WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Confédération nationale du Crédit Mutuel v. Kotchami Maxime EKPODILE, EI

Case No. D2016-1363

1. The Parties

The Complainant is Confédération nationale du Crédit Mutuel of Paris, France, represented by MEYER & Partenaires, France.

The Respondent is Kotchami Maxime EKPODILE, EI of Cotonou, Benin.

2. The Domain Name and Registrar

The disputed domain name <credit-mutuel-finances.com> (the “Domain Name”) is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”).

3. Procedural History

The Complaint was filed in French with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2016. On July 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 6, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and informing that the registration agreement was in English.

The Center sent an email to the parties regarding the language of proceedings on July 11, 2016. On the same date, the Complainant sent an email to the Center requesting that the language of proceedings be French. The Respondent did not submit any comments regarding the language of proceedings.

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 and 4, the Center formally notified the Respondent of the Complaint in French and English, and the proceedings commenced on July 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2016.

The Center appointed Geert Glas as the sole panelist in this matter on August 25, 2016. 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

Based on the Complainant’s assertions, supported by the documents enclosed as annexes to the Complaint, and undisputed by the Respondent because of its default, the Panel finds the following:

The Complainant is the Confédération Nationale du Crédit Mutuel, a bank that provides various banking products and services in France and in several other countries, such as Benin. The bank has five sectors of operations: retail banking, corporate and investment banking, insurance, asset management and private banking and other activities.

The Complainant is the owner of numerous trademark registrations in several jurisdictions throughout the world that consist of or include the term CREDIT MUTUEL. In particular, the Complainant is the registered proprietor of (i) a French trademark CREDIT MUTUEL (registered on July 8, 1988 with number 1,475,940 for services in classes 35 and 36), (ii) a French trademark CREDIT MUTUEL (registered on May 20, 1990 with number 1,646,012 for goods and services in classes 16, 35, 36, 38 and 41), (iii) an international trademark CREDIT MUTUEL (registered on May 17, 1991 with number570,182) and (iv) a European Union trademark CREDIT MUTUEL (registered on May 5, 2011 with number 009943135 for goods and services in classes 9, 16, 35, 36, 38, 41, 42 and 45).

The Complainant is also the registered proprietor of (i) a French trademark CREDIT MUTUEL LA BANQUE A QUI PARLER (registered on December 5, 1991 with number 1,738,973 for various goods and services in classes 16, 35, 36, 38 and 41) and (ii) a European Union trademark CREDIT MUTUEL LA BANQUE A QUI PARLER (registered on June 19, 2006 with number 005146162 for various goods and services in classes 9, 16, 35-39 and 41-45).

All these trademarks have been regularly renewed since their registration. According to the Complainant, since their registration these trademarks have continuously and intensively been used to promote its goods and services.

The term CREDIT MUTUEL is also the object of several domain names which are held by the Complainant or its affiliates. In particular, the Complainant is the registrant of (i) the domain name <creditmutuel.org>, registered on June 2, 2002 and (ii) the domain name <creditmutuel.eu>, registered on March 13, 2006. Euro-Information SAS, an affiliate of the Complainant, is also the registrant of (i) the domain name <creditmutuel.fr>, registered on August 10, 1995, and (ii) the domain name <creditmutuel.com>, registered on October 28, 1995. Euro Information, another affiliate of the Complainant, is also the registrant of the domain names (i) <creditmutuel.net>, registered on October 3, 1996 and (ii) <creditmutuel.info>, registered on September 13, 2001.

All these domain names have been regularly renewed since their registration. According to the Complainant, the domain names are all active and have been continuously used in order to designate and direct Internet users to the Complainant’s portal website.

According to the registrar’s WhoIs database, the Domain Name was registered on October 27, 2015 and updated on July 5, 2016. From the Complainant’s annexes to the Complaint it is apparent that the Domain Name resolves to an inactive website displaying the following message: “404. Not Found. The resource requested could not be found on this server.”

According to the Complainant, the Respondent has not answered the letters sent by the Complainant, nor has it provided any response to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the Domain Name be transferred to it on the following grounds:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant first contends that it holds intellectual property rights on the term CREDIT MUTUEL. In particular, the Complainant contends that it holds several trademark registrations in various jurisdictions throughout the world and domain name registrations on the term CREDIT MUTUEL.

The Complainant further contends that the Domain Name is confusingly similar to the CREDIT MUTUEL trademarks. The Complainant contends in this respect that, save for the addition of the descriptive term “finances”, the trademark CREDIT MUTUEL is included in the Domain Name in its entirety. The addition of this word, which is in its essence a descriptive and general term, does nothing to alleviate the confusing similarity. The Complainant therefore refers to previous decisions of UDRP panels, in which it was established that the addition of a generic or descriptive word is not sufficient to distinguish a domain name from a trademark or a similarly protected sign.

