Complainant is Confederation Nationale du Credit Mutuel, France, represented by MEYER & Partenaires, France.
Respondent is Identity Protection Service, Identity Protect Limited, United Kingdom / Zack Levy, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Mesh Digital Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2019. On August 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 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 Complainant on August 28, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 30, 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 Respondent of the Complaint, and the proceedings commenced on September 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 23, 2019.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on October 8, 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
Complainant is Confederation Nationale du Credit Mutuel, which is the second largest French banking and insurance services group.
Complainant has trademark rights on the verbal sign CREDIT MUTUEL, including the French trademark CREDIT MUTUEL n° 1475940 registered on July 8, 1988 in classes 35 and 36 and duly renewed; the French trademark CREDIT MUTUEL n° 1646012 registered on November 20, 1990 in classes 16, 35, 36, 38 and 41 and duly renewed; the European Union trademark CREDIT MUTUEL n° 9943135 registered on May 5, 2011 and the International trademark CREDIT MUTUEL registered on May 17, 1991 in classes 16, 35, 36, 38, and 41 and duly renewed.
The mark CREDIT MUTUEL is also registered as generic Top-Level Domain (“gTLD”) and country code
Top-Level Domain (“ccTLD”) domain names. Complainant is the holder of several domain names, such as of September 13, 2001; of June 3, 2002; of August 10, 1995; of October 28, 1995, and of October 3, 1996, all duly renewed.
Respondent owns the disputed domain name which was registered on July 14, 2019 and resolves to an “under construction” page. 5. Parties’ Contentions A. Complainant
First, Complainant claims that the disputed domain name is identical to the trademark CREDIT MUTUEL. It also argues that the mere addition of the new gTLD “.today” is not sufficient to distinguish the disputed domain name from its trademarks.
Complainant considers that Internet users could believe that the disputed domain name is linked to the Credit Mutuel group, thinking that Complainant is its owner or that it gave its consent to register it.
Complainant considers that the disputed domain name is confusingly similar to the trademark CREDIT MUTUEL.
Second, Complainant states that Respondent has no rights or legitimate interests in respect of the disputed domain name . Complainant argues that Respondent is neither an agent nor has any business with the Credit Mutuel group.
Complainant explains that no license or authorization has been granted to Respondent over the disputed domain name, and that Respondent has never been known under the wording “Credit Mutuel”.
Third, Complainant states that Respondent has registered and is using the disputed domain name in bad faith. It considers that the CREDIT MUTUEL trademark is a well-known trademark and that Respondent could not have ignored its existence. It is unlikely that Respondent has chosen this disputed domain name unless to create a risk of confusion. Complainant argues that “Credit Mutuel” is the only distinctive part of the disputed domain name . Complainant considers that Respondent has registered the disputed domain name in bad faith since he registered it precisely because of the well-known character of the CREDIT MUTUEL trademark.
Furthermore, Complainant argues that Respondent is using the disputed domain name in bad faith, because the disputed domain name activates a page under construction with the wording “Welcome to your new website”. The page under construction could be assimilated as a passive holding and such use constitutes bad faith.
Complainant argues that such a passive use reveals that Respondent has no serious intent to use it for goods and services or to promote a noncommercial cause.
Finally, Complainant argues that Respondent has used or is intending to use the disputed domain name in a phishing scam. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favor of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the foregoing provisions into consideration the Panel finds as follows: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test 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”. See section 1.7 of the WIPO Overview 3.0.
The Panel finds that Complainant has duly shown trademark rights in the CREDIT MUTUEL sign.
Previous UDRP cases have already considered that the gTLD of a disputed domain name does not have any impact on determining whether there is confusing similarity. See Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0775: “None of the various gTLDs of the disputed domain names – namely ‘.careers’, ‘.directory’, ‘.equipment’, ‘.estate’, ‘.holdings’, ‘.technology’, ‘.today’ or ‘.ventures’ – operates to lessen the inevitable confusion of the disputed domain names with Complainant’s trademarks that results from the incorporation of the whole of Complainant’s trademarks at the second level”. As long as the trademark is reproduced in the disputed domain name, it does not matter which gTLD is added.
Second, Complainant claims that the disputed domain name is identical to the trademark CREDIT MUTUEL. The disputed domain name is identical to the CREDIT MUTUEL trademark and UDRP cases mostly establish that “[i]f the gTLD suffix from the disputed domain name is removed, the Panel finds that the disputed domain name is identical to Complainant’s CARDIOSKIN trademark” (see Biofarma SAS v. Takuya Jin,WIPO Case No. D2016-2523).
The Panel finds that the disputed domain name is identical to the CREDIT MUTUEL trademark.
Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name.
Complainant is required to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, Respondent fails to come forward with such relevant evidence, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
Firstly, Complainant argues that Respondent is neither an agent nor has any business with the Credit Mutuel group. Complainant thus contends that Respondent is not related to the Credit Mutuel group.
Then, Complainant argues that no license or authorization has been granted to Respondent over the disputed domain name, and that Respondent has never been known under the wording “Credit Mutuel”.
Since Respondent has no link with the Credit Mutuel group, Panel finds that it has no rights or legitimate interests to register the disputed domain name.
Furthermore, as in previous cases, UDRP panels found that the lack of response from a respondent can be an indicator of lack of rights or legitimate interests (see Groupe Auchan v. Parapharmacie Marche, Xavier Marche,WIPO Case No. D2014-0925: “In the absence of response of the Respondent, the Panel accepts as true the Complainant’s allegations that the Respondent has no authorization or license to use the Complainant’s trademarks into the disputed domain names, that there is no business relationship existing between the Complainant and the Respondent.”).
Finally, the nature of the disputed domain name, being identical to Complainant’s trademark, carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.
First, Complainant argues that the disputed domain name was registered in bad faith. Complainant argues that CREDIT MUTUEL is considered to be a well-known trademark and that Respondent could not have ignored its existence when he registered the disputed domain name.
Since previous UDRP cases considered CREDIT MUTUEL to be a well-known trademark, and since Complainant has several domain names and trademarks over the sign CREDIT MUTUEL, the Panel considers that Respondent could not have ignored its existence.
The Panel therefore finds that the disputed domain name has been registered in bad faith.
Second, Complainant argues that the disputed domain name is being used in bad faith because the disputed domain name links to a page under construction, which may be considered as a passive holding.
Under the passive holding doctrine, “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Considering that the CREDIT MUTUEL trademark is well known, considering the lack of response of Respondent and considering that the website is inactive, the Panel finds that the disputed domain name is being used in bad faith.
Furthermore, it was written on the website linked to the disputed domain name: “Welcome to your new website”. This fact can increase the risk of confusion in Internet users’ minds and appears as an indicator of the use in bad faith of the domain name.
Complainant has therefore satisfied 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 Complainant.
Nathalie Dreyfus
Sole Panelist
Date: October 22, 2019
Full & Egal Universal Law Academy