The Complainant is Confédération Nationale Du Crédit Mutuel of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Paul Monise of Paris, France. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 17, 2018. On July 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2018, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 10, 2018.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on August 23, 2018. 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 the body for the national banking group CREDIT MUTUEL, which is the second French banking and insurance services group and a network of 3178 offices in France, congregated in 18 regional federations.
The Complainant is the owner of numerous trademarks registered in France and abroad (thereafter the "CREDIT MUTUEL trademarks") such as:
- The semi-figurative French trademark CREDIT MUTUEL No. 1475940, filed on July 8, 1988 in classes 35 and 36;
- The semi-figurative French trademark CREDIT MUTUEL No. 1646012, filed on November 20, 1990 in classes 16, 35, 36, 38 and 41;
- The nominative European Union trademark CREDIT MUTUEL No. 9943135, filed on May 5, 2011 in classes 9, 16, 35, 36, 38, 41, 42 and 45;
- The semi-figurative International trademark CREDIT MUTUEL No. 570182, filed on May 17, 1991 in classes 16, 35, 36, 38 and 41;
- The nominative French trademark CRÉDIT MUTUEL FACTOR No. 99800537 filed on June 28, 1999 in classes 35 and 36.
The Complainant also registered the following domain names:
- registered on September 13, 2001;
- registered on June 3, 2002;
- registered on August 10, 1995;
- registered on October 28, 1995;
- registered on October 3, 1996.
The domain name was registered by the Respondent on January 12, 2018 with the Registrar.
The domain name was deactivated but still remained in the name of the Respondent. The disputed domain name is currently inactive. 5. Parties' Contentions A. Complainant
In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.
First of all, the Complainant argues that the disputed domain name is identical or confusingly similar to the CREDIT MUTUEL trademarks, since it reproduces the CREDIT MUTUEL mark in its entirety, so that Internet users could believe that the disputed domain name has been registered by the Complainant or with its consent.
The Complainant considers that the generic Top-Level Domain Name ("gTLD") ".site" and adjunction of the hyphen to the CREDIT MUTUEL mark are not sufficient to give any distinctive character to the disputed domain name and thus avoid confusing similarity.
The Complainant also recalls the notoriety of CREDIT MUTUEL trademarks, which accentuates the likelihood of confusion.
Secondly, the Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not related in any way to the Complainant's business, is not known under the CREDIT MUTUEL mark and has never been authorized to register or use the CREDIT MUTUEL trademarks or the disputed domain name.
Thirdly, the Complainant argues that the disputed domain name was registered and is being used in bad faith, considering the facts that the Respondent could not ignore the strong reputation of CREDIT MUTUEL trademarks in France, that the disputed domain name reproduces the CREDIT MUTUEL mark in its entirety and that the Respondent used false information for the disputed domain name registration, especially the postal address which does not exist.
Also, according to the Complainant, the use in bad faith of the disputed domain name results from its "passive holding", since it is inactive, and from the combination of the previously underlined circumstances such as the notoriety of CREDIT MUTUEL trademarks. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, the Panel finds that the Complainant has provided evidence that it has rights in the CREDIT MUTUEL trademarks. Then, the Panel notices that the disputed domain name is composed of (i) the distinctive element "credit-mutuel", which is the exact reproduction of the CREDIT MUTUEL trademarks, (ii) a hyphen between the terms "credit" and "mutuel" (iii) and the gTLD ".site". As pointed out by the Complainant, the applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.
The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition ("WIPO Overview 3.0")).
Furthermore, the Panel concurs with the opinion of several prior UDRP panels which have held that the fact that a domain name wholly incorporates a complainant's registered trademark may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., BNP Paribas v. Ronan Laster,WIPO Case No. D2017-2167; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. , WIPO Case No. D2002-0615; RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059; Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov,WIPO Case No. D2011-1474; Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150).
Regarding the disputed domain name , the Panel finds that the addition of the hyphen between the terms "credit" and "mutuel" to the CREDIT MUTUEL trademarks is not sufficient to exclude confusing similarity. Where the CREDIT MUTUEL trademark is recognizable within the disputed domain name, the "addition of punctuation such as hyphen within a mark do not constitute a substantive change or obviate confusion" (see, e.g., National City Corporation v. MH Networks LLC,WIPO Case No. D2004-0128; Confederation Nationale du Credit Mutuel v. Claitre Bonnat,WIPO Case No. D2016-0204).
Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant's trademarks. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Policy, paragraph 4(c), outlines circumstances that 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:
- before any notice of the dispute, the respondent's 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
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- the respondent is making a legitimate non-commercial 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.
According to prior UDRP panel decisions, it is sufficient that the Complainant shows prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (See section 2.1 of the WIPO Overview 3.0).
According to the Panel, the Complainant has shown prima facie that the Respondent is not affiliated with the Complainant and has not been permitted, licensed or otherwise authorized by the Complainant to use its CREDIT MUTUEL trademarks, and that the Respondent is not currently and has never been known under the name CREDIT MUTUEL.
The Complainant having established prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production has been shifted to the Respondent. However, the Respondent has not provided any response to the Complainant's contentions.
Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
According to the Policy, paragraph 4(a)(iii), the complainant shall prove that the disputed domain name has been registered and are being used in bad faith.
Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent's bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 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.
First of all, the Panel finds that the Complainant's trademarks were registered long before the Respondent registered the disputed domain name.
Then, according to the Panel, the Complainant has shown that the Respondent knew, or should have known, that its registration would be identical or confusingly similar to the Complainant's mark, especially given the fact that the CREDIT MUTUEL trademarks are well-known in France (see Confederation Nationale du Crédit Mutuel v. Whoisguard Protected, Whoisguard, Inc. / Isabelle Garcia, Credit Mutuel Fiable.,WIPO Case No. D2017-0214), the country in which the Respondent is located.
The Panel therefore finds that the Respondent registered the disputed domain name in bad faith.
Then, and in light of the evidence provided by the Complainant, the Panel finds that the disputed domain name is not currently used since it has been deactivated, but wishes to remind that such "passive holding" does not prevent a finding of bad faith, since according to prior UDRP panel decisions the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (See section 3.3 of the WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Indeed, the Panel considers the passive holding of the disputed domain name proves that the Respondent acts in bad faith. The particular circumstances of this case which lead to this conclusion are:
- the Complainant's trademark has a strong reputation and is well known;
- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name;
- the Respondent has not provided any answer to the Complainant's contentions;
- the Respondent has provided false contact details to register the disputed domain name (in breach of its registration agreement);
- taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would not be illegitimate, such as by being an infringement of the Complainant's rights under trademark law.
The Panel considers that the disputed domain name is being used in bad faith.
Therefore, in view of all the circumstances of this case the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b). 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
Date: September 6, 2018
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