Moreover, the Complainant contends that a domain name which encompasses a substantial and distinctive part of a trademark should be considered to be identical or confusingly similar to such trademark. Finally, the Complainant contends that the addition of the term “finances” to the Domain Name in fact increases the likelihood that Internet users will assume that there is a connection between the Domain Name and the Complainant.

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, since the Respondent has no connection or affiliation with the Complainant and the Complainant and its affiliates have never assigned, granted or licensed or in any way authorized the Respondent to register the Domain Name.

The Complainant further contends that the Respondent has never publicly been known by any name or trade name that incorporates the words “Crédit Mutuel” or “Crédit Mutuel Finances”. The Complainant refers to previous decisions of the UDPR panels in which it was established that the respondent had in similar circumstances no rights or legitimate interests in respect of the disputed domain name.

The Complainant finally contends that the Respondent has not answered any letters sent by the Complainant, nor has it tried to justify or indicate its rights or legitimate interests. The Complainant consequently contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.

(iii) The Domain Name was registered and used in bad faith

The Complainant contends that its CREDIT MUTUEL trademark portfolio is well-known and has been widely used for many years. In this respect, the Complainant emphasizes that it is the second largest bank active in Benin, the country from where the Respondent originates, and that it functions in French, Benin’s official language. Moreover, the Complainant emphasizes that it has been offering its services over the Internet since 1996 through its portal website. The Complainant refers to case law of the UDRP panels which recognizes a presumption of bad faith if a registrant registers a domain name which is identical or confusingly similar to a trademark that is well-known and has been widely used for many years. Consequently, the Complainant contends that it is highly unlikely that the Respondent was not aware of the Complainant’s trademark at time of registering the Domain Name.

Moreover, the Complainant contends that the Respondent does not use the Domain Name in good faith, as it does not connect to an active website and the Respondent does not use the Domain Name in order to offer goods or services on the market. The fact that the Domain Name is maintained by the Respondent in a passive way does not overturn the presumption that the Respondent is using the Domain Name in bad faith.

Finally, the Complainant also contends that the Respondent could at any moment in time very easily modify the use of the Domain Name in a way which could seriously harm the Complainant and its customers. Indeed, as several email servers are linked to the term CREDIT MUTUEL, phishing attacks could relatively easily be sent to the Complainant’s customers from an email account associated with the Domain Name.

B. Respondent

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

6. Discussion and Findings

A. Preliminary issue: language of proceedings

The Complaint was filed in French. The Registrar has informed that the registration agreement was in English. Pursuant to the Rules, Paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Administrative Panel to determine otherwise. In the present case, the Panel has decided to accept the Complaint as filed in French and to issue this decision in English.

Paragraph 4(a) of the Policy requires that the Complainant proves each and all of the following three elements in order to be successful in these proceedings:

(i) the 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 interest in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Complainant has demonstrated that it is the owner of numerous registered trademarks and domain names which consist of the term “Crédit Mutuel”.

The Domain Name <credit-mutuel-finances.com> incorporates the Complainant’s trademark CREDIT MUTUEL in its entirety and differs from the CREDIT MUTUEL trademark only in that the suffix “finances” has been added.

Several UDRP panels have held that wholly incorporating a complainant’s registered trademark in a domain name may be sufficient to establish a confusing similarity for the purposes of the Policy, particularly where the trademark is highly recognizable and famous (see, e.g., AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

In addition, it is well-established that adding a generic or descriptive term to a registered trademark does not prevent the domain name from being confusingly similar to that registered trademark (see, e.g., Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253and Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694). Adding a generic word to a domain name consequently does not necessarily render the domain name less confusingly similar to the trademark (see, e.g., LEGO Juris A/S v. Thomas Plaut, WIPO Case No. D2012-1822; L’Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 and LEGO Juris A/S v. sakchai srion, WIPO Case No. D2012-0604).

In the case at hand, the term “Crédit Mutuel” constitutes the dominant part both of the Complainant’s trademark as well as of the Domain Name, as a consequence of which there is a considerable risk that the Internet users and the public at large will be under the impression that the Domain Name is owned by the Complainant or that there is some kind of commercial relationship between the Respondent and the Complainant.

