The Complainant is Confederation Nationale du Credit Mutuel of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Domain Privacy Service Fbo Registrant of Provo, Utah, United States of America / Globallink, Germain Nzitat Nana of Douala, Cameroon. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2015. On June 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 8, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 10, 2015.
The Center verified that the Complaint together with the amendment to 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 June 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2015.
On July 14, 2015, the Center received an email communication from the Respondent.
The Center appointed Mladen Vukmir as the sole panelist in this matter on July 21, 2015. 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 Panel has determined the following non-contested facts:
(i) the disputed domain name was created on January 29, 2015 (Annex A to the Complaint);
(ii) the Respondent is the registrant of the disputed domain (confirmed by the Registrar in the verification response as of June 7, 2015);
(iii) the Complainant is the owner of the following trademark registrations, as listed and evidenced in the Complaint and Annex D1 - D5 to the Complaint:
Trademark
Trademark Office
Registration No. / Status
Registration Date
Nice Classification
CREDIT MUTUEL (semi-figurative)
Institut National de la Propriété Industrielle (“INPI”),
France
1475940 / registered
July 8, 1988
35 and 36
CREDIT MUTUEL (semi-figurative)
INPI, France
1646012 / registered
November 20, 1990
16, 35, 36, 38 and 41
CREDIT MUTUEL (semi-figurative)
WIPO, International Registration (designating Benelux, Italy and Portugal)
570182 / registered
May 17, 1991
19, 16, 35, 36, 38, 41 and 42
CM (word)
INPI, France
3101596 / registered
May 16, 2001
36
CM-CIC (figurative)
Office for Harmonization in the Internal Market
(“OHIM”), Community Trademark
3644366 / registered
February 3, 2004
9, 16, 35, 36, 38, 41 and 42
(iv) the Complainant, either directly or through its affiliates, registered several domain names which incorporate the Complainant’s trademarks CREDIT MUTUEL and CM, including , , , , , and which all point to the Complainant’s official website located at “www.”, as evidenced by the Complainant in Annexes C and E1 – E7 to the Complaint. 5. Parties’ Contentions A. Complainant
The Complainants, essentially, assert that:
(i) The Complainant is the Central Body of the CREDIT MUTUEL Group, which is a French banking and insurance services group providing services to approximately 12 million clients through 18 regional bank federations and 5390 local banks since 1882. The Complainant is the owner of a great number of CREDIT MUTUEL and CM trademarks in France and abroad. The latter trademarks have been used continuously in commerce since their registration as well as in the corresponding domain names registered by the Complainant and/or its affiliates which are all redirected to the Complainant’s official website located at “www.”. The Complainant has acquired a great renown in the field of banking and insurance services in France and Europe, being ranked as number 1 in France and number 4 in Europe by a particular survey. Panels in earlier UDRP cases, amongst other, Confederation Nationale du Credit Mutuel v. Philippe Marie, WIPO Case No. D2010-1513 have recognized CREDIT MUTUEL trademark as well-known. Therefore, the trademark CREDIT MUTUEL of the Complainant should be considered as well-known in the sense of Article 6bis of the Paris Union Convention.
(ii) The disputed domain name is confusingly similar to the Complainant’s CREDIT MUTUEL and CM trademarks which are entirely reproduced within the same. Combination of letters “c” and “m” which are reflected in the CM trademark of the Complainant is the familiar acronym of the Complainant. The presence of both trademarks in the disputed domain name enhances the risk of confusion in the public mind, in the sense that the public would be misled in thinking that the disputed domain name is linked to the Complainant. The mere combination of two trademarks has already been condemned under UDRP principles by a number of administrative decisions, e.g., Crédit Industriel et Commercial, Confédération Nationale du Credit Mutuel v. Whoisguard Protected / Plaisant Patrice, WIPO Case No. D2012-2235 and Crédit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1110. The use of the generic top-level domain generic Top-Level Domain (“gTLD”) extension “.com” and the hyphen in the disputed domain name does not affect the confusing similarity between the disputed domain name and the trademarks of the Complainant, which is in line with earlier practice in UDRP cases, e.g. Statoil ASA v. Martins Ogemdi, WIPO Case No. D2015-0001 and InfoS, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075.
(iii) The Respondent has neither prior rights nor legitimate interests in respect of the disputed domain name. The Respondent is not the Complainant’s agent, employee, licensee or a subsidiary, nor in any other way related to the Complainant. The Complainant has never authorized the Respondent to use its trademarks. The Respondent is not known under the trade name or corporate name “credit-mutuelcm”. The disputed domain name resolves to a parking webpage, which serves to attract Internet users on the websites of the Complainant’s competitors, and such use cannot be considered as bona fide offering of goods and services. Previous administrative panels in UDRP cases have already considered that a “link-farm” webpage may not be related with a bona fide offering of goods and services, e.g., Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021 and O, Inc. v. Metro Media, WIPO Case No. DME2009-0001.
