Credit Industriel et Commercial S.A. v. Christopher Hunt
Case No. D2008-0892
1. The Parties
Complainant is Credit Industriel et Commercial S.A., of Paris, France.
Respondent is Christopher Hunt, of Northwest Territories, Canada.
2. The Domain Name and Registrar
The disputed domain name <sansfilbanque.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2008. On June 13, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On June 13, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2008. The Response was filed with the Center on July 7, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on July 17, 2008. 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.
Both parties submitted brief supplemental filings. The Panel elects to accept these filings.
4. Factual Background
Complainant is the owner of the registered marks FILBANQUE and FIL BANQUE, registered with the trademark authority of France, the earliest registration effective January 22, 1992. Complaint, Annexes K and L. Complainant is a French banking group with approximately 3.9 million clients and 1,940 branches, and 7 regional banks in France. Complaint, Annex C. Complainant also has branches 37 countries in Europe, Asia, Africa, the Middle East, Latin America and North America. Complainant does not have a branch in Canada. Complaint, Annex D. Complainant offers online banking services through its Filbanque service. Complaint, Annex E. This service has been offered through a web site to which the domain names <filbanque.tm.fr>, <filbanque.fr>, <filbanque.com>, and <filbanque.eu>. This service has been available since January 1998, and it is available at each of its seven regional banks’ web site. Complaint, Annexes F and G. The French word “fil” may in the context here be translated to “wire” in English. The French word “banque” is the equivalent of the English word “bank.”
Respondent registered the domain name at issue, <sansfilbanque.com>, April 22, 2006. Complaint, Annex A. The French word “sans” translates into English as “without,” so that the phrase “sans fil banque” translates roughly as “wireless bank.” Indeed, if one Googles the phrase “sans fil,” the first entry is one from Wikipedia for “Ile Sans Fil”, which Wikipedia translates as “wireless island.” This is an organization in Montreal, Quebec, Canada, whose goal is to provide wireless Internet access throughout the island of Montreal.
Complainant points out that Respondent has registered numerous domain names which Complainant deems “infringing,” such as <emaireatescamelracing.com>, <montereyhotels.info>, <tintincomic.com>, <britneyspearssextape.info>, <s2r.mobi>, and <sterninsurance.com>.
Complainant points out that initially Respondent used the domain name to resolve to a parking site, at which links to other banks who compete with Complainant were present, and that Respondent, after having received Complainant’s cease and desist letter, deactivated the site. Complaint Annex M.
On March 15, 2007, Complainant sent Respondent a cease and desist letter. Complaint, Annex H. Complainant argues that the addition of the word “sans” before Complainant’s mark does not eliminate the confusing similarity and in fact that the French word “sans” (meaning “without” in English) is intended to disparage the Filbanque product.
Respondent claims that prior to receiving the cease and desist letter from Complainant that Respondent had no knowledge of Complainant, or of its marks. Respondent contends that he registered the domain name at issue because in French, one of the official languages of Canada, the domain name translates to “wireless bank” in English. Respondent contends that he registered the domain name at issue at or about the same time that he registered many other banking and wireless related domain names in both the French and English languages.
For example, on April 22, 2006, in addition to the domain name at issue, Respondent registered <bancairesenligne.com>, <banquewireless.com>, <commercesansfile.com>, <ebancaires.com>, <encasserenligne.com>, <enligneaffaires.com>, <enlignebancaires.com>, <enlignebanque.com>, <mobilebanque.com>, <banquesansfil.com>, <sansfilbancaires.com>, <sansfilcommerce.com>, and <wirelessbanque.com>.
Respondent denies that he used an automated process to register the domain names that he has registered. Respondent states that he is an individual developer of web sites.
On March 16, 2007, Respondent replied to the cease and desist letter. In his reply, Respondent stated that he was unaware of Complainant’s domain name until he received the cease and desist letter, and set out the examples of the many domain names he had registered around the concept of wireless/online/mobile banking or commerce. Respondent stated that he had no intent to make use of Complainant’s mark and that he merely registered domain names descriptive of wireless banking and commerce.
Complainant offered to pay all the renewal and registration fees if Respondent would transfer the domain name to Complainant. Respondent rejected this offer, stating that he had business plans for the name.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name at issue is confusingly similar to Complainant’s FILBANQUE marks, that Respondent has no rights or legitimate interests in respect of the domain name at issue in that Respondent has never been known as “Filbanque” and that Respondent has never been authorized to use the FILBANQUE mark, and that Respondent has registered and has used the domain name in bad faith in that Respondent has used the domain name at issue to resolve to a parking web site with links to banks that compete with Respondent and that Respondent has inserted the French word “sans” before Complainant’s FILBANQUE mark in the domain name for the purpose of disparaging Complainant.
