WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crédit Lyonnais v. Association Etre Ensemble
Case No. D2000-1426
1. The Parties
The Complainant is Crédit Lyonnais, a French limited liability company , registered Siren 954 509 741, 19 Boulevard des Italiens 75002 Paris, France. The Complainant’s representative is Novamark, 122 rue Edouard Vaillant, 92593, Levallois-Perret, France.The counsel in charge of the file is Mr. Gilles Escudier.
The Respondent, current owner of the domain name at issue, according to a whois search dated September 27, 2000, is Association Etre Ensemble, BP 1, 37150 Chisseaux, France, whose administrative contact is Mr. Bremard. No representative has acted on behalf of the Respondent in this administrative proceeding.
2. The Domain Name and Registrar
The dispute concerns the domain name <e-creditlyonnais.com>. The Registrar with which the domain name is registered is Easyspace Ltd, International Administration Center, Rosemount House, Rosemount Avenue-West Byfleet, Surrey KT14 6LB, United Kingdom.
3. Procedural History
A Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on October 19 and October 20, 2000, respectively in electronic format and in hardcopy .
On October 24, 2000, the acknowledgement of receipt of the Complaint and a request for Registrar verification were sent. The answer to that request was received from Easyspace Ltd on October 26, 2000.
On October 27, 2000, the notification of the Complaint took place and the administrative proceeding began .The compliance with the formal requirements of the Policy, Rules and Supplemental Rules has been checked. The payment in the required amount to the Center has been made by the Complainant.
The Respondent should have sent his response before November 15, 2000 but the Center did not receive any response within this time limit.
On November 20, 2000, the notification of Respondent Default was sent by e-mail.
The sole Panelist accepted his appointment on November 24, 2000, and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
On December 6, 2000, the sole Panelist received from the Center the hard copy of the file.
This dispute is within the scope of the Policy and the Administrative Panel and has jurisdiction to decide the dispute. The registration agreement pursuant to which the domain name was registered incorporates the Policy. The domain name was registered on March 27, 2000.
As the language of the domain name registration agreement is the English language and as the Complainant has filed its complaint in English, the proceeding will be conducted in English, pursuant to paragraph 11 (a) of the Rules.
The decision is issued within the time-limit fixed by December 7, 2000.
4. Factual Background
The following facts have not been contested:
(a) The Complainant has rights on the following trademarks:
CREDIT LYONNAIS GLOBAL TREASURY CLGT, n° 606 493, filed on September 9, 1993 and registered in classes 16, 35, 36.
CREDIT LYONNAIS AVANTAGES, n° 708 666 , filed on February 4, 1999 and registered in classes 35, 36.
CREDIT LYONNAIS EUROFACTORS, n° 588 160, filed on July 21, 1992 and registered in classes 16, 35, 36.
French trademarks including the terms CREDIT LYONNAIS and registered in classes 9, 16, 35, 36 and 41:
CREDIT LYONNAIS CL n° 92 422 843 filed on June 16, 1992
CL CREDIT LYONNAIS n° 93 484 980 filed on September 24, 1993
CREDIT LYONNAIS GLOBAL TREASURY CLGT n° 93 460 067 filed on March 18, 1993
RADIOSCOPIE DU CREDIT LYONNAIS n° 1 672 611 filed on June 1991
PRÊT PARTENAIRE CREDIT LYONNAIS n° 1 230 327 filed on March 15, 1983, renewed on March 12, 1993
LE NET CREDIT LYONNAIS n° 92 448 194 filed on December 30, 1992
CREDIT LYONNAIS AVANTAGES n° 98 746 916 filed on August 20, 1998
CREDIT LYONNAIS EVOLUTION n° 93 474 410 filed on June 30, 1993
CREDIT LYONNAIS EUROPEAN INDEX n° 1 629 255, filed on November 23, 1990
CREDIT LYONNAIS EUROFACTORS n° 92 403 660 filed on January 31, 1992
CREDIT LYONNAIS CONVERTIBLE FUNDS n° 1 633 583 filed on December 18, 1990
CREDIT LYONNAIS A L’ECOUTE VOTRE BANQUE SANS VOUS DEPLACER n° 97 703 V125 filed on November 6, 1997
CREDIT LYONNAIS ACCESS n° 97 693 311 filed on September 1, 1997
The goods and services distinguished by the trademarks above are mainly "banking and financial services" ( class 36) and related goods and services such as "credit cards" (class 9), "prospectuses" (class 16) or "advertisement and commercial management" (class 35).
