WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caceis Bank v. Domain Administrator, See PrivacyGuardian.org / Auto Logisticx, Shain Roberts

Case No. D2018-1638

1. The Parties

The Complainant is Caceis Bank of Paris, France, represented by Gevers Legal NV, Belgium.

The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“US”) / Auto Logisticx, Shain Roberts of Guangyuan Zhong, Guangzhou, China.

2. The Domain Name and Registrar

The disputed domain name <banquecaceis.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2018. On July 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2018, 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 the Complainant on July 25, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 30, 2018.

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 the Respondent of the Complaint, and the proceedings commenced on July 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2018. Due to a clerical error, the Notification of Complaint was never sent to the privacy service used in connection with the registration of the disputed domain name. In light of this, and in an abundance of caution, noting the Respondent’s absence of a reply in this matter, the Center re-notified the Respondent of the Complaint via written notice delivered by courier, email and fax, allowing the Respondent a period of 10 days (until September 15, 2018), in which it could submit a response. The Respondent did not submit a response and, subsequently, on September 18, 2018, the Center notified the Parties that it would proceed to appoint the panel.

The Center appointed Torsten Bettinger as the sole panelist in this matter on October 2, 2018. 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 a banking group domiciled in Paris.

The Complainant states that its financial services are dedicated to institutional and corporate clients and that it offers its services through offices located in Europe, North America and Asia. The Complainant further states it is the “European leader in asset servicing and one of the major players worldwide”.

The Complainant further states, and provides evidence to support, that it is the owner of:

- European Union (EU) Reg. No. 4643573 CACEIS (Word mark) filed on September 21, 2005 and registered on February 26, 2008,
- EU Reg. No. 5770391 CACEIS INVESTOR SERVICES SOLID & INNOVATIVE (figurative mark) filed on March 20, 2007 and registered on February 26, 2008.

The disputed domain name was registered on May 30, 2018. The Complainant provided evidence that the Respondent used the disputed domain name for a website offering financial services, e.g., the opening of a bank account, credit card services and investments in certain assets, under the CACEIS trademark.

The Complainant sent an email to the Respondent on June 5, 2018 requesting the Respondent to immediately “close the website under the disputed domain name”. The Respondent did not respond to this email.

The Complainant requests that the disputed domain name be transferred to the Complainant.

5. Parties’ Contentions

A. Complainant

With regard to the requirement of identity or confusing similarity between the trademark and the domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant submits that the disputed domain name is confusingly similar to a trademark in which it has rights as it incorporates the Complainant’s CACEIS trademark in its entirety and only differs from the Complainant’s trademark by the addition of the descriptive term “banque”.

The Complainant further argues that the generic Top-Level Domain (gTLD) “.com” is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark.

With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:

- its research has provided no evidence that the Respondent has rights in the trademark or company name CACEIS;

- it has not permitted the Respondent to register the disputed domain name;

- the Respondent used the domain name in connection with the offering of financial services and that therefore there is no indication that the Respondent has the intention to make a legitimate noncommercial or fair use of the disputed domain name;

- the website available offers financial services under the Complainant’s trademark and company name CACEIS and therefore demonstrates that the Respondent’s sole interest in the domain name is “to take unfair advantage of the reputation of the CACEIS trademarks by luring consumers to its website”.

Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:

- the Respondent cannot reasonably claim that it was not aware of the existence of the Complainant and its trademarks as it provides services competing with those of the Complainant;

- the address indicated in the section “Contact” of the website available under the disputed domain name is identical to the Complainant’s address;

- various links available at the website under the disputed domain name redirect Internet user to the website of HSBC Holding plc. at “www.hsbc.co.uk” which is one of the Complainant’s competitors;

- parts of the Respondent’s website appear to be copies of HSBC Holding plc’s website;

- the Respondent uses the Complainant’s trademark and company name on the website available under the disputed domain name pretending that the Respondent’s site was a site of the Complainant;

- the Respondent deliberately used the disputed domain name for commercial gain to attract Internet users to the Respondent’s website based on a likelihood of confusion with the Complainant’s CACEIS marks.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In this case, the disputed domain name only differs from the Complainant’s trademark CACEIS by the addition of the dictionary term “banque” which is the French term for “bank”.

