Complainant is Confédération Nationale du Crédit Mutuel, France, represented by MEYER & Partenaires, France.
Respondent is Whois Privacy Protection Foundation, The Netherlands / Diego Lopeaz, 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 February 1, 2021. On February 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 2, 2021, 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 February 5, 2021 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 February 10, 2021. 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 February 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 5, 2021. The Center appointed Nathalie Dreyfus as the sole panelist in this matter on March 19, 2021. 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 Confédération Nationale du Crédit Mutuel, France, central body of CREDIT MUTUEL, the second banking and insurance group in France. Complainant proves to be the owner of many trademarks consisting in or including the wordings CREDIT MUTUEL in France and abroad, among which: - European Union (EU) word trademark No. 18130616 CREDIT MUTUEL registered on September 2, 2020, in classes 7, 9, 16, 35, 36, 38, 41 and 45; - EU semi-figurative trademark No. 16130403 CREDIT MUTUEL, registered on June 1, 2017, in classes 7, 9, 16, 35, 36, 38, 41 and 45; - EU semi-figurative trademark No. 18130619 CREDIT MUTUEL, registered on May 22, 2020, in classes 7, 9, 16, 35, 36, 38, 41 and 45; - EU semi-figurative trademark No. 5146162 CREDIT MUTUEL LA BANQUE A QUI PARLER, registered August 23, 2007, in classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44, and 45. The CREDIT MUTUEL trademark has been recognized as a well-known trademark in previous WIPO UDRP decisions and notably in the following cases: - Confédération Nationale du Crédit Mutuel v. Philippe Marie,WIPO Case No. D2010-1513; - Confédération Nationale du Crédit Mutuel contre Adrienne Bonnet,WIPO Case No. DFR2010-0008; - Confédération Nationale du Crédit Mutuel v. George Kershner,WIPO Case No. D2006-0248. Moreover, Complainant is also the registrant of domain names reproducing its trademarks, among which: - - - - - The disputed domain name Complainant alleges that the disputed domain name is confusingly similar to the CREDIT MUTUEL trademark of which it is the owner. To support this claim, Complainant first underlines that the disputed domain name reproduces its trademarks identically, which is sufficient to establish confusing similarity. Complainant further asserts that the addition of the descriptive term “log” does not neutralize this similarity, but on the contrary, rather suggests that the disputed domain name leads to Complainant’s platform, with a possibility to log in with a code or password, and that it refers to a Uniform Resource Locator set up by Complainant for an official platform or a private space dedicated to its clients. Complainant considers that the addition of the new generic Top-Level Domain (“gTLD”) “.monster” may also be disregarded in the comparison. Similarly, the addition of a hyphen in the disputed domain name is a minor difference that is not sufficient to neutralize the risk of confusion between the disputed domain name and its CREDIT MUTUEL trademark. Finally, Complainant puts emphasis on the well-known character of its CREDIT MUTUEL trademark to establish that the notoriety of the mark has reinforced the risk of confusion. Complainant then claims that Respondent has no rights or legitimate interests in the disputed domain name: Complainant underlines that Respondent was not authorized or granted a license to register the disputed domain name and that there was no relationship of any kind between Complainant and Respondent. Besides, Complainants adds that Respondent was not commonly known by the disputed domain name or by any combination of the term “log credit mutuel”. Complainant further considers that because the disputed domain name resolves to an inactive website and thus is not used, the disputed domain name was not registered in connection to any bona fide offering of goods or services or to any legitimate noncommercial or fair use. As a result, Complainant comes down to the conclusion that Respondent does not have rights or legitimate interests in the disputed domain name. Finally, Complainants asserts that Respondent registered and uses the disputed domain name in bad faith: 1. Bad faith registration Relying on the well-known character of its CREDIT MUTUEL trademark, Complainant argues that Respondent could not have ignored Complainant’s rights at the time of registration. The strong reputation of a trademark may be considered as a presumption of registration in bad faith. Complainant further asserts that the addition of the term “log” showed that Respondent was aware of Complainant’s activity and intended to mislead consumers into thinking that they were dealing with Complainant’s website. As a result, Complainant considers that bad faith registration is characterized. 2. Use in bad faith Complainant recalls that the website is currently inactive and considers that such passive holding of the disputed domain name by Respondent amounts to use in bad faith. Complainants again underlines: - the well-known character of its CREDIT MUTUEL trademark, reproduced entirely in the disputed domain name; - that Respondent was never granted an authorization to register the disputed domain name; - that Respondent was using a privacy shield; - that Respondent registered the disputed domain name in bad faith. Complainants considers that given the circumstances of the case, Respondent is not making any legitimate noncommercial or fair use of the disputed domain name and that the use of the disputed domain name disturb Complainant’s online presence. Complainant concludes that the disputed domain name is used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions, and is therefore in default. 6. Discussion and Findings According to paragraph 4(a) of the Policy, there are three conditions that Complainant must satisfy in order to obtain a decision that the disputed domain name registered by Respondent be transferred to Complainant: (i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar Complainant has registered many CREDIT MUTUEL trademarks in France and abroad. Therefore, the Panel considers that the trademarks rights of Complainant in the sign CREDIT MUTUEL are established. Complainant underlines that the disputed domain name reproduces its trademarks identically and is therefore likely to cause confusion with its CREDIT MUTUEL trademark. (See“The GROUPE LE DUFF and LE DUFF trademarks are well-known in France and worldwide. The disputed domain name is confusingly similar to the Complainant’s trademarks since it identically reproduces the LE DUFF trademark and almost identically the GROUPE LE DUFF trademark, whereby the omission of the letter ‘e’ of the term ‘groupe’ does not dispel confusion”. Holding Le Duff “HLD” v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2020-0355). The Panel finds the disputed domain name to be confusingly similar to Complainant’s trademark. Besides, Complainants asserts that the addition of the descriptive term “log” does not neutralize this