The addition of the word “finances” in the Domain Name does moreover nothing to alleviate any confusing similarity, and in fact may increase this confusing similarity. The word “finances” is a non-distinctive term commonly used in a commercial context, making it even more difficult to distinguish the Domain Name from the Complainant’s trademark (see Delta Air Lines, Inc. v. Private Registrations Aktien Gesellschaft, WIPO Case No. D2012-2158). The presence of the descriptive word “finances” in the Domain Name increases the likelihood of confusion to the public in that the term “finances” is closely linked with and refers to the activity of financing, which is in fact an essential activity of every bank. The term “finances” is thus descriptive of the services offered by the Complainant, which inevitably increases the likelihood of confusion (see Randstad Holding nv v. Pinaki Kar, WIPO Case No. D2013-1796).

Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademarks listed above. The Panel finds that the Complainant has established the first element under paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

Although in principle a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once a complainant has made a prima facie case that a respondent lacks rights or legitimate interests, the burden of production shifts to that respondent to put forward appropriate indications or evidence demonstrating rights or legitimate interests in the domain name. If that respondent moreover fails to provide such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).

The Panel finds that the Complainant has first of all established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.

Indeed, based on the evidence submitted by the Complainant, the Panel finds that there are no indications that the Respondent has been commonly known by the Domain Name or has made any legitimate noncommercial use of the Domain Name (see, e.g., Fry’s Electronics, Inc v. WhoIs ID Theft Protection, WIPO Case No. D2006-1435).

Furthermore, the Complainant has provided evidence that the Domain Name resolves to an inactive website displaying the following message: “404. Not Found. The resource requested could not be found on this server.” Previous UDRP panels have found that the passive holding of a domain name does not constitute a legitimate use of such domain name that would give rise to a legitimate right or interest in the domain name (see, e.g., Société nationale des télécommunications: Tunisie Telecom v. Ismael Leviste, WIPO Case No. D2009-1529). As the Respondent is not actively using the Domain Name, the Panel is of the view that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name.

The Respondent has also failed to respond to the Complaint and has therefore not submitted any evidence of its rights or legitimate interests in the Domain Name (see, e.g., The Great Eastern Life Assurance Company Limited v. Unasi Inc., WIPO Case No. D2005-1218 and Stanworth Development Limited v. Mike Morgan (290436), WIPO Case No. D2006-0230).

Based on the evidence provided by the Complainant, the Panel finds that the second element under Paragraph 4(a) of the Policy has been established.

D. Registered and Used in Bad Faith

The Panel now turns to the question of whether the Domain Name has been registered and is being used in bad faith.

(i) The Domain Name has been registered in bad faith

Previous UDRP panels have ruled that in appropriate circumstances bad faith is established where a complainant’s trademark has been shown to be well-known or in wide use at the time of registering a domain name (see, e.g., The Gap, Inc. v. Deng Youqian, supra; Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517; and Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435).

Given that the CREDIT MUTUEL trademarks are well-known and have been widely used for several years, including in Benin, the Panel is of the opinion that it is highly unlikely that the Respondent did not know of the Complainant’s trademarks at the time the Domain Name was registered. Indeed, according to the Registrar’s WhoIs database, the Domain Name was registered on October 23, 2015, more than 27 years after the Complainant’s first CREDIT MUTUEL trademark registration in Europe.

Therefore, the Panel finds that the Respondent registered the Domain Name in bad faith.

(ii) The Domain Name has been used in bad faith

It is generally accepted that the apparent lack of a so-called active use of a domain name without any active attempt to sell or to contact the trademark holder does not as such prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 and Ladbroke Group Plc. V. Sonoma International LDC, WIPO Case No. D2002-0131). The Respondent’s failure to respond to the Complainants’ contentions and as a result to provide any evidence whatsoever of any good faith use of the Domain Name is an additional indication of bad faith (News Group Newspapers Limited and News Network Limited v. Momm Amed la, WIPO Case No. D2000-1623, Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460).

In this case, the Domain Name does first of all not resolve to a website or other on-line presence and there is no evidence that a website or other on-line presence is in the process of being established which will use the Domain Name. There is also no evidence of any advertisement, promotion or display of the Domain Name to the public. In short, there is no positive action being undertaken by the Respondent in relation to the Domain Name.

Moreover, the Respondent has failed to respond to any letters sent by the Complainant and to the Complaint and as such has failed to provide any evidence of good faith use of the Domain Name.

Taking into account the above, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

In light of the above, the Panel concludes that the Domain Name was registered and is being used in bad faith.

Accordingly, the Panel finds that the third element under paragraph 4(a) of the Policy has been established.

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, <credit-mutuel-finances.com>, be transferred to the Complainant.

Geert Glas
Sole Panelist
Date: September 8, 2016