WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Confédération Nationale du Crédit Mutuel v. Contact Privacy Inc. Customer: 1245103419 / 1245103424 / 1245103432 / 1245103431 / Jasmin Kozan, Infosoon
Case No. D2019-2167
1. The Parties
The Complainant is Confédération Nationale du Crédit Mutuel, France, represented by MEYER & Partenaires, France.
The Respondent is Contact Privacy Inc. Customer: 1245103419 / 1245103424 / 1245103432 / 1245103431, Canada / Jasmin Kozan, Infosoon, France.
2. The Domain Names and Registrar
The disputed domain names <compte-creditmutuel.com>, <compte-creditmutuel.net>,
<creditmutuel-compte.com> and <creditmutuel-compte.net> are registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2019. On September 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 6, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 10, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On that same day, the Center sent an email communication to the parties in English and French indicating the Complaint was filed in English while the language of the registration agreement is French, and inviting them to submit their comments as to the language of the proceeding. The Complainant requested English to be the language of proceeding. The Complainant filed an amended Complaint on September 13, 2019. The Respondent did not submit any comments on the language of proceeding.
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 September 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2019.
The Center appointed Emmanuelle Ragot as the sole panelist in this matter on October 10, 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
The Complainant is one of the best known French banking and insurance services group.
The Complainant offers its services under the CREDIT MUTUEL trademarks worldwide and has acquired with its subsidiaries and related companies a number of registrations of the CREDIT MUTUEL trademarks in relation to financial services internationally (the “CREDIT MUTUEL Marks”).
For more than a century, the Complainant and its network of 3,178 offices in France, have also promoted off and online services provided under the CREDIT MUTUEL Marks on the Internet website “www.creditmutuel.com”; “www.creditmutuel.fr”; “www.creditmutuel.info”; “www.creditmutuel.org”; “www.creditmutuel.net” all of them registered prior to the disputed domain names.
The Complainant is the registered proprietor of inter alia the following trademark registrations and applications for CREDIT MUTUEL and trademarks incorporating CREDIT MUTUEL for a wide range of financial services and related services, all of which pre-date registration of the disputed domain names.
- CREDIT MUTUEL: French semi figurative trademark registration n° 1475940 registered on July 8, 1988 in classes 35 and 36 renewed in 2018;
- CREDIT MUTUEL: French semi figurative trademark registration n° 1646012 registered on November 20, 1990 in classes 16, 35, 36, 38 and 41 renewed in 2010;
- CREDIT MUTUEL: nominative European Union trademark registration n° 9943135 registered on October 20, 2011 in classes 9, 16, 35, 36, 38, 41, 42, 45;
- CREDIT MUTUEL: semi figurative International trademark registration n° 570182 of May 17, 1991 in classes 1§, 35, 36, 38 and 41 designating Benelux, Italy and Portugal, among others, renewed in 2011.
The trademark CREDIT MUTUEL has been recognized as wellknown by previous UDRP cases, inter alia in Confederation Nationale du Crédit Mutuel v. Philippe Marie,
WIPO Case No. D2010-1513.
The disputed domain names <compte-creditmutuel.com>, <compte-creditmutuel.net>,
<creditmutuel-compte.com> and <creditmutuel-compte.net> were registered on July 21, 2019. The disputed domain name <compte-creditmutuel.com> used to resolve to a copycat website, reproducing the CREDIT MUTUEL Marks, and is currently inactive. The other disputed domain names do not resolve to active websites.
5. Parties’ Contentions
A. Complainant
In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below:
The Complainant contends that the disputed domain names should be transferred to the Complainant because:
1) The disputed domain names are identical and confusingly similar to the CREDIT MUTUEL Marks, the Complainant’s trademarks in which the Complainant has rights. The only distinctive elements within the disputed domain names are the word “credit mutuel”, which are clearly recognizable within the disputed domain names. The additional element in the disputed domain names are the descriptive words, “compte” which refer to the Complainant’s activities. These additional elements therefore do not serve to distinguish the disputed domain names from the Complainant’s CREDIT MUTUEL marks. Rather, if anything, it serves to reinforce the idea that there are connections between the Complainant and the disputed domain names since they obviously are words that are related to the Complainant’s business.
At last, the mere addition of the generic Top-Level Domain (“gTLD”) “.com” and “.net” are not sufficient to distinguish these disputed domain names from the Complainant’s trademarks.
