The Complainants are Crédit Industriel et Commercial S.A., France and Confédération Nationale du Crédit Mutuel, France, represented by MEYER & Partenaires, France.
The Respondents are Whois Privacy Service, United States of America / Yassine Ahmed, Spain, Yassine Cleoo, Spain, Yassinee Cleo, Spain, Yacin Helaloa, Spain, and Robert Michel, France. 2. The Domain Names and Registrars
The disputed domain names The disputed domain names respectively, the “Registrars”. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2020. On February 28, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 2, 2020, the Registrar Gandi SAS transmitted by email to the Center its verification response confirming it is the Registrar for the disputed domain names: (i) credit-mutuel-espace-client-confirmation-mobile.info, which was registered by the relevant Respondent on December 10, 2019; (ii) credit-mutuel-espace-client-mobile-confirmation.info, which was registered by the relevant Respondent on December 12, 2019; (iii) credit-mutuel-espace-client-mobile-securite.info, which was registered by the relevant Respondent on December 17, 2019; (iv) credit-mutuel-espace-client-mobile-validation.info, which was registered by the relevant Respondent on December 23, 2019; and (v) credit-mutuel-online-espace-client-confirmation-mobile.info, which was registered by the relevant Respondent on December 28, 2019. On March 3, 2020, the Registrar Amazon Registrar, Inc. transmitted by email to the Center its verification response confirming it is the Registrar for each of the remaining disputed domain names. Amazon Registrar, Inc. confirmed that the dates the relevant registered the disputed domain names with it ranged from December 4, 2019 to January 5, 2020. The verification responses from both Registrars: (a) confirmed that the language of the registration agreement for each disputed domain name registered through it is English; (b) disclosed registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint; and (c) acknowledged that the registration agreements of all disputed domain names were subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain names. The Center sent an email communication to the Complainant on March 3, 2020 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 March 6, 2020. In response to a request for clarification by the Center, the Complainant filed an amended Complaint on March 10, 2020. The Center verified that the Complaint together with the amended Complaints 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 March 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2020. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 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’s are members of the same corporate group. The First Complainant is the oldest French deposit bank having been established in 1859 by an imperial decree signed by Napoleon III. It was nationalized in 1982 and privatized in 1997. It currently has more than 4.7 million clients with more than 2,000 agencies throughout France and 38 abroad. It operates a website providing information about, and access to, its services located at “www.cic.fr”. Amongst other things, the First Complainant is the owner of European Union (“EU”) Registered Trademark No. 005891411, CIC, which was registered on March 10, 2008 in respect of a range of goods and services in International Classes 9, 16, 35 and 36. The First Complainant is also the owner of French Registered Trademark No. 1358524, C.I.C., which has been registered since 1986 in respect of relevant services in International Classes 35 and 36. The Second Complainant describes itself as the second French banking and insurance services group. It has some 12 million customers and a network of 3,178 offices throughout France. It provides services and information via web portals accessible at “www.creditmutuel.com” and “www.creditmutuel.fr”. According to the Complaint, customer access to their accounts is through the latter URL. Amongst other things, the Second Complainant is the owner of EU Registered Trademark No. 009943135, CRÉDIT MUTUEL, in respect of a range of goods and services in International Classes 9, 16, 35, 36, 38, 41, 42 and 45. This trademark has been registered since October 20, 2011. It is also worth noting that the Second Complainant is the owner of registered trademarks for a coloured representation of “CRÉDIT MUTUEL” and a figurative device which have been registered in France, Trademark No. 1475940, in International Classes 35 and 36 since 1988 and an International Registration No. 570182 designating Benelux, Italy and Portugal, which has been registered since 1991. According to the Complaint, under French ministry order No. 58-966 of October 16, 1958, the exclusive use of the name CRÉDIT MUTUEL in France has been reserved to the Second Complainant. As noted above, all of the disputed domain names were registered between December 4, 2019 and January 5 2020. If one attempts to browse to: (a) (b) (c) (d) (e) (f) access is blocked and the browser displays a warning that the site attempted to be accessed may contain malicious content. None of the other disputed domain names has resolved to an active website. 5. Discussion and Findings No response has been filed. The Complaint has been sent, however, to the Respondents at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that each Respondent has been given a fair opportunity to present his or its case. When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (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. A. Consolidation of Complaints The Complainants have requested consolidation of their complaints as the disputed domain names have been registered in the names of a number of different entities. Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, panels have frequently held that the Panel’s powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally and each is given a fair opportunity to present his, her or its case. In accordance with those requirements, panels have typically allowed joinder against multiple respondents who have registered different domain names where, amongst other things, the domain names in question, or the websites to which they resolve, appear to be under common control and consolidation would be fair and equitable to all parties. The onus of establishing that these requirements have been met falls on the party seeking consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11 . In the present case, the Complainants are members of the same corporate group. The disputed domain name which specifically affects the First Complainant’s interests, In these circumstances, it is both sensible and conducive to efficiency for the complaints of both Complainants against the Second Respondent to be combined in the one proceeding. Having failed to provide a Response, none of the Respondents has objected to joinder or identified any prejudice he or she may suffer if consolidation were permitted. The Second Respondent: (a) shares the name “Yassine” with the Third and Fourth Respondents (who have almost identical surnames); (b) has a name which closely approximates the first name of the Fifth Respondent; (c) also uses an email address which includes a “surname” almost identical to the surname of the Fifth Respondent. All of the disputed domain names registered by the Second to Fifth Respondents were registered closely in time to each other. The Second Respondent registered a group of disputed domain names in early December and then three more on December 28, 2019 after a number of names had been registered in the names of Yassine Cleoo and Yassine Cleo between December 17 and 23, 2019. Each Respondent has used the same Registrar (apparently, Amazon Registrar, Inc. is a reseller for Gandi). Each has also used the privacy service offered by the First Respondent. The Second to Fifth Respondents have also given addresses in Madrid. Each of the Second to Sixth Respondents has apparently given false contact details. For example, the Second Respondent has provided as his or her address the street address of the Museo Nacional del Prado. According to the Complainants, the address in Paris of the Sixth Respondent does not exist. It was not possible for the hard copy Complaints to be delivered to the other addresses. Apart from the 25th disputed domain name, all disputed domain names adopt a very similar structure. In these circumstances, the Panel considers there is a sufficient basis to consider that the Second to Fifth Respondents are the same person or working under common control. Accordingly, the Panel finds it is appropriate to consolidate the Complaints against them in the one proceeding. The position of the Sixth Respondent is different. The Complaint against the Sixth Respondent does involve the same trademark as the Second Complainant asserts against the other Respondents. Also, as noted above, the Sixth Respondent has used the same Registrar and privacy service as the other Respondents. The Sixth Respondent has also apparently given a false, non-existent address. However, the Sixth Respondent’s name does not have any obvious associations with the other Respondents. The Sixth Respondent also gave an address in France rather than Madrid, Spain. This is not necessarily decisive in itself as two of the respondents inWIPO Case No. D2020-0549 who have names very similar to the Second to Fifth Respondents in this case gave addresses in France rather than Spain too. The 25th disputed domain name was registered in January 2020 rather than December 2019. In addition, the 25th disputed domain name does not follow the format or structure of the other disputed domain names (or of the domain names at issue inWIPO Case No. D2020-0549). In these circumstances and having regard to the criteria outlined in WIPO Overview 3.0 , section 4.11.2 , it is too speculative to infer that the Sixth Respondent is the same person as the Second to Fifth Respondents or working together with them. Accordingly, it is not appropriate for the Complaint against the Sixth Respondent to be joined in this proceeding and it will not be considered further in this decision. In the remainder of this decision, the Panel will refer to the Second to Fifth Respondents as the “Respondent” unless it becomes necessary in a particular case to distinguish between particular Respondents or disputed domain names. B. Identical or Confusingly Similar The first element that the Complainants must establish is that the disputed domain names are identical with, or confusingly similar to, the trademark rights of one or other Complainant. There are two parts to this inquiry: a Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark. (a) the First Complainant has proven ownership of the registered trademark “CIC”; and (b) the Second Complainant has proven ownership of the registered trademark “CRÉDIT MUTUEL”. The Complainants also contend that their respective trademarks are very well-known trademarks in the sense referred to in article 6bis of the Paris Convention. The evidence particularly of the number of customers each has in France supports that conclusion. The Panel notes that panels in other proceedings brought by the Complainants have reached similar conclusions too. