WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banque Fédérale du Crédit Mutuel v. Nadi Eldo

Case No. D2019-0976

1. The Parties

Complainant is Banque Fédérale du Crédit Mutuel, France, represented by MEYER & Partenaires, France.

Respondent is Nadi Eldo, France.

2. The Domain Name and Registrar

The disputed domain name <targobank.immo> are registered with Key-Systems GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2019. On April 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2019, 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 Complainant on May 2, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 6, 2019.

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 Respondent of the Complaint, and the proceedings commenced on May 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 31, 2019.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on June 6, 2019. 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

Complainant is Banque Fédérale du Crédit Mutuel (BFCM), the main banking group within Crédit Mutuel. The group is made up of 11 federations of Crédit Mutuel and their affiliated banks. BFCM is the holding company of the group acting as the central treasury and undertakes capital and money market activities on behalf of the Group.

Complainant owns several trademarks including the word “Targo Bank” (e.g., international trademark No.1013173 registered on July 22, 2009, and the European Union trademark in No.8285579 registered on April 14, 2009, duly renewed).

Complainant currently operates its activities with the domain name <targobank.de>.

Respondent registered the disputed domain name <targobank.immo> on March 14, 2019. The disputed domain name redirects to an inactive website and is attached to email servers.

5. Parties’ Contentions

A. Complainant

Complainant argues that the disputed domain name <targobank.immo> is confusingly similar to its TARGO BANK trademark. Complainant states that it is the registered owner of a large number of trademarks consisting in or including the wording “Targo Bank” in France or abroad. Complainant is also the owner of several domain names including the wording “Targo Bank” redirecting to Complainant’s web portal.

Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant asserts that Respondent is not related in any way to Complainant’s business. Complainant further states that Complainant has granted no license or authorization to the Respondent to make any use, or apply for registration of the disputed domain name.

Complainant claims that the disputed domain name was registered and is used in bad faith. Complainant argues that its trademark TARGO BANK is well known and that it is difficult to imagine that Respondent could have ignored its trademark TARGO BANK at the time it applied for the disputed domain name. Moreover, the disputed domain name is inactive and email servers are attached to the disputed domain name, which indicates that Respondent is likely to engage in efforts to operate a phishing scheme. Complainant argues that all these circumstances support the idea that Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules provides that “[a] Panel shall 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”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.

Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favour of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Taking the foregoing provisions into consideration the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. See section 1.7 of the WIPO Overview 3.0.

Complainant has shown rights over the following trademarks:

- The international trademark TARGO BANK No. 1013173 registered on July 22, 2009, in classes 16, 35, 36, and 38.
- The European Union trademark TARGO X BANK No. 8285579 registered on April 14, 2009, in classes 16, 35, 36, and 38, duly renewed.

Moreover, Complainant is also the owner of several domain names including the word “Targo Bank” that redirect towards Complainant’s web portal including:

- <targobank.com>, registered on January 26, 2009, and duly renewed
- <targobank.net> registered on January 26, 2009, and duly renewed
- <targobank.org> registered on March 31, 2009, and duly renewed
- <targobank.de> registered on March 31, 2009, and duly renewed

In addition, the trademark TARGO BANK has been considered as being well known by several previous UDRP panels (Citibank Privatkunden AG& Co. KGaA v. Janice Liburd / Moniker Privacy Services, WIPO Case No. D2011-0559).

The Panel notes that Complainant has shown relevant rights over the trademark TARGO BANK.

The Panel notes that the trademark TARGO BANK is entirely and exclusively reproduced in the disputed domain name. Furthermore, the generic Top-Level Domain (“gTLD”) is generally disregarded under the identical or confusing similarity test, as it is a functional element. See section 1.11 of the WIPO Overview 3.0. Thus, the Panel notes that “.immo” should not be taken into account when comparing the disputed domain name with the claimed trademarks as they are only a technical and necessary part of the domain name with no distinguishing feature nor legal significance (See Figaro Classifieds v. Bernard Elkeslassy, WIPO Case No. D2016-2234).

Therefore, the Panel finds that the disputed domain name <targobank.immo> is identical to Complainant’s trademarks.

Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name.

Complainant is required to establish a prima facie case that respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

Complainant states that Respondent is not related in any way to Complainant’s business. Complainant further asserts that it has granted no licence or authorization to Respondent to make any use, or apply for registration of the disputed domain name.

The Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights to or legitimate interest in the disputed domain name.

Moreover, the Panel finds that Respondent’s lack of rights or legitimate interests in the disputed domain name can be inferred in the circumstances of this case from Respondent’s failure to respond to Complainant’s contentions. (See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493: “non‑response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”). Moreover, the disputed domain name is not activating any website. The Panel notes that the disputed domain name being unused, Respondent cannot claim a bona fide offering of goods or services.

The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.

Complainant argues that due to the reputation of its trademark TARGO BANK, it is difficult to imagine that Respondent could have ignored the trademark TARGO BANK at the time it registered the disputed domain name <targobank.immo>.

Complainant further argues that the disputed domain name is currently inactive. Previous UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith. See WIPO Overview 3.0, section 3.3. A principle widely adopted by panels has been to examine all the surrounding circumstances in which a disputed domain name may appear to be, or is claimed to be, held passively without any evident usage or purpose (Cleveland Browns Football Company LLC v. Andrea Denise Dinoia, WIPO Case No. D2011-0421).

The Panel notes that reproducing well known trademarks such as TARGO BANK in a domain name in order to attract Internet users to an inactive website cannot be regarded as use in good faith. In addition, the disputed domain name is associated to email servers which suggest that Respondent intends to engage in a phishing scheme. Previous UDRP panels have held that such action is consistent with bad faith registration and use of the disputed domain name (See Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records,WIPO Case No. D2017-2533).

The Panel therefore finds that the circumstances of this case strongly suggest that Respondent has both registered and used the disputed domain name in bad faith.

Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.

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, <targobank.immo>, be transferred to Complainant.

Nathalie Dreyfus
Sole Panelist
Date: June 17, 2019