The Claimant is Confédération Nationale du Crédit Mutuel of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Delcore Daniel of Hatchoun, Malaysia. 2. Domain Name
The dispute concerns the following domain name: . 3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2012 by email and on December 7, 2012 by courier. On December 5, 2012, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On December 10, 2012, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the domain name and providing the relevant contact details. The Center verified that the Request satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for “.ch” and “.li” domain names (the “Rules of Procedure”), adopted by SWITCH, on March 1, 2004.
In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution proceedings commenced on December 12, 2012. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was January 1, 2013.
The Respondent has neither filed a Response nor expressed his readiness to participate in a Conciliation in accordance with paragraph 15(d) of the Rules of Procedure.
On January 8, 2013 the Center notified the Claimant accordingly, who on January 9, 2013 made an application for the continuation of the Dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of procedure and paid the required fees.
On January 28, 2013, the Center appointed Michael Treis as Expert in this case. The Expert finds that it was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties. 4. Factual Background
The Claimant is Confédération Nationale du Crédit Mutuel, a French Association registered under the laws of France of July 1st, 1901.
The Claimant maintains a network of 3178 offices in France and operates a Web portal under the uniform resource locator to inform the public about its products and services in the area of finance and insurance.
The Claimant provides evidence of a number of trademark registrations consisting of or including the term “credit mutuel” in France, Switzerland and abroad. For instance the Claimant is the registered owner of the following trademarks:
- CRÉDIT MUTUEL International Registration No. 1099172 of September 8, 2011, in classes 9, 16, 35, 36, 38, 41 and 45 of the Nice Agreement, designating Switzerland, Monaco and Norway1;
- CRÉDIT MUTUEL LA BANQUE À QUI PARLER International Registration No. 914467 of July 7, 2006, in classes 9, 16, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45 of the Nice Agreement, designating Switzerland, Algeria and Morocco2; and
- CRÉDIT MUTUEL, French semi-figurative trademark No. 1475940 of July 8, 1988, in classes 35 and 36 of the Nice Agreement3.
Through one of its branches, Caisse Fédérale du Crédit Mutuel Centre Est Europe, the Claimant also owns the following registered trademark in France, Switzerland and abroad:
- CREDIT MUTUEL IHRE GENOSSENSCHAFTSBANK IN FRANKREICH International Registration No. 918700 of November 14, 2006, in classes 9, 16, 35, 36, 38 and 42 of the Nice Agreement, designating Switzerland and Germany4.
These rights have been continuously used in commerce since their registration.
The Claimant uses its trademarks as domain names to promote its business activities: and . Under Euro-Information, the computing subsidiary of the Claimant, the Claimant is also registrant of the following domain names: , , , , , , and .5
All these domain names point to the official Website of the Claimant.6
The disputed domain name was registered on March 30, 2009. 5. Parties’ Contentions A. Claimant
The Claimant alleges that the Respondent integrally reproduced the Claimant’s trademark in the disputed domain name and, by its use, disrupts the Claimant’s business activities. Therefore, the Claimant argues, registration and use of the disputed domain name infringes its trademark rights under the laws of Switzerland or Liechtenstein.
Moreover, the Claimant points out that the previous registration of other domain names containing of the Claimant’s trademark CRÉDIT MUTUEL and the Respondent’s conduct in this proceeding strongly indicate a typical pattern of cybersquatting.
For these reasons, the Claimant requests transfer of the domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. Pursuant to paragraph 23(b) of the Rules of Procedure, the Expert is therefore entitled to draw such interferences as he considers appropriate. 6. Discussion and Findings
According to paragraph 24 of the Rules of Procedure, the Expert shall grant the request if the registration or use of the domain name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the law of Switzerland or Liechtenstein.
