WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Confederation Nationale du Credit Mutuel v. Design Galaxy
Case No. D2006-1419
1. The Parties
The Complainant is Confederation Nationale du Credit Mutuel, Paris, France represented by MEYER & Partenaires, France.
The Respondent is Design Galaxy, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <creditmutuellefrance.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2006. On November 9, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On November 9, 2006, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for the Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for a Response was December 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2006.
The Center appointed Jon Lang as the sole panelist in this matter on January 22, 2007. 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 the second largest banking and insurance services group in France consisting of a network of 3,100 offices in France managed through 18 regional banks. The Complainant’s interests in the financial services sector are many and include the development of solutions for on-line banking services. The Complainant operates a web portal at “www.creditmutuel.com” dedicated to its products and services and providing information to the public. The Complainant has a considerable reputation in the field of banking and insurance.
The Complainant is the registered owner of a large number of trademarks consisting of or including the words ‘CREDIT MUTUEL’, in France and elsewhere. For instance, the Complainant is the registered owner of ‘CREDIT MUTUEL’ a French semi-figurative mark (trademark No.: 1475940) in classes 35 and 36 of the Nice Agreement, of ‘CREDIT MUTUEL’ a French semi-figurative mark (trademark No.: 1646012) in classes 16,35,36,38 (internet services) and 41 of the Nice Agreement and ‘CREDIT MUTUEL’ a semi-figurative international mark (trademark No: 570 182) in classes 16,35,36,38 and 41 of the Nice Agreement designating Benelux, Italy and Portugal.
In February 2006, the Complainant found out that the Respondent, on February 11, 2006, had registered the domain name in dispute, <creditmutuellefrance.com>. In response, the Complainant, through its trademark attorneys sent a ‘cease and desist’ letter by mail and e-mail requesting the transfer, to it, of the domain name in dispute. The letter could not be delivered and the e-mail sent to the address listed in the WHOIS database (which is the same address listed in the contact details provided by the registrar) met with an error message. The Complainant therefore decided to commence these proceedings. It appears that the Center was also unable to successfully e-mail the Respondent (with the Complaint), either at the address given by the registrar or at email@example.com. However, having examined the record, the Panel is satisfied that all reasonable steps were taken by the Center to notify the Complaint in accordance with paragraphs 2(a) and 4 of the Rules. The Respondent has not taken any part in these proceedings.
5. Parties’ Contentions
The Complainant claims that the domain name in issue, <creditmutuellefrance.com> is confusingly similar to its trademark, ‘CREDIT MUTUEL’ in that
(a) the domain name entirely re-produces the trademark, that the addition of the letters ‘LE’ do nothing to counter the confusing auditory similarity of ‘CREDITMUTUEL’ and ‘CREDITMUTUELLE’, or the similarity in meaning and appearance;
(b) the incorporation of the word ‘FRANCE’, which is where the Complainant’s main business is based in fact suggests a reference to the Complainant, and that the addition of the letters ‘LE’ and the word ‘FRANCE’ do nothing to eliminate the risk of confusion of the domain name with the Complainant’s trademark, the only distinctive part of the domain name.
The Complainant also claims that the Respondent has no rights or legitimate interests in the domain name in that
(a) the Respondent is not associated in any way with the Complainant’s business;
(b) the Respondent is not and has never been known as CREDIT MUTUEL, or ‘CREDITMUTUELLE’ or either name with the addition of the word FRANCE;
(c) No licence or authorisation has been given by the Complainant to the Respondent to apply for or use the domain name in dispute
(d) The Respondent has not engaged in any conduct indicative of a right or legitimate interest in the domain name and, given its failure to respond to the cease and desist letter referred to earlier, has in fact taken action which suggests that it has no right or legitimate interests in the disputed domain name.
