WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Confederation Nationale du Credit Mutuel v. Hardsoft, Inc. / Hilary Kneber

Case No. D2010-1352

1. The Parties

The Complainant is Confederation Nationale du Credit Mutuel of France represented by MEYER & Partenaires of France.

The Respondent is Hardsoft, Inc. / Hilary Kneber of United States of America.

2. The Domain Name and Registrar

The disputed domain name <creditmutuelbankfrance.com> is registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2010. On August 11, 2010, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 12, 2010, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that the 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2010.

The Center appointed Marilena Oprea as the sole panelist in this matter on September 14, 2010. 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 the political and central body for the Credit Mutuel Banking Group which is the second French banking and insurance service group providing services to approximately twelve million clients for more than a century. The Complainant’s network consists of 3,700 offices in France managed through 18 regional banks.

The Complainant owns several trademark registrations worldwide for CREDIT MUTUEL, including the following:

- French Trademark no. 1475940 of July 8, 1988 for the mark CREDIT MUTUEL in classes 35, 36; and

- International Trademark no. 570182 of May 17, 1991 for the mark CREDIT MUTUEL in classes 16, 35, 36, 38, 41.

The Complainant also holds numerous domain names, such as <creditmutuel.com>; <creditmutuel.fr>; <creditmutuel.eu>; <creditmutuel.mobi>; <creditmutuel.net> and <creditmutuel.info>.

The disputed domain name <creditmutuelbankfrance.com> was registered on May 6, 2010 and is currently held by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:

(i) The disputed domain name <creditmutuelbankfrance.com> is confusingly similar to its trademark CREDIT MUTUEL:

The Complainant states that the gTLD suffix <.com> is not taken into consideration in such matters. Further the disputed domain name (a) incorporates the Complainant’s trademark without space between the two words which is insignificant and does not establish a meaningful difference between the trademark and the disputed domain name, (b) the word “bank” which is descriptive for the Complainant’s core business and (c) the geographical term “France” which again refers to the Complainant’s main business country and where it is headquartered.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The Respondent is not related to the Complainant, the latter never granted the Respondent any authorization or license to use or to apply for the registration of the disputed domain name;

- The Respondent is not currently and has never been known under the wording “credit mutuel” or as a combination of these words together with “bank” or “France”;

- The Respondent has not engaged in any action that shows it has rights or legitimate interests in the disputed domain name.

(iii) The disputed domain name was registered and is being used in bad faith:

- The disputed domain name cannot be the result of a random choice of wordings as it incorporates the Complainant’s trademark, its area of business and its geographical privileged area of activity;

- The Respondent could not have ignored Complainant’s international reputation and its well-known trademark at the time it registered the disputed domain name;

- The Respondent has probably registered the disputed domain name for the only purpose of distributing malwares or hostile software and it appears from the Complainant’s investigations that the Respondent is involved in cybercriminal activities. The Respondent’s email address […]@yahoo.com is known for being the only one used for registering domain names in order to spread the “Kneber botnet”, which allows its creator to steal financial data from the infected hosts and to hijack e-banking transactions. It is therefore very likely that the disputed domain name could resolve in the future to a false website, confusingly similar to the Complainant’s website, in order to steal banking information from the Complainant’s customers, in the manner of phishing attacks;

- The Respondent’s contact details were found in at least another 242 domain name registrations, whilst the Respondent is the actual registrant of another at least eight domain names reproducing famous trademarks among which three are from the financial sector as well, such as <hsbc-trial.cn>; <hsbc-trial.net>; <west-funds.com> and <yahoo-statistics.con>. The latter resolves to a webpage that has been reported as a malicious page and has been blocked for being a malware URL;

- The Respondent’s passive holding of the disputed domain name constitutes bad faith use;

- The Respondent has provided false contact information to the Registrar when it registered the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the policy, these rules and any rules and principles of law that it deems applicable.”

In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:

(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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

There are two requirements that the Complainant must establish under this paragraph, namely: that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to the mark.

The Complainant has rights in the CREDIT MUTUEL trademark, holding registrations worldwide for decades. As stated by previous UDRP panels (see Deutsche Telekom AG v. Oded Zucker, WIPO Case No. D2004-0749 and cases cited therein), it is not relevant that the Complainant has no trademark registrations in the United States of America, the place where the Respondent is apparently located or in China, the location of the relevant Registrar because the disputed domain name can be accessed via Internet, which is a virtual space with no borders. Moreover, in the present proceedings the Respondent’s address, as registered in the WhoIs database, is not accurate and therefore the actual place where the Respondent is actually located is not known. Furthermore, the disputed domain name contains a geographical term, France, the country where the trademark CREDIT MUTUEL is well protected and where the Complainant is headquartered.

