The Complainant is Confederation Nationale Du Credit Mutuel, France, represented by MEYER & Partenaires, France.
The Respondent is WhoisGuard, Inc., Panama / Florentin Agbe, Colossale Inc, Benin.
The disputed domain name <creditmutuel-services.online> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2019. On December 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 December 11, 2019, 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 December 13, 2019.
The Center verified that the Complaint together with the amendment to the Complaint/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 December 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2020.
The Center appointed Jane Lambert as the sole panelist in this matter on January 22, 2020. 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.
The Complainant is an entity known in France as an “association” which was formed under French law. It is the central body of a group of regional financial institutions that collectively provide banking, insurance and other financial services to 12 million customers through its 3,178 branches in France and online. It is the second largest financial services institution in France and one of the largest in the world.
The Complainant has registered a large number of trade marks for financial services around the world. Those registrations include the mark CRÉDIT MUTUEL which was registered with the European Union Intellectual Property Office on October 20, 2011 for a variety of goods and services in classes 9, 16, 35, 36, 38, 41, 42, and 45 under trade mark number 9943135 (“EUTM”).
The first named Respondent is the name of a privacy protection service. All that is known of the second named Respondent is that he resides in Benin. He had already registered the domain name <creditmutuelbank.online> which was the subject of a previous UDRP proceeding.
The disputed domain name was registered on August 13, 2019 and resolves to a webpage with pay-per-click links.
The Complainant claims the transfer of the disputed domain name on the grounds that:
- it is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- neither Respondent has rights or legitimate interests in the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith.
As to the first ground, the Complainant refers to several of its trade mark registrations including the above-mentioned mark with registration number 9943135. It also refers to its domain name registrations and its success in other domain name disputes in which its reputation has been acknowledged. The Complainant points out that the disputed domain name incorporates its trade mark CRÉDIT MUTUEL in its entirety together with the word “services” and the generic Top-Level Domain (“gTLD”) suffix “.online” which aggravate rather than mitigate the possibility of confusion.
As to the second, the Complainant states that the Respondent is not known by the disputed domain name to the best of the Complainant’s knowledge and belief and is neither licensed nor otherwise entitled to use the same. The Complainant relies on other domain name dispute decisions under the Policy in which it has been held in similar circumstances that the Respondent has no rights or legitimate interests in the disputed domain name.
As to the third ground, the Complainant contends that the scale of its business activities are such that it is inconceivable that the Respondent had not heard of it or could reasonably have believed that he was entitled to register a domain name that incorporates its trade mark and trade name in their entirety. It refers to other domain name decisions under the Policy in which the registration of a domain name that incorporated its own or similarly well-known trade marks had been held to be an act of bad faith.
Further or alternatively, the Complainant relies on UDRP decisions in which the use of a privacy service to evade liability or delay domain name dispute resolution proceedings have been held to be acts of bad faith.
Further or in the further alternative, the Complainant contends that the registration of <creditmutuelbank.online> constitutes a “pattern of such conduct” within the meaning of paragraph 4(b)(ii) of the Policy and that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its trade mark in a corresponding domain name.
Still further or in the further alternative, the Complainant notes that the disputed domain name has been used as the URL for a pay-per-click page on the Registrar’s website. The Complainant alleges that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website.
The Respondent did not reply to the Complainant’s contentions.
The Respondent’s agreement with the Registrar for the registration of the disputed domain name incorporated by reference the following provision of the Policy:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
In the above context, the pronoun “you” refers to the Respondent.
The Panel is satisfied that the first element is present.
The disputed domain name incorporates EUTM number 9943135 in its entirety together with the noun “services” and the gTLD suffix “.online”. It is therefore confusingly similar to a trade mark in which the Complainant has rights.
The Panel is satisfied that the second element is present.
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant avers:
“To the [C]omplainant’s best knowledge:
- the Respondent is not related in any way to the Complainant’s business;
- he is not one of its agents and does not carry out any activity for, or has any business with it;
- the Respondent is not currently and has never been known under the wordings ‘[Credit Mutuel]’ or ‘[Credit Mutuel Services]’;
- no license or authorization has been granted to the Respondent to make any use or apply for registration of the disputed domain name.”
As the Complainant is the second largest financial institution in France and one of the biggest in the world with trade mark registrations in many parts of the world, it is hard to see how anyone who is not related to or licensed or authorized by the Complainant could use the mark CRÉDIT MUTUEL anywhere in the world without risking an action for passing off (or an equivalent cause of action such as “concurrence déloyale”), trade mark infringement or similar proceedings.
The Panel is therefore persuaded that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus passes to the Respondent who offers no justification for his use of the disputed domain name. Of course, that is not conclusive because UDRP panels must weigh all available evidence irrespective of whether a response is filed. There are a number of circumstances in paragraph 4(c) of the Policy that might indicate a right or legitimate interest in the disputed domain name and there have been found to be others of a similar nature. However, nothing in the Complaint or in any of the materials annexed to the Complaint suggests that is the case here. Accordingly, the Complainant must be deemed to have discharged the second probandum.
The Panel is satisfied that the third element is present.
Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is as follows:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s EUTM. It follows that the Respondent has created a likelihood of confusion with that mark. According to the photograph appended to the Complaint as Annex F1 the Respondent has used the disputed domain name as the URL for a page with pay-per-click links to other websites. It follows that by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain Internet users to that page by creating a likelihood of confusion with the Complainant’s mark. On the strength of that evidence, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
That is enough to dispose of the Complaint but the Panel’s conclusion is strengthened by the Complainant’s other allegations, in particular, the Respondent’s registration of <creditmutuelbank.online>.
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 <creditmutuel-services.online> be transferred to the Complainant.
Date: February 3, 2020
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