(iv) The Respondent has registered the disputed domain name in bad faith. The Complainant’s CREDIT MUTUEL and CM trademarks are well and widely known in the field of banking and financial services, and is therefore impossible that the Respondent was not aware of the Complainant and its trademarks when it registered the disputed Domain Name. It is highly likely that the Respondent has chosen the combination of the Complainant’s trademarks when it had registered the disputed domain name with the intention to attract the Internet users and the Complainant’s clients, when trying to access the Complainant’s website. Panels in earlier UDRP cases have considered that the registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements, e.g., Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942. The Respondent is using a privacy shield in order to conceal his identity, which behavior has been considered as bad faith by panels in earlier UDRP cases because the same may be and are often used for more nefarious ends such as obstructing proceedings under the UDRP, hiding evidence of bad faith cybersquatting patterns and allowing registrants to transfer domain names amongst themselves without a public record to avoid enforcement of third party rights, e.g., Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753. Furthermore, the Complainant asserts that the Respondent is using the disputed domain name in bad faith, because the same is used to redirect the Internet users to a link farm webpage listing Complainant’s competitors where the Respondent appears to generate income thanks to the pay-per-click system. Therefore, the Respondent obviously attempts to attract Internet users to his website for commercial gain by creating likelihood of confusion as to the affiliation with the Complainant. Panels in earlier UDRP cases have found such practice to be a proof of bad faith, e.g., Directv, LLC v. Igor Petrenko, WIPO Case No. D2014-1317; Blue Cross and Blue Shield Association, Empire HealthChoice Assurance, Inc. dba Empire Blue Cross Blue Shield and also dba Empire Blue Cross v. Private Whois Service / Search and Find LLC. / Michigan Insurance Associates / 4 Letter Domains Inc. / New York Health Ins., WIPO Case No. D2010-1699and Scania CV AB (Publ) v. Whois Agent, YourJungle Privacy Protection Service / Gustavo Winchester, WIPO Case No. D2014-0998. B. Respondent
The Respondent did not reply to the Complainant’s contentions by the due date for Response, e.g., July 6, 2015. The Respondent did send an email communication to the Center in French language. Because of the ambiguous and vague nature of the same email communication of the Respondent, the Panel was not in position to interpret said email communication despite the Panel’s knowledge of the French language. For that reason, as well as the fact that said email communication was not submitted to the Center by the due date for the Response, the Panel has decided not to admit the same, and will therefore not consider the same further in rendering of its decision in this case. 6. Discussion and Findings
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of the Response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the disputed domain name, each of the following:
(i) the domain name is confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Primarily, the Panel emphasizes that under general consensus view, the mere fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Second Edition (“WIPO Overview 2.0”)).
The Complainant has submitted sufficient evidence to show that it is the owner of a number of French, CTM and international CREDIT MUTUEL and CM trademarks.
Moreover, it is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name (see paragraph 1.2 of WIPO Overview 2.0).
After performing the straightforward visual and aural comparison, it is evident to this Panel that the disputed domain name incorporates the Complainants’ trademarks CREDIT MUTUEL and CM in their entirety, and that the same trademarks are clearly recognizable as such within the disputed domain name.
The only difference between the disputed domain name and the Complainant’s trademarks is the hyphen that separates the words “credit” and “mutuel” in the disputed domain name, while the same hyphen is not present in the Complainant’s trademark CREDIT MUTUEL.
In this Panel’s opinion, addition of the hyphen in the disputed domain name is insignificant and does little to avoid confusing similarity of the disputed domain name with the respective CREDIT MUTUEL trademark of the Complainant. The addition of hyphen between the words “credit” and “mutuel” does not change the way the disputed domain name is pronounced and cannot differentiate it from the Complainant’s trademark absent the hyphen. It should be noted that a number of UDRP panels in previous cases found the hyphen to be insufficient to overcome the confusing similarity of the domain names consisting of a trademark and one or more hyphens inserted within the same (e.g., see Guinness UDV North America, Inc. v. UKJENT, WIPO Case No. D2001-0684 (); Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374 (); The Ian Anderson Group of Companies Ltd v Denny Hammerton & I Schembs, WIPO Case No. D2000-0475 ( and ); Just Jeans Group Limited v. Domain Trade, WIPO Case No. D2000-1821 (); and DeRisk IT Ltd v DeRisk IT, Inc., WIPO Case No. D2000-1288 (, and ).
Regarding the applicable gTLD “.com” suffix in the disputed domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview 2.0).
For all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, e.g., has proven that the disputed domain name is confusingly similar to its trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
“(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [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 trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. […]”.
In the subject matter case, the Respondent is in default, hence, the Panel has evaluated the arguments and evidence submitted by the Complainant and finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests to the disputed domain name.
Namely, the Complainant has established that it is the owner of a number of CREDIT MUTUEL and CM trademark registrations in various jurisdictions, as well as that it has used the same trademarks on the market and the Internet, including through its website located at “www.”.
The Panel observes that there is neither any relation, disclosed to the Panel nor otherwise apparent from the records, between the Respondent and the Complainant, nor does it arise that the Complainant has ever licensed or otherwise permitted the Respondent to use its CREDIT MUTUEL and CM trademarks, or to apply for or use any domain name incorporating the same trademarks.
