The Complainant is Confédération nationale du Crédit Mutuel of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is iPage of Burlington, Massachusetts United States of America. 2. The Domain Names and Registrars
The disputed domain names , , , , and are registered with D, LLC.
The disputed domain name is registered with FastDomain, Inc. (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2013. On September 9, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names (the “Domain Names”). On September 9 and September 10, 2013, the Registrars transmitted by email to the Center their 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 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2013. Further to the Complainant’s request, the proceedings were suspended on September 20, 2013. Upon the Complainant’s request, a notice of reinstitution of the proceedings was issued by the Center on October 30, 2013. The new due date for Response was November 13, 2013. On November 6, 2013, the Center received a supplemental filing in which the Complainant requested to add further domain names to the proceedings. On November 8, 2013, the Center informed the parties that the supplemental filing request would be forwarded to the Panel, once appointed, for determination pursuant to its discretion. The Respondent did not file any response. Accordingly, the Center notified the Respondent’s default on November 14, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on November 21, 2013. 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 is the political and central body for the Crédit Mutuel Banking Group. The Credit Mutuel Banking Group is the second largest French banking and insurance service group and provides services to approximately 12 million clients. It contains a network of 3178 offices in France through 18 regional bank federations. The Complainant, in its various related forms, has existed as a banking company for over a centuary.
The Complainant is the owner of a figurative trade mark primarily containing the words “Credit Mutuel” (the CREDIT MUTUEL Mark), in jurisdictions across Europe, which it first registered in 1988. The Complainant or its subsidiaries has also registered the trade mark CREDIT MUTUEL or similar spellings thereof as domain names including , , , , , and .
The Domain Names were registered between May and July 2013. The Domain Names are currently inactive however the Domain Name has in the past been used as part of a “phishing” attack on customers of the Complainant. At that time the Domain Name resolved to a website (the “Respondent’s Website”) that mimicked the design of the Complainant’s website at “www.” and reproduced the character and content of that website. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s CREDIT MUTUEL Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the CREDIT MUTUEL Mark. It owns trade mark registrations for the CREDIT MUTUEL Mark in countries around Europe and has done so since 1988. Each of the Domain Names are confusingly similar to the CREDIT MUTUEL Mark as they either contain the CREDIT MUTUEL mark in its entirety and a generic term, or contain minor misspellings of the CREDIT MUTUEL mark, namely the addition of a “e” or and “l” at the end of the mark.
The Respondent has no rights or legitimate interests in the Domain Names. The Respondent is not related in any way to the Complainant’s business. It is not one of its agents and does not carry out any activity for or has any business with it. The Complainant has not granted any licence or authorization to the Respondent to make any use, nor apply for registration of the Domain Names. The Respondent is not using the Domain Names in connection with a bona fide offering of goods or services, rather the Domain Names are either unused, or in one case is associated with a phishing attack.
The Domain Names were registered and are being used in bad faith. The Respondent has registered multiple Domain Names that contain the Complainant’s well-known CREDIT MUTUEL Mark. Moreover, it is impossible the Respondent was not aware of the existence of CREDIT MUTUEL when it registered the Domain Names, notably given that one of the Domain Names initially resolves to a page infringing the Complainant’s rights by reproducing its trademark CREDIT MUTUEL LA BANQUE A QUI PARLER and its graphic content and character for which the Complainant has copyright. Such actions also indicate that the Respondent has used the Domain Names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Request to Add Additional Domain Names to the Proceeding
On November 6, 2013, the Center received a supplemental filing in which the Complainant requested to add additional domain names to the proceedings. The first issue, of a procedural nature, is whether the Complainant’s request to include six additional domain names in the proceedings that are allegedly registered by the Respondent, and consequently to file an amended Complaint. The six additional domain names are , , , , , and .
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes the following observations about the whether further Domain Names should be added to a previously filed Complaint.
