Complainant is CACEIS (Société Anonyme) of Paris, France, represented by Gevers, Belgium.
Respondent is Whois Privacy Corp. of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with TLD Registrar Solutions Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2016. On January 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 7, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 8, 2016.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on February 12, 2016. 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
Complainant states that it is “a banking group dedicated to institutional and corporate clients”; that it is “one of the world’s leading asset servicing providers and is the premier player in the sizeable French market”; and that it has a presence in France, Germany, Luxembourg, the United Kingdom of Great Britain and Northern Ireland, Belgium, Netherlands, Switzerland, the United States of America (“U.S.”), and Hong Kong, China.
Complainant further states, and provides evidence to support, that it is the owner of the trademark CACEIS “in many countries,” including CTM Reg. No. 4,643,573 (registered February 26, 2008), U.S. Reg. No. 3,616,250 (registered on September 5, 2009), Canadian Reg. No. 1,392,404 (registered on January 6, 2010); and Hong Kong, china Reg. No. 301098577 (filed April 21, 2008). These registrations are referred to hereafter as the “CACEIS Trademark.”
The Disputed Domain Name was registered on October 10, 2015.
Complainant further states, and provides evidence to support, that the Disputed Domain Name is used in connection with a website that “is presented as being the website of the bank CACEIS Bank Luxembourg SA” because, among other things, it includes Complainant’s logo, a copyright notice in the name of “CACEIS Bank Luxembourg SA” and “contact” and “about us” pages that identify CACEIS Bank Luxembourg SA.
Finally, Complainant further states that it attempted to contact Respondent via email but received no response. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
Complainant has rights in and to the CACEIS Trademark as a result of the trademark registrations cited above. Complainant further contends that the Disputed Domain Name is confusingly similar to the CACEIS Trademark because the Disputed Domain Name “includes the highly distinctive trademark CACEIS, to which are added the elements BL and SA, obviously referring to the Luxembourg subsidiary CACEIS BL SA.”
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Respondent “has no intention to use the domain name in connection with a bona fide offering of goods or services or to make a legitimate non-commercial or fair use of the domain name” given that Respondent is using the Disputed Domain Name in connection with a website that “is presented as being the website of the bank CACEIS Bank Luxembourg SA”; Complainant has not “licensed, permitted or authorized the Respondent (or any underlying person) to use the Complainant’s trademark or to develop such a website”; and Respondent “is opportunistically using the Complainant’s mark in order to attract Internet users to its web page.”
The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “the registrant registered the domain name through a privacy shield”; the website associated with the Disputed Domain Name “is presented as being the website of the bank CACEIS Bank Luxembourg SA”; and Respondent did not respond to Complainant’s email. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the CACEIS Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the CACEIS Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “caceisblsa”), as it is well established that the Top-Level Domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”)
Notably, the Disputed Domain Name contains the CACEIS Trademark in its entirety. Previous panels under the Policy have found that “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. See also Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov,WIPO Case No. D2011-1474 (“when a domain name wholly incorporates a complainant’s registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy”).
In addition, the Disputed Domain Name contains the characters “bl” and “sa,” which Complainant uses to identify its subsidiary in Luxembourg, that is, “CACEIS BL SA.” The Panel observes that “BL” is an abbreviation for “Banque de Luxembourg” (“bank of Luxembourg”) and that “SA” is an abbreviation for “Société Anonyme,” a designation for a type of public limited company. Neither of these abbreviations distinguishes the Disputed Domain Name from the CACEIS Trademark. See, e.g., Carrefour v. XL Liu,WIPO Case No. D2015-1429, in which the panel found the domain name confusingly similar to the trademark CARREFOUR:
The addition of the letters “sa” does not dispel the confusing similarity. The two-letter combination “sa” per se has little distinctive power. Moreover, it is recognized that a person encountering a name or mark is likely to give greater attention to the dominant or principal part thereof. Here, as stated, the first part of the Disputed Domain Name is virtually identical to the CARREFOUR mark. Further, this Panel takes notice of the fact that “sa” is the abbreviation in French of the words “société anonyme”, which signify a public limited company, similar to the use of “inc” in common-law countries. It is appreciated that “inc” has no distinctive power when used in combination with the rest of a name, and the same conclusion applies with respect to the use of “sa” as part of the Disputed Domain Name. Indeed, the connection between “sa”, as designating a French public limited company, and the Complainant, popularly identified with its French corporate roots, strengthens the confusing similarity between the Disputed Domain Name and the Mark.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Respondent “has no intention to use the domain name in connection with a bona fide offering of goods or services or to make a legitimate non-commercial or fair use of the domain name” given that Respondent is using the Disputed Domain Name in connection with a website that “is presented as being the website of the bank CACEIS Bank Luxembourg SA”; Complainant has not “licensed, permitted or authorized the Respondent (or any underlying person) to use the Complainant’s trademark or to develop such a website”; and Respondent “is opportunistically using the Complainant’s mark in order to attract Internet users to its web page.”
Under the Policy, “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.” WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:
(i) circumstances indicating that the respondent has registered or the respondent 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’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 respondent’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv), given that the Disputed Domain Name has been used in connection with a website that appears to be a website for Complainant. Previous panels have found bad faith where, as here, evidence “suggests that the disputed domain name has been registered and, for a certain period of time, was being used to copy and mirror a website” associated with Complainant.” Arkema France v. Aaron Blaine,WIPO Case No. D2015-0502. See also L’Oréal v. Privacy protection service - / Denis Mishin,WIPO Case No. D2015-1091 (Respondent “created a ‘copycat’ website and gave it a false appearance of being a commercial enterprise operated by or affiliated with the Complainant to sell the Complainant’s products”). Even if Respondent is not financially profiting from the use of the website, in the Panel’s view, this would still amount to bad faith.
Accordingly, the Panel finds that Complainant has proven the third element 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.
Douglas M. Isenberg
Sole Panelist
Date: February 22, 2016
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