Furthermore, there is no evidence that the Respondent has been commonly known by the disputed domain name or has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
From the evidence presented by the Complainant it arises that the disputed domain name resolves to a link farm parking page that contains PPC links to various third party websites, including those of the Complaint’s competitors. Having in mind the renown of the Complainant and its trademarks, in this Panel’s opinion it can be safely concluded that the Respondent deliberately chose to include the Complainant’s trademarks in the disputed domain name, in order to achieve commercial gain by misleadingly diverting consumers. Such use cannot be considered as a legitimate noncommercial or fair use nor does it constitute a bona fide offering of goods and services. This is in line with views taken by panels in earlier UDRP cases - See Canadian Tire Corporation, Limited v. Texas International Property Associates,WIPO Case No. D2007-1407; Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021; O, Inc. v. Metro Media, WIPO Case No. DME2009-0001.
Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant’s making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent’s failing to produce any arguments or evidence to the contrary. C. Registered and Used in Bad Faith
For the purpose 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 disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.
Owing to a lack of the Response or any other evidence to the contrary, the Panel accepts the Complainant’s arguments substantiated by evidence that, at the time of registration of the disputed domain name, the Respondent knew or should have known about the Complainant and its trademarks because of a number of CREDIT MUTUEL and CM trademark registrations and extensive use of the same trademarks on the market and Internet by the Complaint. Panels in earlier UDRP cases have recognized CREDIT MUTUEL trademark as well-known, e.g., Confederation Nationale du Credit Mutuel v. Philppe Marie, WIPO Case No. D2010-1513 ().
Therefore, in this Panel’s view, it is safe to conclude that the Respondent was aware of the Complainant and its trademarks when he registered the disputed domain name, and that it is very likely that the Respondent intention was for the disputed domain name to trade on the renown of the Complainant and its trademark. Especially, if one takes into the account that two of the Complainant’s trademarks (CREDIT MUTUEL and CM) are included in the disputed domain name. The presence of the Complainant’s trademarks, and in particular CREDIT MUTUEL trademark in the disputed domain name certainly bears weight as a signal to the potential costumers and the disputed domain name clearly benefits from the same.
Panels in earlier UDRP cases have found bad faith registration based in part on proof that the respondent “knew or should have known” about the existence of the complainant’s trademark and in particular in cases that involved well-known trademarks (see paragraph 3.4 of WIPO Overview 2.0).
Furthermore, and as already discussed above, disputed domain name resolves to a link farm parking page that contains PPC links to various third party websites, including those of the Complaint’s competitors. Having in mind the renown of the Complainant and its trademarks, it is obvious to this Panel that by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the website to which the disputed domain name resolves, for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the same website.
For that reason, the Panel finds the provisions of paragraph 4(b)(iv) of the Policy to be applicable in this case, since that the Respondent’s registration and use of the disputed domain name interferes with the Complainant’s business and Internet users might be misled about the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name is redirected. See, e.g., the following decisions issued by UDRP panels in some of earlier UDRP proceedings:
(i) Sanofi v. PrivacyP / ICS Inc., WIPO Case No. D2012-1293 (): “previous UDRP decisions have found bad faith at the time of registration to exist where a domain name is so obviously connected with such a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; and Sanofi-aventis v. Nevis Domains LLC,WIPO Case No. D2006-0303)”;
(ii) Royal Bank of Canada v Henry Chan, WIPO Case No. D2003-0031 (, and ): “The Panel also believes that in using the disputed domain names to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors, the Respondent has registered and used the domain names in bad faith. Said use of the contested domain names shows the intention of disrupting the Complainant’s business and/or for the purpose of intentionally attempting to attract, for commercial gain, internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites.”;
(iii) PepsiCo, Inc. v Ali Khan, WIPO Case No. D2004-0292 (): “The fact that the Respondent elected to register a domain name substantially comprising the “PEPSI” trademark indicates that it was a deliberate act to mislead consumers into believing there was a connection with the Complainant.”
(iv) Scania CV AB (Publ) v. Whois Agent, YourJungle Privacy Protection Service / Gustavo Winchester, WIPO Case No. D2014-0998 (): “By creating a parking website that featured links to Complainants’ competitors, Respondent similarly used the disputed domain name in bad faith. The purpose of this parking website clearly was to attract Internet users to the site, for profit, based on their confusing Respondent’s domain name and/or website with Complainant and/or its website. Once on Respondent’s website, some users likely click on advertisers’ links, which presumably would confer a commercial benefit on Respondent”.
Although the use of a privacy or proxy registration service is not necessarily an indication of bad faith (see paragraph 3.4 of the WIPO Overview), having in mind all circumstances of this particular case, the fact that the Registrant decided to register the disputed domain name using proxy service reinforces the Panel’s belief that the Respondent acted in bad faith.
Given the above, the Panel determines that the disputed domain name has been registered and is being used bad faith and that the Complainant fulfilled the third element under paragraph 4(a) 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 disputed domain name be transferred to the Complainant.
Mladen Vukmir
Sole Panelist
Date: July 29, 2015
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