The Complainant is Crédit Foncier de France, France, represented by DBK - Société d’avocats, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Leonardes Blomfield, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2019. On December 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 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 December 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 December 13, 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 December 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2020. The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on January 23, 2020. 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 Crédit Foncier de France, which is a national mortgage bank created in 1852 and which is specialized in real estate financing and services in France. The Complainant is a wholly-owned subsidiary of Groupe BPCE, which is one of the largest banking groups in France. The Complainant is the owner of 37 French trademarks, including: - the French figurative trademark CRÉDIT FONCIER No. 1547784 registered on May 3, 1988, in class 36; The Complainant also owns the domain name The disputed domain name 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 asserts that the disputed domain name is confusingly similar to prior trademarks of the Complainant, since it wholly incorporates the CRÉDIT FONCIER trademark, with addition of the term “France”. The Complainant considers that this addition does not avoid the likelihood of confusion between the disputed domain name and the CRÉDIT FONCIER trademark, and on the contrary contributes to emphasize this likelihood of confusion since the term “France” refers to the Complainant’s French origin. Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Complainant has never granted any license, nor any authorization to the Respondent to use the CRÉDIT FONCIER trademark, including as a domain name. The Complainant also underlines the fact that the Respondent used a privacy service and that the disputed domain led to a parking website where there were links leading to the Complainant’s competitors’ products which does not constitute a bona fide offer of goods and services. Finally, the Complainant claims that the disputed domain name was registered and is used in bad faith. The Complainant argues that since the CRÉDIT FONCIER trademark is well known in France and throughout the world, the choice of the disputed domain name does not seem to be a mere coincidence but on the contrary seems to have been done on purpose to generate a likelihood of confusion between the disputed domain name and the CRÉDIT FONCIER trademark. The Complainant also believes that since the disputed domain name led to a parking website with links leading to the Complainant’s competitors’ products, it is clear that the disputed domain name has been used to take advantage of the reputation of the CRÉDIT FONCIER trademark. 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 CRÉDIT FONCIER trademark. Then, the Panel notices that the disputed domain name is composed of (i) the whole CRÉDIT FONCIER trademark (minus the accent), to which have been added hyphens and the descriptive term “France”, and (ii) the generic Top-Level Domain (“gTLD”) “.com”. 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 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 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”)). Moreover, the Panel concurs with the opinion of several prior UDRP panels which have considered that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, for instance geographical terms, would not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0). Regarding the disputed domain name, the Panel finds that the addition of the term “France” to the CRÉDIT FONCIER trademark does not exclude confusing similarity. 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 trademark. 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: (i) 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 (ii) 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 (iii) the respondent is making a 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. 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 has no rights or legitimate interests in respect of the disputed domain name. Moreover, the disputed domain name resolved to a parking website where there were links leading to the Complainant’s competitors’ products, which does not represent a bona fide offering of goods or services. 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 it is established that the Complainant’s trademarks were registered before the registration of the disputed domain name. Moreover, the Panel finds that the Respondent knew, or should have known, that its registration would be confusingly similar to the Complainant’s trademark, given the reputation of the Complainant and the fact that the disputed domain name reproduces the CRÉDIT FONCIER trademark in its entirety (minus the accent). Furthermore, the fact that the disputed domain name led to a parking website containing links leading to the Complainant’s competitors’ products constitutes an evidence of bad faith use of the disputed domain name, according to prior UDRP panel decisions (see Section 3.1.4 of the WIPO Overview 3.0). Indeed, doing so, the Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its parking website, by creating a likelihood of confusion with the CRÉDIT FONCIER trademark. Consequently, in view of all the circumstances of this case, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to Policy, paragraph 4(a)(iii). 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 Christiane Féral-Schuhl
- the French figurative trademark CRÉDIT FONCIER No. 3194024 registered on November 12, 2002, in classes 35, 36, 42, and 45;
- the French word trademark CRÉDIT FONCIER LE PRÊT No. 3975001 registered on January 16, 2013, in classes 9, 16, 35, 36, 37, 41, 42, 43, and 45;
- the French word trademark CRÉDIT FONCIER EXPERTISE No. 4108450 registered on July 28, 2014, in classes 35, 36, 42, and 45.
Sole Panelist
Date: February 6, 2020
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