Caisse Nationale des Allocations Familiales of Paris, France, represented by SELARL du Manoir de Juaye, France.
The Respondent is Anonymous Anonymous of 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 May 15, 2012. On May 15, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On May 15, 2012, 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 May 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2012.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on June 26, 2012. 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 dispute concerns the disputed domain name , which was created on May 14, 2011. At the time of the Complaint, the disputed domain name resolved to a website providing information on the family branch of the French social security system and on the Complainant. The Respondent’s website also contains advertisements with links to websites that are unrelated to the Respondent.
The Complainant is a French national public authority governed by articles L. 223-1 et seq. of the French Social Security Code. The Complainant heads the family branch of the French social security system and notably finances all family benefit schemes and centralizes all operations related to family benefit offices.
The Complainant owns several trademarks comprising the word “Caf” in France including among others:
- CAF, a French word trademark registered on October 26, 1989 and renewed on October 28, 2009 under No. 1718238;
- CAF, a French word trademark registered on October 28, 2009 under No. 3687052;
- ALLOCATIONS FAMILIALES CAF, a French semi-figurative trademark registered on March 25, 1999 and renewed on February 18, 2009 under No. 99782908.
The Complainant also uses the domain name to provide information about its services and the family branch of the French social security system. This domain name was created on April 3, 1998.
According to the publicly available WhoIs database, the Respondent identified itself as “Anonymous Anonymous”. The concerned Registrar eNom did not provide any further information on the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is satisfied with respect to the disputed domain name.
The Complainant alleges that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. According to the Complainant the dominant component in the disputed domain name is the word “Caf” which is identical to its CAF trademarks. The word “infos” is only a descriptive element that does not enable the disputed domain name to be distinguished from the Complainant’s trademarks.
The Complainant adds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Further, the Respondent has never been authorized by the Complainant to use its trademarks.
Finally the Complainant contends that it is a very well-known public authority in France and that in registering the disputed domain name, the Respondent knew that it was misappropriating the word trademark CAF in the hope of selling the disputed domain name. The Complainant adds that the Respondent now uses the word “Caf” in the disputed domain name to attract Internet users to its website and attempts to create confusion with the Complainant by providing information related to the family branch of the French social security system and to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Complainant must prove each of the following:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark of service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel observes that the Complainant has provided evidence of several trademark registrations containing the word “Caf”, which is obviously identical to the relevant part of the disputed domain name . The other part of the disputed domain name, “infos”, is the French diminutive for “information”.
The Panel reminds that, when a domain name wholly incorporates a complainant’s registered mark, it may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Mattel Inc. v. A Domain Privacy,WIPO Case No. D2011-2264). It is a well-established principle that the addition of descriptive or non-distinctive terms to a complainant’s trademark in a domain name may not dispel confusion.
Regarding the disputed domain name, there is no doubt to the Panel that the term “Caf” is the dominant component of the disputed domain name and that the term “infos” is only descriptive and thus does not dispel confusion between the Complainant’s trademarks and the disputed domain name.
In view of the above, the Panel considers that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights pursuant to the Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy outlines circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
The Panel reminds that UDRP panels have interpreted paragraph 4(a)(ii) of the Policy to require a complainant to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name at issue in order to have the burden of production shift to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Mattel Inc. v. A Domain Privacy,WIPO Case No. D2011-2264).
Here, the Panel finds that the Complainant has indeed made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. This finding is based on the non-disputed circumstances brought forward by the Complainant that the Complainant never gave the Respondent any permission or authorization to use the word “Caf” as part of a domain name or in any other way. The Panel notes that the Respondent’s website contains advertisements with links to websites that are unrelated to the Respondent and thus that the Respondent cannot be considered as making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
In this case, the Respondent did not respond to the Complaint and thus has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy.
In view of the above, the Panel considers that the Respondent does not have any rights or legitimate interests in the disputed domain name pursuant to the Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy outlines circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. These circumstances are:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent have engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 website or location or of a product or service on the Respondent’s website or location.
In this case, the Complainant is a very well-known French public authority: in France, more than 11 million households claim family benefits. The Complainant uses its own domain name to provide information about its services and the traffic on its website varies between 13 and 15 millions hits per month. Therefore, there is no doubt that the Complainant is famous in France.
The disputed domain name was created on May 14, 2011. At that time the Complainant’s registered domain name had been long established. The Panel finds that the Respondent must have known the existence of the famous CAF trademark at the time of registration of the disputed domain name. The Panel reminds that registration of a well-known trademark as a domain name may be a clear indication of bad faith in itself (see The Gap Inc. v. Deng Youqian,WIPO Case No. D2009-0113). Therefore, the Panel considers that the Respondent did not register the disputed domain name in good faith.
Furthermore, the Complainant proved that the website to which the disputed domain name resolves provides information about the Complainant and the family branch of the French social security system. It also appears that the Respondent’s website contains advertisements with links to websites that are unrelated to the Respondent. Such websites may have arranged to pay a commission to the Respondent for each visitor so referred. The referring websites may thereby generate a revenue stream for the Respondent.
It is commonly held that such pay-per-click business shall not necessarily be considered as illegitimate. However, this practice may be illegitimate when another’s trademark is featured in the domain name without authorization as a mean of attracting visitors (see Pearson Education, Inc v. CTP Internacional; Private Registration at Directi Internet Solutions Pvt. Ltd. and ,WIPO Case No. D2009-0266; Mattel Inc. v. A Domain Privacy,WIPO Case No. D2011-2264).
In this case, the Panel finds that Internet users searching for the Complainant online may find the Respondent’s website instead and become confused as to the Complainant’s affiliation with the website and featured content.
As a consequence, the Panel finds that there is no reason for the Respondent to use the CAF trademark except to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, or affiliation of the Respondent’s website, which constitutes evidence of bad faith.
Therefore, based upon the uncontested statements and documents submitted by the Complainant and in accordance with the Policy, the Panel considers that the disputed domain name was registered and is being used in bad faith pursuant to the Policy paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Christiane Féral-Schuhl
Sole Panelist
Dated: July 11, 2012
Full & Egal Universal Law Academy