The Complainant is Credit Mutuel Arkea of Le Relecq-Kerhuon, France, represented by Nameshield, France.
The Respondent is Sun Xiao Cheng of Jinzhou, Liaoning, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (previously HiChina Zhicheng Technology Ltd.) (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2018. On August 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name. The Center sent an email communication to the Complainant on August 7, 2018 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 amended Complaint on the same day.
On August 7, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on August 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2018.
The Center appointed Jonathan Agmon as the sole panelist in this matter on September 10, 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, Credit Mutuel Arkea, is a cooperative and mutual bank insurance group in France. The Complainant was originally established in 1911 in the Brittany region of France. In 2002 the three federations of Credit Mutuel de Bretange (CMB), Credit Mutuel du Sud-Ouest (CMSO) and Credit Mutuel Massif Central (CMMC) and specialized subsidiaries formed a group that took the name Credit Mutuel Arkea. The Complainant is engaged in banking, insurance and finance.
The Complainant owns a portfolio of trademarks including the following:
- French Trademark ARKEA No. 96636222, dated July 26, 1996.
- French Trademark CREDIT MUTUEL ARKEA and device No. 3888981, dated May 11, 2012.
The disputed domain name was registered July 17, 2018.
The disputed domain name resolves to a webpage with a QR Code in Chinese, with links to gambling sites and other pages which appear to offer investment advice and opportunities. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered mark ARKEA since it contains the Complainant’s mark in its entirety and states that an addition of a generic term as “bank” does not negate confusion of Internet users, but rather increases it as it related to the Complainant business.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Complainant is the trademark owner and the Respondent is not affiliated with the Complainant in any way and in all likelihood is not known as “Arkea Bank”.
The Complainant stipulates that a simple search on any Internet search engine (including Baidu) for Arkea Bank results point to the Complainant. Given the Complainant’s fame and reputation it is implausible that the Respondent was unaware of its rights. Therefore, agues the Complainant, the Respondent registered and is using the disputed domain name in bad faith
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification email to the Center of August 6, 2018.
The Complainant requested that the language of the proceeding be English.
The Respondent did not respond.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case regarding the disputed domain name , the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;
(iii) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding for the disputed domain name. 6.2 Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of a number trademarks registered for the ARKEA mark. The disputed domain name is is comprised of the word “arkea”, the generic term “bank” and the generic Top-Level-Domain (“gTLD”) “.com”.
It is well established that if the relevant trademark is recognizable within the disputed domain name, the addition of other terms, such as generic terms, as shown in these circumstances, or other, would not prevent a finding of confusing similarity under the first element (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; Accor v. Serdar Ceylan,WIPO Case No. D2011-2231; Barclays Bank PLC v. Afrikhostings,WIPO Case No. D2012-0297: “the Disputed Domain Name comprises the word BARCLAYS followed by the generic word ‘bank’ followed by the country designator “uk” with the further addition of the ‘.com’ generic Top Level Domain. As the Complainant is a bank based in the UK, the matter added to the BARCLAYS mark in the Disputed Domain Name self-evidently compounds the confusion rather than doing anything to distinguish it from the Complainant’s brand name”).
Under the circumstances of the present case, the term “bank” is a generic descriptive term as it applies to the areas of business of the Complainant. Therefore, this panel finds that the addition of the generic term “bank” does not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s mark.
Prior UDRP panels have established that the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity (see Accor v. Noldc Inc.,WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; L’Oréal v Tina Smith,WIPO Case No. D2013-0820; Titoni AG v Runxin Wang,WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877). Therefore, the gTLD “.com” is without significance in the present case since the use of a TLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview 3.0, section 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard since the Respondent is not known by the disputed domain name and has not been authorized by the Respondent to use the Complainant’s trademark.
In previous decisions, UDRP panels found that in the absence of any license or permission from the complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Groupe Auchan v. Gan Yu,WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138). The Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademark, and evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.
The Respondent has not submitted any Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademarks. According to the evidence filed by the Complainant, the Complainant has owned a registration for the ARKEA trademark since at least the year 1996. In view of the evidence filed by the Complainant to its reputation it is suggestive of the Respondent’s bad faith in these particular circumstances, i.e., registration of the disputed domain name incorporation that the trademark, owned by the Complainant. (See The Nasdaq Stock Market, Inc. v. H. Pouran WIPO Case No. D2002-0770; Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735; LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494).
The Complainant also provided evidence that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademarks. The Complainant provided evidence to show that the website under the disputed domain name resolves to a webpage which provides a QR Code and links to gambling websites as well as links to pages which appear to provide investment advice. As such, Internet users may, on a first impression, be led to believe by mistake that the Respondent’s website is associated with investment or finance related services, while eventually be led to gambling sites.
Given that the Complainant’s trademark ARKEA appears to be highly distinctive and without meaning in the banking or investment industry it is likely that Internet users may be misled to believe that there is some form of association between the Respondent’s website and the Complainant. However, no such connection exists and having reviewed the evidence, and taking these into consideration the particular circumstances of this case, the Panel finds that under the particular circumstances of this case, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademarks under paragraph 4(b)(iv) of the Policy.
In addition, the Respondent failed to provide an answer which would provide any explanation of the use it is making of the Complainant’s trademark. This failure to provide an explanation to its choice of domain name is especially of importance when the disputed domain name comprises in whole the well-known trademark of the Complainant together with the word “bank” and information about investments next to links to gambling sites. Under the particular circumstances of this case, the failure of the Respondent to provide an answer is an additional indication of bad faith registration and use of the disputed domain name.
Based on the evidence presented to the Panel, including the registration of the disputed domain name after the registration of the Complainant’s mark, the confusing similarity between the disputed domain name and the Complainant’s mark and the Respondent’s use of the disputed domain name in these circumstances the Panel finds that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden 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 disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: September 24, 2018
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