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the Top Level Domain (“TLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview 3.0 , sections 1.7 and 1.11 . It is convenient to address this issue in two stages. The disputed domain name The disputed domain name The additional elements (apart from the gTLD) are descriptive terms separated by hyphens and do not avoid a conclusion of confusing similarity. See, e.g., WIPO Overview 3.0 , section 1.8 . It is true there are more descriptive terms in this disputed domain name than is often the case. Nonetheless, they do not obscure the fact that the whole of the First Complainant’s trademark is incorporated “as is” within the disputed domain name. The inclusion of the hyphens as separators or punctuators does not affect the analysis. See, e.g., Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046. Accordingly, this disputed domain name is confusingly similar to the First Complainant’s trademark. The remaining disputed domain names Each of the remaining disputed domain names consists of the whole of the Second Complainant’s “CRÉDIT MUTUEL” trademark (without the space or the diacritical marks) and similar combinations of descriptive terms to the disputed domain name Accordingly, the Panel finds that the Complainants have established the requirement under the first limb of the Policy in respect of each disputed domain name. C. Rights or Legitimate Interests The second requirement the Complainants must prove is that the Respondent has no rights or legitimate interests in the disputed domain names. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., WIPO Overview 3.0 , section 2.1. Each Complainant states that it has not authorised the Respondent (or Respondents) to use the Complainant’s trademark or the disputed domain names. Nor is the Respondent affiliated with either of them or their corporate group. The disputed domain names are plainly not derived from the name of the Respondent (or Respondents). From the available record, the Respondent (or Respondents) does not appear to hold any trademarks for the disputed domain name. There can be no question that those disputed domain names which resolve to websites to which access has been blocked on the grounds that they contain malicious content such as viruses, trojans or spyware can qualify as the offering of goods or services in good faith under the Policy. The remaining disputed domain names do not appear to have been in use at all. These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent (or Respondents) has no rights or legitimate interests in the disputed domain names. The basis on which the Respondent (or Respondents) has adopted the disputed domain names, therefore, calls for explanation or justification. The Respondent (or Respondents), however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainants have established the second requirement under the Policy also. D. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. Both these requirements must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. In this connection, it is worth recalling the length and scale of the Complainants’ use of their respective trademarks. It is also significant that the Respondent (or Respondents) has apparently provided false contact details. In addition, the number of disputed domain names which the Respondent (or Respondents) has sought to register in a short period and, in the case of 24 of the disputed domain names, with additional descriptive elements suited to applications in the Complainants’ field of activity provides a reasonable basis to infer that the Respondent (or Respondents) was indeed well aware of the Complainants and their respective trademarks when registering the disputed domain names. The 23 disputed domain names based on “Credit Mutuel” demonstrate a pattern of conduct based on the Second Complainant’s trademark. Although there is only one disputed domain name adopting the First Complainant’s CIC trademark, that disputed domain name is clearly an extension of the pattern adopted for all but one of the other disputed domain names. The use of those disputed domain names to which access is blocked on grounds of malicious content qualifies as use in bad faith. It is also well established since Telstra Corporation Ltd v Nuclear Marshmallows,WIPO Case No. D2000-0003 that the registration and “passive” holding of domain names, particularly where they embody well-known trademarks, qualifies as use in bad faith under the Policy. The disputed domain names are not ordinary descriptive terms themselves, but strongly suggest a connection with the Complainants’ respective operations. It appears that the Respondent (or Respondents) has adopted the disputed domain names because of their trademark significance. In circumstances where the Respondent (or Respondents) has not sought to claim, let alone establish, that he or she has rights or legitimate interests in the disputed domain names, therefore, the Panel finds the Respondent (or Respondents) has registered and used them in bad faith. Accordingly, the Complainants have established all three requirements under the Policy in respect of each disputed domain name. 6. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that: 1. the disputed domain name 2. the disputed domain names In light of the ruling that joinder of the Complaint against it in this administrative proceeding is not appropriate, the Complaint against the Sixth Respondent in respect of the disputed domain name, Warwick A. Rothnie
As discussed in section 4 above:
Sole Panelist
Date: May 7, 2020
Full & Egal Universal Law Academy