“Consensus view: Provided the complainant has relevant trademark rights [see also paragraph 1.8 above], and all relevant domain names are registered by the same domain name holder [see also paragraphs 4.15 below], additional domain names may in certain circumstances be added to a complaint after filing but prior to formal commencement of UDRP proceeding. For example, if it should come to light after the filing of a complaint that there are additional domain names registered by the same domain name holder which are alleged to be identical or confusingly similar to the invoked trademark, this may constitute grounds for their addition to the complaint where fair and practicable. One possible way in which this may come to light is where a complaint is filed against a privacy or proxy registration service, an underlying registrant is disclosed, such entity turns out to also be the registrant of other domain names alleged by the complainant to contravene its trademark rights for purposes of the UDRP, but not yet subject to a UDRP complaint [see further paragraph 4.9 below]. In such circumstances a reasoned request from the complainant to add additional domain names to the filed complaint may be submitted to the WIPO Center. Subject to provider acceptance, and without prejudice to panel discretion, submission of any appropriate amendments to the complaint, and payment of any fees that may apply, upon completion of the administrative compliance review of the amended complaint, such complaint may be notified to the respondent and the proceeding formally commenced on that basis.
However: Any request for addition of domain names to a complaint only after it has been notified to the respondent and the proceeding has been formally commenced on that basis would normally need to be addressed by the panel (on appointment). Panels have in some cases been reluctant to grant such requests, where received only after appointment. Where panels grant such requests, they would typically order a partial recommencement of the procedure to allow a proper response opportunity in relation to the added domain names.”
The Panel is also assisted by the extensive discussion of this issue in Apple Inc. v. Private Whois Service,WIPO Case No. D2011-0929, which involved a request to add four additional domain names after the commencement of the proceeding. In that case the panel reached the following conclusion:
“In Department of Management Services, State of Florida v. Digi Real Estate Foundation,WIPO Case No. D2007-0547, the panel refused the addition of a domain name involving the same trademark, even though the additional domain name had not been registered until after the original complaint had been filed. The panel considered that the addition of the domain name was unfair to the respondent, rejecting the possibility that this unfairness might be remedied by modifications to the procedure and timetable:
However, the Panel must reject the request for an amendment even in these circumstances, because the addition of a new domain name after a sole panelist has been appointed is inconsistent with the Panel’s duty to ensure the Parties are treated with equality. Procedural equality means that each party must have the option of having the dispute determined by a three member panel (see paragraph 3(b)(iv), 5(b)(iv) and (v) and 5(c) of the Policy). However, if the amendment to the Complaint were now allowed, and a new domain name added, then the Respondent would have lost the right to have the dispute regarding the additional domain name determined by a three member Panel.
This procedural problem cannot readily be solved by providing an opportunity for the Respondent to object to the addition of a new domain name on the basis that it wishes to exercise its right to a three member panel in respect of the added domain name, as such a course further complicates the procedure, and is likely to create additional delay. In this Panel’s view the course most consistent with paragraph 10 of the Policy, and the principles of the UDRP system, is generally not to permit the addition of new domain names to a Complaint after a single member panel has been appointed. This might appear hard to a complainant, as in the present case, not guilty of any omission, oversight or delay, but is an inherent limitation in the simplified dispute resolution system for domain names. It is, of course, open to the Complainant to bring a separate Complaint in respect of the additional domain name if it so desires.
The Panel here applies the reasoning in Department of Management Services, State of Florida v. Digi Real Estate Foundation,WIPO Case No. D2007-0547. The amendment of an existing complaint at this stage to include additional domain names potentially compromises the respondent’s procedural rights. It is particularly problematic in the present case where the application involves four additional domain names, registered (and therefore potentially known to the Complainant) prior to the original Complaint, as well as two additional trademarks (namely APPLE and IPHONE, where the existing complaint is based on the IPOD trademark).”
In the present proceeding, the request to add the additional six domain names was made almost two months after the commencement of the proceedings, and after the proceedings had been suspended for 40 days for the Complainant to attempt to negotiate a transfer of the Domain Names from the Respondent. Furthermore, of the six additional Domain Names, two of them are registered to an entities that are, on their face, different entities to the Respondent. While the Panel acknowledges the strong circumstantial evidence put forward by the Complainant that these registrants are acting on behalf of the Respondent or are privacy services protecting the Respondent’s identity, it cannot reach that conclusion in the absence of a registrar verification from the Registrar. The Panel is then placed in a position of agreeing to add the domain names to the proceeding, then potentially “dropping” the domain names if it is not satisfied that they are registered by the Respondent.
