The Complainant is CA Consumer Finance, Société Anonyme of Massy, France, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Gerard Chassan of Chalon sur Saone, France. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with 1&1 Internet SE (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2018. On October 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 26, 2018, 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 October 29, 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 October 31, 2018.
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 of the Complaint, and the proceedings commenced on November 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2018.
The Center appointed Alexandre Nappey as the sole panelist in this matter on November 27, 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 part of the Crédit Agricole Group (hereafter known as “Crédit Agricole”). Heaquartered in France, Crédit Agricole is an international banking group which is made up of a network of banks and financial service companies providing a full spectrum of banking and financial services including retail banking, insurance, specialized consumer credit services, corporate and investment banking. In 1999, Crédit Agricole acquired SOFINCO (Société de Financement Industriel et Commercial) which specializes in providing consumer credit services. The Complainant was thus established in 2010 following a merger with Finaref, and SOFINCO became the only commercial brand of Crédit Agricole.
CA CONSUMER FINANCE, Société Anonyme (“the Complainant”), is the owner of trademark registrations across various jurisdictions.
These registrations are referred to hereafter as the “the Complainant’s Marks.” The trademarks relevant to this instant matter are:
- SOFINCO French word mark registered before INPI under No. 1 519 214 on March 22, 1988 in class 36;
- SOFINCO French word mark registered before INPI under No. 4 388 332 on September 13, 2017 in classes 9, 16, 35, 36, 38, 39, 41, 42 and 45;
- SOFINCO European Union trademark filed before EUIPO under No. 004519732 on June 30, 2005 and registered on July 3, 2007 in classes 9, 16, 35, 36 and 38;
- SOFINCO International trademark registered before WIPO under No. 730 493 on November 24, 1999 in classes 9, 36 and 38.
The Complainant has a large Internet presence and is the owner of over 300 domain names which incorporate the Complainant’s trademarks, out of which about 40 domain names incorporate the SOFINCO trademark.
The Disputed Domain Name was registered on August 27, 2018 and does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant is the owner of SOFINCO trademarks. In creating the Disputed Domain Name, the Respondent has added the generic, descriptive term “clients” and a hyphen to the Complainant’s SOFINCO trademark, thereby making the Disputed Domain Name confusingly similar to the Complainant’s trademark.
The Complainant further contends that the Respondent is not sponsored by or affiliated with the Complainant in any way, has not been given permission to use the Complainant’s trademarks in any manner, including in domain names, and finally is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests.
Moreover, the Complainant also claims that the Disputed Domain Name has been registered to take advantage of its reputation and to divert Internet users from its websites. The Disputed Domain Name was registered in bad faith, since it is difficult to imagine that the Respondent could have ignored the Complainant’s well-known trademarks when he registered a domain name that is confusingly similar to such trademarks. Finally, the Complainant explains that the Disputed Domain Name is being used in bad faith:
The Domain Name is not used for any bona fide offering of goods or services, since it is not connected to a website, the passive holding of a domain name with knowledge that the domain name infringes another party’s trademark rights being evidence of bad faith registration and use; there is no conceivable use that the Respondent could make of the Disputed Domain Name that would not infringe the Trade Marks and finally the lack of response to a cease and desist letter from the Complainant to the Respondent confirms bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant holds trademark rights on SOFINCO, all of which predate the Disputed Domain Name.
The question here is whether the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks. Previous UDRP panels have decided that “essential” or “virtual” identity is sufficient.
In the present case, the trademark SOFINCO is entirely included in the Disputed Domain Name. Moreover, the adjunction of the word “clients” to “sofinco” in the Disputed Domain Name does not avoid the confusing similarity with the trademark, since the essential part of the Disputed Domain Name and the trademark is the term “sofinco” and the word “clients” is an English or French word for “customer”. Domain names that combine a descriptive term with another’s trademark have been held to be confusingly similar to the trademark.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark SOFINCO in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial 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.” (Policy, paragraph 4(c)).
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Disputed Domain Name or to seek the registration of any domain name incorporating the SOFINCO Mark. There is no evidence that the Respondent is commonly known by the Disputed Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Disputed Domain Name in connection with a legitimate noncommercial use.
The Disputed Domain Name is currently inactive and no preparation to use in connection with a bona fide offering of goods or services has been established.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes 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 Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) the Respondent has registered the Disputed Domain Name in order to prevent the owner of the trade mark 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 Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed 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.
The Disputed Domain Name incorporates the trademark SOFINCO. It seems more likely than not that the Respondent knew of the Complainant and its business when it registered the Disputed Domain Name.
The incorporation of the Complainant’s coined trademark with the descriptive term “clients” and the Respondent’s absence of rights or legitimate interests, indicate bad faith. It further appears to the Panel that such descriptive prefix added to the Complainant’s trademark even adds to the confusion by leading Internet users to believe that the Complainant or some entity associated with it operates the Disputed Domain Name.
See in similar circumstances: Confédération Nationale du Crédit Mutuel v. Sanim Sanida, Lou Koinh,WIPO Case No. D2014-0472. As a consequence of the Respondent’s registration, the Complainant is deprived of the use of the Disputed Domain Name.
The Respondent’s non-use of the Domain Name does not prevent a finding of bad faith under the doctrine of passive holding, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3. The Complainant’s trademark has a strong degree of distinctiveness. The Respondent has also chosen to hide behind a proxy service. The Respondent has not provided any evidence of actual or contemplated good faith use. Finally, taking into account the Complainant’s trademark and the other circumstances of the case, the Panel finds it implausible that there could be any good faith use to which the Disputed Domain Name may be put.
For the reasons set out above, the Panel concludes that the Disputed Domain Name was registered and is being used in bad faith, within the meaning of 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.
Alexandre Nappey
Sole Panelist
Date: December 17, 2018
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