The disputed domain name contains the term “bank” which is closely related to the Complainant’s business. A wide variety of UDRP panels have considered that the addition of generic or descriptive words to trademarks in a domain name is not sufficient to escape the finding of confusing similarity and does not change the overall impression of the domain name as being connected to the complainant’s trademark (see Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers,WIPO Case No. D2000-1511; Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant,WIPO Case No. D2007-0889; Sanofi-aventis v. One Star Global, WIPO Case No. D2006-0583).

Further, the disputed domain name contains the geographical term, “France”, which is the country where Complainant is headquartered and is carriyng most of its business. In cases with domain names composed of a trademark and geographical descriptor, previous UDRP panels have found confusing similarity (see Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 and cases cited therein).

The Panel agrees with the previous UDRP panels and concludes that adding descriptive and geographical terms to a domain name incorporating entirely a trademark, does not prevent the domain name from being confusingly similar to the complainant’s registered trademarks, therefore the disputed domain name <creditmutuelbankfrance.com>, after disregarding the lack of spaces which is irrelevant in domain names and the “.com” generic top level domain, is confusingly similar to the Complainant’s CREDIT MUTUEL trademark.

Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its trademark. Therefore, the burden of production on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name, either by demonstrating one of the three circumstances under paragraph 4(c) of the Policy or by providing other relevant acceptable grounds.

The Respondent chose not to participate in these proceedings. Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or is commonly known by this domain name, or acquired a trademark right in the ”credit mutuel” wording, or is making any legitimate noncommercial or fair use of the disputed domain name. Instead, the Respondent appears to be involved in cybercriminal activities, to be analyzed under the bad faith heading below.

For these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Under this heading, the Complainant must prove both: registration and use in bad faith.

The Complainant is providing services for more than a century, the trademark CREDIT MUTULE being used for banking and financial services for decades, becoming well-known in France (see Confederation Nationale du Credit Mutuel v. Tribhuwan, Tribhuwan Nailwal, Luxor Writing Instruments pvt. Ltd., WIPO Case No. D2008-1716). Therefore, it is not difficult for the Panel in this present case to infer actual knowledge of the Complainant’s trademark and business at the time the Respondent registered the disputed domain name as it incorporates the Complainant’s trademark wholly with the addition of the descriptive word “bank” and the geographical term “France”.

From the record in this case provided as Annexes K1-K8 to the Complaint, the Respondent seems to be the registrant of various domain names incorporating third parties’ well-known trademarks, including in the same business area with the Complainant, banking and finance being in the top three areas preferred by cybersquatters¹. Also, at least another 242 domain names seem to be registered under the Respondent’s contact details (Annex J to the Complaint).

Moreover the Respondent’s contact detail, […]@yahoo.com, seems to be used in connection with financial cybercriminal activities in relation to the “Kneber botnet” tool (Annexes G, H1-H3 to the Complaint).

A “botnet” is a network of compromised computers infected by a program that communicates with its command-and-control infrastructure in order to attack websites, send unsolicited emails, etc. These carefully coordinated botnets are often used to gather sensitive information from the infected hosts such as financial data as the main drivers for botnets are for recognition and financial gain.

From all the above, it is indeed very likely that the disputed domain name could resolve in the future to a false website, confusingly similar to the Complainant’s website, used in relation to phishing attacks. “Phishing” is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user ids, passwords, etc.” (see Confédération Nationale du Crédit Mutuel v. Daniel Delcore, WIPO Case No. DLC2009-0001).

Further, the Complainant contends that the Respondent furnished false contact information to the Registrar of the disputed domain name. Thus, the city “Montey” does not exist in the United States and the Complainant could not find a company named “Hardsoft, Inc” based in Virginia. Also, the hardcopy communication sent by the Center in these proceedings could not be delivered, the courier’s message being “a correct company or receiver name is needed for delivery“. Even not expressly provided by the Policy, "false and misleading" contact information may lead to a finding of bad faith registration and use (see Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111, BellSouth Intellectual Property Corporation v. Real Yellow Pages, WIPO Case No. D2003-0413).

According to the record in this case, the disputed domain name is inactive. It was established even since the beginning of UDRP procedures that “inaction” / “passive holding” can, in certain circumstances, constitute bad faith use (see CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242).

For all these reasons, the Panel finds that the third element of the Policy is established, and that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <creditmutuelbankfrance.com> be transferred to the Complainant.

Marilena Oprea
Sole Panelist
Dated: September 28, 2010