The addition of merely descriptive wording to a trademark in a domain name does not distinguish a domain name from a complainant’s trademark and does not avoid a finding of confusing similarity under the first element of the UDRP. (See, for instance, Facebook, Inc. v. Sleek Names, SL Names, VSAUDHA, WIPO Case No. D2015-0547 (“The disputed domain names contain as a first and/or dominant element the Complainant’s famous trademark FACEBOOK, combined with a variety of descriptive terms, for example, “account”, “password”, “hacker”, “analytics”, “survey” et cetera. The addition of these terms do not serve to distinguish the disputed domain names in any material way.”); see also, for instance, Dropbox, Inc. v. Mohd Shariq, Techinspire, WIPO Case No. D2016-1194 (“The domain name <dropbox-support-number.com> consists of the Complainant’s registered mark DROPBOX plus the generic words “support” and “number” separated by hyphens. The addition of these generic words and hyphens do not serve to distinguish the domain names from the Complainant’s DROPBOX marks and the Panel finds that the domain names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.”); see also section 1.9 of WIPO Overview 3.0).

Finally, it has been long established under the UDRP that the specific gTLD designation such as “.com”, “.net” and “.org” is typically not to be taken into account when assessing the issue of identity or confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).

For the foregoing reasons, the Panel concludes that the disputed domain name <banquecaceis.com> is confusingly similar to the Complainant’s trademark CACEIS in which the Complainant has exclusive rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy the Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Complainant has asserted that it never permitted the Respondent to use the Complainant’s CACEIS trademark, the Respondent has no trademark rights that correspond to the disputed domain name and the Respondent has not been commonly known by the disputed domain name.

Furthermore, the Complainant has provided evidence that the Respondent is using the disputed domain name to redirect Internet users to a website which offers financial services pretending to be the Complainant.

This is sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.

Given that the Respondent has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, the Panel concludes that the Complainant has also satisfied the second element set forth by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

Based on the record in this proceeding, the Panel is satisfied that the Complainant’s CACEIS mark is highly distinctive and well known in many countries in the world.

As the disputed domain name reproduces the Complainant’s trademark in its entirety with the mere addition of the dictionary term “banque” it is inconceivable that the Respondent did not have knowledge of the Complainant’s CACEIS trademark at the time of registration of the disputed domain name in 2018.

The Panel therefore concludes that, on the balance of probabilities, the Respondent has registered the disputed domain name with the purpose of deliberately causing confusion amongst Internet users in order to take unfair advantage of the Complainant’s goodwill and reputation.

The Complainant also provided evidence that the disputed domain name has been actively used by the Respondent to redirect Internet users to a website which offers financial services under the trademark and company name CACEIS. The address provided on the website is identical with the Complainant’s address.

This demonstrates that the Respondent attempted to trick and confuse the minds of Internet users that the Respondent’s site was a site of the Complainant. Internet users who were looking to use the goods and services of the Complainant’s were misled and deceived by the Respondent’s web page into believing that they were accessing a web page of the Complainant.

The Panel therefore concludes that the sole purpose of the registration and use of the disputed domain name is to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s CACEIS mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location as prohibited by paragraph 4(b)(iv) of the Policy. (See Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Fresh Intellectual Properties, Inc. v. Matt Braska, WIPO Case No. D2005-0096 and Nine West Development Corporation v. Registrant [1168318]/Moniker Privacy Services/Registrant [1260512]: Domain Administrator, WIPO Case No. D2008-0154; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 and Advance Magazine Publishers Inc. v. Pablo Palermao, WIPO Case No. D2008-0026 which confirm that bad faith is evidenced where a respondent uses virtually the same mark as a domain name and where a respondent attempts to trade on the goodwill associated with a mark in which the complainant has rights).

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 <banquecaceis.com> be transferred to the Complainant.

Torsten Bettinger
Sole Panelist
Date: October 16, 2018