Moreover the Complainant is the owner of the following French trademarks , covering, among other services, those of class 38: "news agencies, radio broadcasting, communications by telegrams or by phone, message sending, telegrams sending, teleprinting":
CLEOS CREDIT LYONNAIS ON LINE SERVICES n° 92 433 222, filed on September 9, 1992
CLEOS CREDIT LYONNAIS EUROPEAN ON LINE SERVICES n° 93 465 724, filed on April 26, 1993.
Besides, the Complainant is the holder of the domain name: "creditlyonnais.fr".
(b) The Respondent registered on March 27, 2000, the domain name: "e-creditlyonnais.com".
5. Parties’ Contentions
Complainant states in its own words:
The contested domain name is confusingly similar to the trademarks of the complainant as it reproduces the main distinctive elements of these marks which are the words "crédit lyonnais". These elements are protectable in themselves, independently from the whole to which they belong due to the fact that they are separable from the other elements, distinctive for the products and services covered, capable of exercising all or part of the distinctive and attractive function of the marks. Therefore, their reproduction for identical services such as services of class 38 ( communications services) constitutes an infringement of the prior marks of the Complainant to its detriment, in the sense of articles L.716-1, L. 713-3 of the french trademark law. The Complainant points out that the trademark "credit lyonnais" , which is also the name of the Complainant, is a well-known mark in the field of banking and services related to banking and financial affairs, not only in France but internationally. Thus, the Respondent could not ignore the existence of the Complainant and of its trademarks as the Respondent is a French association; and the use of the trademark "credit lyonnais" for other products or services engages the civil liability of the Respondent according to article L.713-5 of the french trademark law.
The Respondent has no rights on the domain name, nor interest to this domain name as it does not correspond to its corporate name and that the Respondent does not own a corresponding trademark , at least to the knowledge of the Complainant.
The domain name has been registered in bad faith. The Complainant states that when it noticed the existence of the domain name at issue, it contacted through its representative Mr. Dominique Bremard, who was at that time the owner of the domain name, by registered letter with acknowledgement of receipt, to warn him that his registration of the domain name "e-creditlyonnais.com" constituted an infringement of the marks of the Complainant and to ask Mr. Bremard to transfer the ownership of the contested domain name to the Complainant. M. Bremard informed by a phone call the representative of the Complainant that he agreed to transfer the domain name and was waiting for a draft of assignment that could be sent at his e-mail address. The Complainant sent the assignment draft by mail and e-mail. After a few reminders, Mr.Bremard answered by e-mail to indicate that the assignment draft should be modified in order to mention the Association Etre Ensemble as the actual owner of the domain name at issue and to give the reasons that had led him to register the domain name, i. e. to draw the attention of the major industrial and financial groups and to interest them to the situation of the excluded children in Romania. In the message Mr. Bremard mentioned that he would appreciate that the Crédit Lyonnais support his cause and that he would agree to the transfer of the domain name whatever the answer of the Crédit Lyonnais would be. Then the Complainant tried to get more information from Mr. Bremard concerning the actual holder and wrote that Credit Lyonnais will not provide any kind of help as long as the dispute would not be settled. Mr. Bremard and the Association Etre Ensemble did not react any more and kept silent. The complainant concludes that it is obvious that Mr. Bremard and the Association Etre Ensemble have registered the contested domain name only in order to try to obtain financial support or help from the Complainant, beyond the costs directly related to the domain name, and that when they have realized that they will not get anything, they have simply stopped all contacts with the Complainant’s representative, despite their repeated affirmations concerning to which they were absolutely ready to transfer the domain name to the Complainant. The latter adds that neither Mr. Bremard nor the Association Etre Ensemble have any active site under the domain name at issue and states that in the light of administrative panel Decisions of the Center, D2000- 0003 and 0055, the passive holding in relation to a domain registration can, in certain circumstances, constitute a domain name used in bad faith.
The Respondent did not filed any Response to the Complaint and was notified of its default on November 20, 2000 without any later reaction.
6. Discussion and Findings
Paragraph 15 (a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it seems applicable".
Paragraph 4 (a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(ii) that the respondent has no rights or no legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and used in bad faith.
1. Identity or similarity
The prior trademarks of the Complainant in their distinctive part – "Credit Lyonnais"-, are identical to the domain name "e-creditlyonnais.com" of the Respondent, as the addition of letter "e-", rather trite in the internet world, would not affect the attractive power of the words "credit lyonnais". Furthermore, the difference in the top level domain name and the visual difference of "credit lyonnais" and "creditlyonnais"- the pronunciation of which being the same- neither have relevance in this regard.