Ultimately, the Panel must bear in mind paragraph 10 of the Rules. This paragraph provides that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case and also that the Panel shall ensure that the administrative proceeding takes place with due expedition. If the Panel were minded to grant the Complainant’s application, it would do so on the condition that the new domain names were subject to registrar verification, and the Respondent would have 20 days to respond to the amended complaint prior to the Panel making the formal decision. This would have the effect of further delaying the decision on the Domain Names.
The Panel notes that its decision not to add the further domain names to this proceeding is made without prejudice to the Complainant bringing a separate complaint in respect of the additional domain names if it desires. In the circumstances, this approach may well result in an outcome obtained as quickly as if the Panel had accepted the Complainant’s application with the conditions outlined above.
The Panel rejects the request to add additional domain names to the proceeding and the related supplemental filing. B. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the CREDIT MUTUEL Mark, having registrations for CREDIT MUTUEL as a trade mark in various countries around the Europe, including France, where the CREDIT MUTUEL mark has been registered since at least 1988.
The Domain Names and consist of the CREDIT MUTUEL Mark in its entirety and the addition of the letter “e” and “l” respectively. The addition of “e” or “l” to the CREDIT MUTUEL Mark does not operate to prevent a finding of confusing similarity between the CREDIT MUTUEL Mark and the Domain Names especially in circumstances where the letters are apprehended at the end of the CREDIT MUTUEL Mark and create a domain name that is phonetically identical to the CREDIT MUTUEL Mark.
The Domain Names , , , , and consist of the CREDIT MUTUEL Mark in its entirety and the addition of the various descriptive terms such as “banque” (bank in English) or “clients”. The addition of such generic terms does not prevent a finding of confusing similarity between the CREDIT MUTUEL Mark and the Domain Names.
It is well established that the generic top-level domain (gTLD), such as “.com”, or country-code top-level domain (ccTLD) may be disregarded when evaluating whether the domain name is identical to a complainant’s trade mark, see eBay Inc. v Akram Mehmood,WIPO Case No. DAE2007-0001; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The Panel finds that each the Domain Names is confusingly similar to the Complainant’s CREDIT MUTUEL Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. C. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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.” (Policy, paragraph 4(c)).
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain names incorporating the CREDIT MUTUEL Mark or a mark similar to the CREDIT MUTUEL Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use.
The Domain Names are currently inactive; however, the Domain Name has resolved to a website that mimicked the design of one of the Complainant’s websites and reproduced character and content of that website, presumably for phishing purposes. Such use is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Names. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) the Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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.
The Panel finds that the Respondent at the time of registration of the Domain Names knew of the existence of the Complainant. It is implausible that the Respondent would register seven separate domain names each of which reproduces the Complainant’s CREDIT MUTUEL Mark with no awareness of the Complainant. Furthermore the Respondent’s Website, when active, mimicked the Complainant’s website, reproducing the graphic content and character of the Complainant’s website located at www.. This indicates that the Respondent was aware of the Complainant at the time it registered the Domain Names.
The Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website appears to have been designed in order to confuse Internet users into thinking that they are connected to the Complainant. Such conduct is typically part of a broader phishing campaign, to deceive the Complainant’s customers and manipulate them into divulging sensitive financial information. This means that the Respondent likely receives a financial reward from Internet users who visit the Respondent’s Website under the impression (created by the Domain Names and the content of the Respondent’s Website) that they are somehow connected to the Complainant. The Panel finds that such use amounts to use in bad faith.
The Panel notes that there is no evidence that six of the seven Domain Names have ever been active. However, given the use of the Domain Name, the Panel infers that the other Domain Names have been or are planned to be used for the same purpose. As such Panel finds that the , , , , , and Domain Names have been used in Bad Faith.
Accordingly, the Panel finds that the Respondents has registered and is using the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy. 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 Domain Names , , , , , and be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: November 28, 2013
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