Complainant is GROUPAMA, SA of Paris, France, represented by Cabinet Iteanu & Associés, France.
Respondent is Esperia Hosting, Esperia of Cotonou, Benin. 2. The Domain Names and Registrar
The disputed domain names and are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2016. On October 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 11, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On October 19, 2016, Complainant filed an amended Complaint to correct an administrative formality.
The Center verified that the Complaint together with the amended 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 October 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 10, 2016.
The Center appointed Richard Hill as the sole panelist in this matter on November 21, 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 owns rights in the mark GROUPAMA dating back to 2000, with trademark registrations including European Union Trademark Registration No. 001210863, registered on June 27, 2000, and International Trademark Registration No. 800577, registered on October 15, 2002, both of which cover financial, banking, and insurance services.
The disputed domain names were registered in July 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent uses one of the disputed domain names to impersonate Complainant and to offer competing services. Respondent does not use the other disputed domain name. 5. Parties’ Contentions A. Complainant
Complainant states that it is the French Company holding of an internationally known insurance and financial group. The GROUPAMA Group traces its origins to 1840 and has grown from its roots in the French agricultural community to become one of the world’s leading mutual property and casualty insurers and one of Europe’s largest financial services groups. Complainant is the owner of internationally well-known trademarks all over the world, in particular the mark GROUPAMA registered in many countries around the world, with rights dating back to at least 2000. In addition to financial, banking and insurance services, the trademarks mentioned above also cover and are being used for numerous other services, related to Complainant’s main activity, such as advertisement in class 35, assistance services in class 37, telecommunications in class 38, etc.
Complainant alleges that the disputed domain name is confusingly similar to the trademarks and service marks in which Complainant has rights because the trademark GROUPAMA is the only distinctive element in the elements composing the disputed domain name: the term “bank” is a descriptive term used to describe banking activities, and the “.com” is merely the top level domain name suffix. In fact, Respondent has obviously intentionally registered a domain name which is, actually, identical in its distinctive elements to Complainant’s trademark. The disputed domain name is confusingly similar to the trademarks and service marks in which Complainant has rights because it is phonetically identical to the trademark GROUPAMA, and the “.com” is merely the top level domain name suffix. In fact, Respondent has obviously intentionally registered a domain name which is, actually, phonetically identical to Complainant’s trademark.
According to Complainant, it never authorized Respondent to use its trademarks. Respondent is not using the domain name for a website of its own describing its own business. Attempts to connect to that domain name result in a DNS error. Respondent is using the domain name to resolve to a website entirely in the French language whose contents counterfeit Complainants trademarks, deliberately reproducing Complainant’s figurative semi-figurative trademarks and including offers for banking or financial services, and insurance services, with a contact page where Respondent claims that the user can contact “Groopaama Bank”. On its website, Respondent claims to be an existing bank, thereby showing that it willingly creates a strong likelihood of confusion with Complainant’s banking services covered by its trademarks. Such type of contents, together with the unauthorized use of Complainant’s trademarks, do not constitute a bona fide offering of goods or services, on the contrary, they demonstrate an illegitimate use of the domain name.
In addition, says Complainant, Respondent cannot demonstrate any use of the disputed domain names, in connection with a bona fide offering of goods or services. It has obviously not been commonly known by the domain name, and cannot demonstrate any legitimate noncommercial or fair use of the domain names. On the contrary, the circumstances of the case show the intent of Respondent to fraudulently use the disputed domain names to deceive and mislead consumers.
Further, according to Complainant, the registration of the disputed domain names and is an attempt to use the disputed domain names to deceive the Internet users who may think that these domains directly refer to domain names associated with Complainant. As noted above, Respondent reproduces Complainant’s trademarks on its web pages. Such use of Complainant’s trademarks is not authorized in any way by Complainant and constitutes the offence of counterfeiting of Complainant’s trademarks. Respondent’s use of the domain name shows that it is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the financial or insurance services advertised on this website, which are probably the basis of a fraudulent activity of phishing by Respondent. Phishing activities pose a severe threat to customers, trademark holders and other third parties.
Complainant alleges that Respondent is providing false contact details, as a means to attempt to avoid judicial prosecution of its unauthorized use of Complainant’s trademarks, or to avoid being effectively contacted by victims of its activity. In particular:
- the phone number provided in the WhoIs contact details for both disputed domain names is false, as no such telephone number can exist in the official numbering plan in Benin;
- on the website, Respondent mentions a phone number with the +33 prefix on top of all of its pages. The international prefix number +33 is for France, Respondent is claiming to be reachable through a French telephone number, though it is, in fact located in Benin.
According to Complainant, these obvious attempts to conceal Respondent’s true contact details evidence bad faith in the circumstances of this case. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by Complainant. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009; see also Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109. A. Identical or Confusingly Similar
It is clear that the disputed domain name is confusingly similar (in the sense of the Policy) to Complainant’s mark, because it contains the mark and merely adds the common word “bank” to form the domain name. See PACCAR, Inc. v. Enyart Associates and T, LLC,WIPO Case No. D2000-0289; see also Quixtar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253.
It is also clear that the disputed domain name is phonetically identical to Complainant’s mark GROUPAMA. This is sufficient to find confusing similarity in the sense of the Policy. See Geoffrey, LLC v. Toys R Russ and Days of ’49,WIPO Case No. D2011-0830; see also Microsoft Corporation v. Mike Rushton,WIPO Case No. D2004-0123.
The Panel holds that Complainant has satisfied its burden of proof for the first element of the Policy. B. Rights or Legitimate Interests
Respondent does not have any license or other authorization to use Complainant’s mark or to sell its products or services. Respondent is not commonly known by the disputed domain names.
Respondent is not making active use of the disputed domain name . Passive holding of a domain name does not establish rights or legitimate interests under the Policy.
Respondent is using the disputed domain name to resolve to a web page that creates an impression of being an official site endorsed by Complainant, in particular by displaying Complainant’s trademark without accurately and prominently disclosing the lack of Respondent’s relationship with Complainant. Thus Respondent’s use of Complainant’s mark in the disputed domain name appears to be an attempt to trade off of Complainant’s reputation and goodwill by taking advantage of the confusing similarity between the disputed domain name and Complainant’s trademark.
Legitimate rights or bona fide use do not exist when there is deliberate infringement of another’s rights, or when the domain name is used in bad faith to divert users through confusion, see the discussion below and see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan,WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937.
The Panel holds that Complainant has satisfied its burden of proof for the second element of the Policy. C. Registered and Used in Bad Faith
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
As noted above, Respondent is using the disputed domain name to resolve to a web page that creates an impression of being an official site endorsed by Complainant. Respondent likely obtains revenue from that web page. Thus the Panel finds that Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and Complainant’s mark in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946; see also AB Electrolux v. Pablo Rodriguez Guirao,WIPO Case No. D2011-0729.
As noted above, Respondent is not making active use of the disputed domain name . According to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “[p]anels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In the present case, the contact details provided by Respondent appear to be false. That is, Respondent concealed its identity. There has been no response to the Complaint. Given the bad faith use of the other disputed domain name, and the circumstances mentioned above, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel holds that Complainant has satisfied its burden of proof for 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 names and be transferred to Complainant.
Richard Hill
Sole Panelist
Date: November 22, 2016
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