In addition, some of the trademarks of the Complainant have been filed to design services in class 38 and it cannot be contested that domain names are intended for communication activities. On that ground the registration of the domain name at issue could be considered as an infringement of the above French trademarks n° 92 433 222 and 93 465 724.
Moreover, the Complainant has been using the "credit lyonnais" mark for several decades in the area of banking services and it can be said that "credit lyonnais" is a well-known mark which could be protected according to article L. 713-5 of the French Intellectual Property Code
Thus,the domain name "e-creditlyonnais.com" generates confusion with the marks of the Complainant.
2. Rights or legitimate interests of the Respondent in respect of the domain name.
The registrant of the domain name at issue has not filed any Response to the Complaint and then has not alleged any facts or elements to justify prior rights or legitimate interest in the said domain name.
Nevertheless, before the beginning of the present administrative proceeding, after a few reminders sent by the Complainant, Mr. Bremard, on behalf of the Association Etre Ensemble, answered by e-mail, dated June 27, 2000, to the Complainant’s representative: "We have noted the interest, and the impatience, manifested by Crédit Lyonnais for the domain name "e-creditlyonnais.com" to be transferred to it. The only motivation which induced us to reserve this domain name, along with others, was simply to activate an alarm signal, and draw the attention of large industrial and financial groups to the problem of excluded children in Romania (…)".
The Panel finds that the content of this answer reveals and recognizes clearly that Mr. Bremard and the Association Vivre Ensemble were quite aware that they were not entitled to register the said domain name. Thus the Panel concludes that the Respondent had no rights or legitimate interests, - within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy- to register a domain name consisting of the well known trademark of a third party, whatever the charitable and altruistic intent of the registrant could be.
3. Registration and use in bad faith
The Policy (para.4(b)), indicates that certain circumstances may , "in particular but without limitation", be evidence of bad faith. Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "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 (…)for valuable consideration in excess of (respondent’s) documented out-of-pocket costs directly related to the domain name"; (2) that a respondent has registered the domain name " in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that (the respondent has) engaged in a pattern of such conduct (…).
In his e-mail dated June 27, 2000 to the Complainant’s representative, Mr. Bremard wrote: "The only motivation which induced us to reserve this domain name, along with others, was very simply to activate an alarm signal (on the problem of excluded children in Romania)(…).Naturally, we should like Crédit Lyonais to be able to lend its support to this cause. Lastly, we shall not in any case oppose the transfer of this domain name to Crédit Lyonnais, whatever the content of Crédit Lyonnais ‘ reply to this letter".
On June 28, 2000, the Complainant’s representative answered by e-mail to Mr. Bremard: "However, without prejudging our client’s reaction, it is obvious to us that the latter will undoubtedly be disinclined to take an interest in your cause or to support it until the dispute against you has been settled. We therefore ask you once again to send us urgently the three copies of the tranfer contract, duly signed, failing which our client would be forced to take more energetic measures".
The Respondent kept silent.
In spite of the reminders sent by e-mail and registered letter, dated June 29, July 5, and July 11, 2000, the Respondent did not react any more.
In the light of the facts above, the Panel finds that the Respondent has registered the domain name at issue only to try to obtain from the Complainant money or support in excess of the costs directly related to the domain name registration, even if the Respondent has written that it will not oppose the transfer in any case, what it did actually.
The Panel finds also that the Respondent, notwithstanding its generous motives, has registered the domain name at issue to prevent, in fact, the Complainant from reflecting its trademarks in a corresponding domain name and that the Respondent has previously engaged in a pattern of such conduct, by the own admission of the Respondent in its e-mail of June 27, 2000( "along with others…").
Thus the Panel concludes that the domain name was registered in bad faith.
Besides, the Panel considers, according to previous Decisions of he Center , that the notion of "use in bad faith" must not be limited to positive actions and that the passive holding in relation to a domain name registration can, in certain circumstances, constitute use of a domain name in bad faith (see D2000-0003, D2000-0055, D2000-0098). Although there is no active website corresponding to the domain name at issue, the Panel finds that the Respondent’s proposal to transfer to the Complainant the domain name "e-creditlyonnais.com" with a parallel request for support to a generous cause and the silence kept later on by the Respondent after the e-mail of the Complainant’s representative, dated June 28, 2000, constitute the use in bad faith of the said domain name.
For the above reasons, the Panel decides as follows:
Based on its finding that the Respondent in default, Association Etre Ensemble, has engaged in abusive registration of the domain name "e-creditlyonnais.com" within the meaning of paragraph 4 (a) of the Policy, the Panel orders that the domain name "e-creditlyonnais.com" be transferred to the Complainant, Crédit Lyonnais.
Christian Le Stanc
Dated: December 7, 2000