The Complainant is Banque Federale du Credit Mutuel (BFCM), France, represented by MEYER & Partenaires, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Jerome Lalanne, France. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2019. On June 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2019, 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 June 11, 2019, 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 June 14, 2019.
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 June 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2019.
The Center appointed Christophe Caron as the sole panelist in this matter on July 19, 2019. 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, Banque Fédérative du Crédit Mutuel, is part of the Crédit Mutuel Group. It is the holding company of the Group acting as the central treasury and undertaking capital and money market activities on behalf of the Group. In June 2017, the Crédit Mutuel Group, through the Complainant, becomes the sole shareholder of Targobank, a German commercial bank, to further develop its banking, insurance and services practices with individuals and companies.
The Complainant owns several trademarks consisting of or including the wording TARGO BANK trademarks protected worldwide, and notably:
- International verbal trademark TARGO BANK No. 1013173, registered on July 22, 2009, in classes 16, 35, 36, and 38;
- European Union semi-figurative trademark TARGO X BANK, No. 8285579, registered on February 1, 2010, in classes 16, 35, 36, and 38.
In addition, the Complainant operates, among other, domain names reflecting its trademarks in order to promote its services:
- registered on January 26, 2009, and duly renewed;
- registered on January 26, 2009, and duly renewed;
- registered on March 31, 2009, and duly renewed.
The disputed domain name was registered on March 18, 2019 and according to evidence provided by the Complainant, it used to resolve to a parked page with pay-per-click (“PPC”) links. Currently, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions.
Identical or Confusingly Similar
The Complainant claims that the disputed domain name is identical or at least confusingly similar to its trademark TARGO BANK.
First, the Complainant asserts that it is well established that the generic Top-Level Domains (“gTLDs”) such as “.com” have not to be taken into account while comparing the disputed domain name with the claimed trademarks, as they are only a technical and necessary part of the domain name with no distinguishing feature nor legal significance. As a consequence, the gTLD “.com” has to be ignored in comparing the disputed domain name to the trademark TARGO BANK.
Second, the Complainant specifies that the disputed domain name is identical to its trademark TARGO BANK.
Further, the Complainant states that the distinctive trademark TARGO BANK is entirely reproduced in the disputed domain name, the only difference between the disputed domain name and the Complainant’s trademarks being the mere addition of the word “online” separated by a dash. The Complainant indicates that “online” is a generic and descriptive word, which refers to the activity that the Complainant is running on the Internet and which is descriptive of the financial and banking services offered by the Complainant.
As a consequence, the Complainant considers that the disputed domain name should be considered as being identical to its trademarks TARGO BANK.
Rights or Legitimate Interests
According to the Complainant, the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name .
The Complainant asserts that the Respondent is not related in any way to the Complainant’s business: the Respondent is not one of its agents and does not carry out any activity for, or has any business with the Complainant.
The Complainant adds that it has granted no license or authorization to the Respondent to make any use, or apply for registration of the disputed domain name.
Lastly, the Complainant explains that the Respondent has not committed any action showing that he has rights or legitimate interests in the disputed domain name.
For the above-cited reasons, the Complainant considers that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name.
Registration and Use in Bad Faith
Registration in bad faith
The Complainant states that taking into account the reputation of the trademark TARGO BANK, at least in Germany, it is difficult to imagine that the Respondent could have ignored the trademark TARGO BANK at the time it applied for the disputed domain name .
The Complainant adds that the trademark TARGO BANK is a totally fanciful name with no specific signification so that it is inconceivable that the Respondent was unaware of the Complainant and its business while registering the disputed domain name reproducing the TARGO BANK trademark.
Further, the Complainant explains that it is well established that a large majority of banking institutions in the world are now offering their clients the possibility to manage their accounts online. Thus, the word “online” associated with TARGO BANK refers immediately to the possibility to enter in the bank through Internet and reinforces the possible confusion between the trademark TARGO BANK and the disputed domain name.
According to the Complainant, this combination of facts is asserting the bad faith registration of the disputed domain name.
Use in bad faith
The Complainant explains that the disputed domain name resolves only to the registrar’s parking page with PPC advertising links. The Complainant adds that such use is compatible with a finding of bad faith use.
Further, the likelihood of confusion as to source, sponsorship, affiliation or endorsement is also established by the fact that the disputed domain name is essentially identical to the Complainant’s TARGO BANK trademark.
Moreover, according to the Complainant, the disputed domain name might mislead Internet users looking for TARGO BANK services; instead of that, the Internet users will then be redirected to a parking page that does not display the expected content; they may then think this error is due to the Complainant, as a poor management of one of its websites. The Complainant considers that this is clearly tarnishing its image.
All this surrounding circumstances support the idea that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
As such, the Complainant considers that the disputed domain name was registered and is being used in bad faith in accordance with paragraph 4(a)(iii) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The onus of proving these elements is on the Complainant. 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.
The Complainant is the owner of trademarks TARGO BANK worldwide.
The trademark TARGO BANK is entirely reproduced in the disputed domain name.
The addition of the gTLD suffix “.com” in the disputed domain name is not relevant to avoid the confusing similarity.
This is also the case for the prefix “online” which is a descriptive word, which refers to the activity that the Complainant is running on the Internet and which is a very common word in the Complainant’s activities.
The Panel therefore finds that the disputed domain name is confusingly similar to the registered trademarks in which the Complainant has rights. Thus, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
This Panel is satisfied that the Respondent does not appear to have been commonly known by the disputed domain name, he is not a licensee or an agent of the Complainant, nor in any way is authorized to use the Complainant’s trademarks.
Hence, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the disputed domain name in bad faith.
It seems inconceivable that the Respondent was unaware of the Complainant and its business at the time of the registration of the disputed domain name in the extent that the Complainant’s trademark TARGO BANK is entirely reproduced whereas it is a name with no specific signification.
Moreover, the Panel notes that the disputed domain name used to redirect to a parking page with PPC links. The disputed domain name is currently inactive. Passive holding of a domain name can be an evidence of bad faith use.
Thus, the facts that (i) the Complainant’s trademark is reproduced, in its entirety, within the disputed domain name, (ii) the Respondent has abstained, despite the possibility offered to it, to justify a fair use of the disputed domain name, and (iii) the disputed domain name is currently inactive, are elements that characterize the Respondent’s bad faith.
For all these reasons, it appears to this Panel that the disputed domain name has been registered and is being used in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is made out. 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.
Christophe Caron
Sole Panelist
Date: August 1, 2019
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