Paragraph 24(d) of the Rules of Procedure specifies that such clear infringement of an intellectual property right exists when:
- both, the existence and the infringement of the claimed right in a distinctive sing clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted;
- the Respondent has not conclusively pleaded and proven any relevant grounds for defence; and
- the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested in the request. A. The Claimant has a right in a distinctive sign
As outlined above, the Claimant based its request on various registered trademarks consisting of or including the term “Credit Mutuel”. Pursuant to paragraph 24(c) of the Rules of Procedure, the rights owned under the laws of Switzerland or Liechtenstein are relevant for the present case. As to trademark and unfair competition law, it should be noted that the relevant provisions of the laws of Liechtenstein and Switzerland are highly similar and that their application to the relevant set of facts therefore leads to identical results. Consequently, the Expert particularly focuses on the invoked international registrations designating Switzerland.
In Annexes D1, D2 and D5 to the Request, the Claimant provides excerpts from the ROMARIN online database for International Registrations No. 1099172, 914467 and 918700, registered by the Claimant or its subsidiary. Thus, the Expert holds that the Claimant established its exclusive right in its distinctive signs in Switzerland. B. The registration or use of the domain name constitutes a clear infringement of the Claimant’s right
Under article 13 paragraph 1 and 2 of the Swiss Trademark Act (“TMA”) of August 28, 1992, the owner of a trademark has an exclusive right to use the trademark to distinguish goods or services for which it was registered. The Swiss Federal Supreme Court repeatedly held that this exclusive right also encompasses the use of a trademark as an element of a domain name, when such domain name is used on a website for promoting and distributing goods and services that are identical with or similar to the goods or services for which the trademark owner has registered the mark (e.g. DTF 126 III 239). However, to the extent a disputed sign was legitimately used before registration of the trademark, the owner of such trademark is not entitled to claim exclusivity with regard to the continued use of a that sign (article 13 paragraph 2 in connection with article 3, and article 14 TMA).
Besides trademark law, domain names can also be considered as distinctive sings under Swiss competition law (DTF 126 III 245). Article 2 of the Swiss Unfair Competition Act (“UCA”) of December 19, 1986, provides general protection against any unfair, and therefore unlawful, business practices. Article 3 paragraph 1 lit. d UCA further specifies that any measures causing confusion with products, works, services, or the business of others, are prohibited.
In the present case, it firstly has to be noted that the Claimant’s trademark CRÉDIT MUTUEL, International Registration No. 1099172, was registered after the disputed domain name, which was registered on March 30, 2009. To the extent the disputed sign has been used prior to said registration, the Claimant may therefore not claim exclusivity.
However, with regard to the other trademarks invoked by the Claimant, the Expert finds that the disputed domain name is clearly identical with the distinctive parts thereof. The Website under the disputed domain name merely displays links pointing to Websites of other providers of financial services, directly competing with the Claimant in its core business. The services promoted under the Respondent’s domain name are clearly similar and/or identical to the services which the Claimant’s trademarks were registered for, wherefore such registration of the disputed domain name infringes the Claimant’s trademark rights.
Based on the facts of the case, the Expert additionally has no doubt, that the disputed domain name was registered by the Respondent to merely prevent the Claimant from using the domain name itself, which, as a result, suffered an impairment of its economic interests. The Respondent’s behavior shows the typical pattern of cybersquatting. Such behavior constitutes bad faith and has to be qualified as unfair and in breach of the UCA.
The Respondent did not provide any reasonable explanation why he registered the disputed domain name and to the Expert’s best knowledge, no such grounds can be seen.
The Expert finds that the Request is well founded and that Respondent’s infringements of Claimant’s rights justify a transfer of the domain name to the Claimant according to paragraph 24 (d) (iii) of the Rules of Procedure. 7. Expert Decision
For the above reasons, in accordance with paragraph 24 of the Rules of Procedure, the Expert orders that the domain name be transferred to the Claimant.
Michael Treis
Expert
Dated: February 1, 2013
1 Annex D1 of the Request
2 Annex D2 of the Request
3 Annex D3 of the Request
4 Annex D5 of the Request
5 Annex F1-F8 of the Request
6 Annex C of the Request
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