similarity but enhances it by misleading Internet users into thinking they are dealing with Complainant’s platform. Previous UDRP decisions have found that the addition of a descriptive term does not prevent a finding of confusion similarity. (See“Nevertheless, the disputed domain name reproduces the Complainant’s FOOT LOCKER trademark, identically, with the mere addition of the term “sales” that is purely generic and may directly refer to Complainant’s business. The mere addition of this term increases the likelihood of confusion since consumers may believe the disputed domain name points to the official Complainant’s website offering goods for sale”. Foot Locker Retail, Inc. v. San Zhang, WIPO Case No. D2020-2455 and section 1.8 of the WIPO Overview 3.0). Additionally, Complainant alleges that the addition of the new gTLD “.monster” should be disregarded in the analysis. Long-standing case law has established that “it is well-established, that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement”. (See Carrefour SA v. Mahmoud Gamal Zaher, NetaqHost.com, WIPO Case No. D2020-1063). Similarly, the addition of a hyphen in the disputed domain name is not sufficient to prevent a finding of confusion similarity with Complainant’s CREDIT MUTUEL trademark. The Panel agrees and finds that the addition of the descriptive term “log”, the gTLD “.monster”, and the hyphen do not prevent a finding of confusion similarity between the disputed domain name and Complainant’s trademark. Therefore, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant underlines that Respondent was not authorized in any way to register the disputed domain name and that there was no relationship of any kind between Complainant and Respondent. Long-standing case law under the UDRP has considered these circumstances to be sufficient to make a prima facie case that Respondent lacks rights or interests in the disputed domain name. (See “The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no evidence that the Complainant has authorized or licensed the Respondent to use its LINKLATERS trademark and the Complainant has made out a prima facie case to that effect, which then places the burden on the Respondent, which it has failed to satisfy”. Linklaters LLP v. WhoisGuard Protected / Cindy Smith, WIPO Case No. D2019-0941). The Panel agrees and considers that Complainant has made a prima facie case that Respondent lacks rights and interests in the disputed domain name. Moreover, Complainant claims that Respondent was not commonly known by the disputed domain name. This is a long-standing criterion to assess whether Respondent has right or interest in the disputed domain name. The Panel agrees and considers that this confirms that Respondent does not have any rights or legitimate interests in the disputed domain name. Besides, Complainant considers that the passive holding of the domain name showed in this case that it was not registered in connection to any bona fide offering of goods or services and that Respondent, or to any legitimate noncommercial or fair use. Previous UDRP panels have reached decisions supporting this analysis. (See “The passive holding of the disputed domain name does not amount to use or preparations to use it in connection with a bona fide offering of goods and services. Nor is there any evidence which indicates that the Respondent is commonly known by the disputed domain name. Nor does a passive holding of the disputed domain name comprise a legitimate noncommercial or fair use of it. (…) The Panel therefore finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name”. Instagram, LLC v. Zafer Demir, Yok, WIPO Case No. D2019-1072). The Panel agrees and holds the passive holding of the disputed domain name by Respondent in this case as evidence that Respondent did not register the disputed domain name in connection with any bona fide offering of goods or services. The Panel considers that Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith 1. Bad faith registration Because its CREDIT MUTUEL trademark is well-known, Complainant considers that Respondent could not have ignored Complainant’s rights at the time of registration. Previous UDRP panel decisions support that view. (See “The Complainant has shown that its CARREFOUR trademark is registered and is widely used worldwide by the Complainant for retail, hypermarkets and other services. As stated by several panels in past UDRP decisions, CARREFOUR can be considered as a well-known trademark. Consequently, the Panel agrees with the Complainant over the fact that the Respondent knew or should have known of the Complainant’s trademark and deliberately registered the confusingly similar disputed domain name (see WIPO Overview 3.0, section 3.2.2).” Carrefour SA v. WhoisGuard, Inc. / Jes Madsen, WIPO Case No. D2020-0902). In the present case, the Panel considers that the well-known character of the CREDIT MUTUEL trademark is established and thus that faith registration is characterized. Furthermore, Respondent being based in France, it is implausible he did not have Complainant in mind at the time he registered the disputed domain name. 2. Use in bad faith Complainant recalls that the website is currently inactive and considers that such passive holding of the disputed domain name by Respondent amounts to use in bad faith. According to previous UDRP panel decisions, such passive holding may indeed amount to bad faith use in certain circumstances. (See “In certain circumstances, passive holding can be sufficient to find bad faith use. As discussed in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the relevant issue is whether under the circumstances of the case, it can be held that a respondent is acting in bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, supra, the panel noted that: ‘[…] paragraph 4(b) recognizes that inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are ‘without limitation’ – that is, paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith’. ‘The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behavior. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith’. In the present matter, the record shows that: (i) the Complainants’ trademarks are widely known in the U.S., as evidenced by their very substantial use in the U.S., which the Respondent indicated as its country of residence in the disputed domain name registration, and (ii) the Respondent hid its identity using a privacy protection service. In light of these specific circumstances, the Panel concludes that the Respondent’s passive holding of the disputed domain name In the present case, and as underlined by Complainant, the CREDIT MUTUEL mark is well-known and Respondent did use a privacy shield. In these circumstances, passive holding of the disputed domain name by Respondent amounts to use in bad faith, in application of the criteria defined in section 3.3 of the WIPO Overview 3.0. The Panel thus finds that the disputed domain name has been registered and is being used in bad faith in accordance with 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 Nathalie Dreyfus
Sole Panelist
Date: March 31, 2021
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