B. Respondent
Respondent contends that the domain name is not confusingly similar to Complainant’s FILBANQUE mark since the domain name at issue constitutes a common French term for “wireless bank,” that Respondent has rights and legitimate interests in the domain name at issue, because it is merely a descriptive term, and that Respondent registered and is using the domain name at issue in good faith, since it registered numerous other domain names in French and English related to wireless banking and commerce. Respondent requests a finding of bad faith reverse domain name hijacking.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Where a domain name incorporates Complainant’s mark in its entirety, the domain name is confusingly similar to Complainant’s mark, despite the addition of other words in the domain name and despite the fact that the name, when taken as a whole, may be descriptive. This is the so-called “objective test” adopted by the majority of panelists. SeeWal-Mart Stores, Inc. v. MacLeod d/b/a For Sale,
WIPO Case No. D2000-0662. The issue of the descriptive nature of the domain name is better analyzed under the third prong, whether the domain name has been registered and is being used in bad faith. Accordingly, the Panel finds that the domain name at issue is confusingly similar to Complainant’s registered service mark.
B. Rights or Legitimate Interests
The Panel is persuaded by the reasoning of the panel in Tightrope Media Systems Corporation v. DomainCollection.comWIPO Case No. D2006-0446. In that case, the Panel stated: “The registration of common words as domain names, and the posting of advertising or hyperlinks relevant to that common word can be a legitimate interest if the advertising and links are clearly and directly related to the common word.” If the registration and use of the domain name at issue is directed at the descriptive sense of the words registered, then Respondent has a right and legitimate interest in the domain name at issue. If the registration and use of the domain name at issue is directed at the good will inherent in Complainant’s trademark, Respondent does not have a right or legitimate interest in respect of the domain name. This must be determined in an analysis of the third prong, or “bad faith.”
C. Registered and Used in Bad Faith
Respondent used the domain name at issue to resolve to a parking site which contained links to banking entities which were competitors of Complainant. After receipt of the cease and desist letter, which Respondent contends is the first time he knew of Complainant, its web site, or its trademark, Respondent deactivated the site.
Panels have held that the use of a domain name to resolve to a parking site that contains links to competitors of the complainant is in and of itself an indicia of bad faith. ACCOR v. Steve Terry/North West Enterprise, Inc.,
WIPO Case No. D2006-0649. However, it is necessary for a panel, in light of all of the evidence, to determine whether the respondent’s use of a domain name was made with the intent to profit from the good faith inherent in Complainant’s trademark, or whether respondent intended to register and use a domain name for purposes other than to profit from complainant’s mark.
In the present case, the hyperlinks at the parking site are directly related to the common phrase “wireless bank.” Respondent is a resident of Canada, a place where Complainant does not have a banking office. Complainant’s banking services are largely located in France, with offices in other countries, but not in Canada. One of the official languages in Canada is French. While Respondent is an English speaking Canadian who acknowledges that he is not fluent in French, it would be logical for him to register what he regarded to be useful, descriptive terms related to wireless banking and wireless commerce in both French and English. In French, the words “sans fil banque” are the equivalent in English of “wireless bank.” Respondent alleged, and in its supplemental filing Complainant admits, that Respondent registered descriptive domain names relating to wireless banking and wireless commerce. Respondent admits that such registration is not objectionable, but that the registration of the domain name at issue does not meet those criteria.
It is clear that, at least in French speaking Canada, “sans fil” means “wireless.” In light of this plain meaning, and of the fact that Respondent contends that he did not know of Complainant, its domain name, or its mark, and of the fact that Complainant has no offices or presence in Canada, and of the fact that Respondent registered many other descriptive domain names related to wireless banking and wireless commerce, both in French and in English, on the exact same day that he registered the domain name at issue, the Panel finds that Respondent did not register and is not using the domain name at issue in bad faith.
D. Reverse Domain Name Hijacking
Respondent has requested a finding of reverse domain name hijacking. However, Respondent used the domain name at issue for a parking site, which provided hyperlinks to banks which are competitors of Complainant. Even though the Panel has acknowledged that this particular use was not in bad faith, the general rule is that such use is an indicia of bad faith. Moreover, the fact that Respondent deactivated the site upon receipt of the cease and desist letter indicates that Respondent was aware of this view. Accordingly, the Panel does not find that Complainant was engaged in reverse domain name hijacking.
7. Decision
For all the foregoing reasons, the Complaint is denied. The Panel declines to find that there was reverse domain name hijacking.
M. Scott Donahey Sole Panelist
Dated: July 24, 2008
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