2) The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant insists that it has not authorized or permitted the Respondent to use its CREDIT MUTUEL Marks. The Respondent is not commonly known by the disputed domain names, and is not using the disputed domain names or names corresponding to them in connection with a bona fide offering of goods or services.
Nor is the Respondent is making any legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain and misleading and diverting consumers or tarnishing the Complainant’s trademarks.
3) The disputed domain names were registered and have been used in bad faith. Taking the reputation of the CREDIT MUTUEL Marks into account, the Respondent was clearly aware of the Complainant and the Complainant’s CREDIT MUTUEL Marks when it registered the disputed domain names. The disputed domain names must have been understood as denoting a website of the Complainant or of a business that is in some way affiliated with the Complainant or with its subsidiaries or related companies. The Respondent has been making this unauthorized use of the Complainant’s CREDIT MUTUEL Marks.
As a consequence, the average Internet users encountering the disputed domain names were likely to assume that they were directed to websites that were connected to the Complainant. This constitutes fraud and phishing activity with the intent to divert Internet users looking for the Complainant and to deceive them into divulging private information for the Respondent’s commercial gain. In all circumstances, it is clear that creating a likelihood of confusion with the Complaint’s CREDIT MUTUEL Marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, which appear to have been used as phishing site capitalizing on the Complainant’s business.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The Complaint was filed in English and the Registrar notified the Center that the language of the registration agreement was French. In view of the arguments submitted by the Complainant, the absence of objections and a Response by the Respondent, the Panel decides in accordance with paragraph 11(a) of the Rules that the language of the proceedings shall be English.
6.2 Substantive Issues
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain names, the Complainant must prove each of the following, namely that:
(i) the disputed domain names are identical or confusingly similar to a trade marl or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules.
A. Identical or Confusingly Similar
The Complainant has asserted that the dominant and distinctive element in the disputed domain names is the registered trademark CREDIT MUTUEL, and the addition of the terms “compte” and the gTLD “.net” and “.com” are not sufficient to distinguish the disputed domain names from the trademark CREDIT MUTUEL.
The term “compte” does nothing to prevent the confusing similarity of the disputed domain names and the Complainant’s CREDIT MUTUEL Marks.
The addition of a descriptive word to the Complainant’s trademark does not prevent a finding of confusing similarity.
In conclusion, the Panel finds that the Complainant has provided evidence to support a finding that the disputed domain names are confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Respondent did not answer to the Complaint. Consequently, it did not provide any evidence or allege any circumstances to establish that it has rights or legitimate interests in the disputed domain names.
The Complainant began trading over a century ago and has invested substantially in advertising and promoting its services under the various European Union registered CREDIT MUTUEL Marks. The marks are wellknown as regularly appeared in print media circulated throughout Europe and internationally.
The Complainant has not authorized or permitted the Respondent to use its CREDIT MUTUEL Marks. Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain names. The Respondent is not using the disputed domain names or a name corresponding to them in connection with a bona fide offering of goods or services. Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s CREDIT MUTUEL marks.
The Respondent is making unauthorized use of the Complainant’s CREDIT MUTUEL trademarks. The Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s CREDIT MUTUEL Marks. In the absence of any license or permission from the Complainant to use its trademarks, no actual or contemplated bona fide or legitimate use of the disputed domain names could reasonably be claimed.
In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain names, which the Respondent has not rebutted. The condition of paragraph 4(a)(ii) of the Policy has therefore been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, it found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the 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.
Given the wellknown character of the Complainant’s trademarks, the Panel finds that the Respondent could not ignore the Complainant’s trademarks when it registered the disputed domain names.
Considering the above circumstances, the <compte-creditmutuel.com> disputed domain name was used to offer similar services under the Complainant’s trademark. Based on the notoriety of the Complainant’s trademark and the Respondent’s use of CREDIT MUTUEL trademark throughout the website, it is more than likely that the Respondent had the Complainant in mind when it registered the disputed domain names. Furthermore, by using the CREDIT MUTUEL trademarks without consent, the Respondent is intentionally attempting to attract for commercial gain, Internet users to its website by creating a likelihood of confusion between its website and services and the Complainant’s mark. The inactivity of the other disputed domain names does not change the Panel’s finding.
The Panel considers that the disputed domain names were registered and are being used in bad faith.
Accordingly, the Complainant has satisfied the third element of the UDRP.
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 names <compte-creditmutuel.com>, <compte-creditmutuel.net>, <creditmutuel-compte.com> and <creditmutuel-compte.net> be transferred to the Complainant.
Emmanuelle Ragot
Sole Panelist
Date: October 24, 2019