Finally, the Complainant claims that the Respondent registered and used the domain name in bad faith in that
(a) it is difficult to see how the Respondent could have ignored the Complainant’s trademark at the time of registering the domain name, and indeed wanted to refer to it;
(b) the words CREDIT MUTUEL is only used in the French language and not in the English Language, the ‘equivalent’ in the English language being MUTUAL CREDIT;
(c) the combination of ‘FRANCE’ with the Complainant’s trademark (albeit with the letters ‘LE’ added) refers to the Complainant’s main business area;
(d) that the Respondent registered the domain name to lead consumers into a likelihood of confusion, the risk of confusion being reinforced by the misspelling of the Complainant’s trademark;
(e) the Respondent’s postal and e-mail addresses in the WHOIS database appear to be of no benefit to those trying to correspond with the Respondent – the cease and desist letter sent by mail could not be delivered and an e-mail met with an error message;
(f) the Respondent uses the disputed domain name to divert internet users to an error webpage provided by Maroc Data, a web hosting provider which is not related to the Complainant. By clicking on the link ‘Maroc Data’, Internet users are directed to Maroc Data’s website. Maroc Data offers online payment solutions for its web hosting services. The Complainant is also active in providing online payment solutions and that this could give rise to a likelihood of confusion with the Complainant, which could be harmful to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a Complainant to prove that the Respondent has registered a domain name which is
(i) identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that he has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A Complainant must prove each of these three elements.
A. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s mark, CREDIT MUTUEL in it’s entirety save that the letters ‘le’ are added to the word ‘mutuel’ to create the word ‘mutuelle’, and the word ‘France’ is added to the words ‘creditmutuelle’ to create the disputed domain name ‘creditmutuellefrance’.
Clearly if the disputed domain name only incorporated the trademark of the Complainant there would be no doubt about ‘identity’ for the purposes of paragraph 4(a) of the Policy. But the Respondent has changed the word ‘mutuel’ and added the word ‘France’. Is the domain name still confusingly similar?
The suffix ‘.com’ is to be disregarded for comparison purposes.
It is not unusual to see in these kinds of dispute subtle changes to spellings of trademarks or the addition of words, often generic or descriptive in nature. But often it is still held that the domain name is confusingly similar.
For instance, In Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365, it was said:
‘Here, the disputed domain name <facconable.com> is written almost identically as the trademark FACONNABLE, with a different spelling only as regards the “c” and the “n”. It does nothing to detract from the immediate association with the Complainant aroused in the public mind by the word FACONNABLE.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s famous registered trademark FACONNABLE. The Complainant has established this element.’
As to the addition of a country name, In America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713, it was said:
Respondent has registered the domain names “aolfrance.com”, “aolgermany.com”, “aolireland.com” and “aolspain.com”. These domain names are identical to Complainant’s “AOL.COM” service mark, except that the domain names insert the country names “france”, “germany”, “ireland” and “spain”, respectively, between “aol” and “.com”.
The addition of the name of a place to a service mark, such as the addition of “France” to “AOL”, is a common method for specifying the location of business services provided under the service mark. The addition of a place name generally does not alter the underlying mark to which it is added. A consumer or user of the Internet viewing the address “www.aolfrance.com” is likely to assume that Complainant is the sponsor of or associated with the website identified by the disputed domain name, particularly in light of the fact that Complainant routinely uses its “AOL” service mark in combination with country names in its advertisements on the Internet.
And in eBay Inc., v. G L Liadis Computing, Ltd. and John L. Liadis d/b/a G L Liadis Computing Ltd., WIPO Case No. D2000-1463, it was said:
In the Panel’s view, mere inclusion of a country name, or other geographic descriptor, is insufficient, in general and particularly here, to dispel user confusion from occurring.
This Panel is of the view that the addition of ‘le’ and ‘France’ does little if anything to prevent the domain name being confusingly similar to the Complainant’s trademark. The addition of the word ‘France’ may even increase confusion, given that France is the Complainant’s main area of activity. This Panel finds that this requirement of paragraph 4(a) has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances that, if proved by a respondent, may demonstrate rights or legitimate interests in the domain name. It provides:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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.” (Policy, para. 4(c)).
For a complainant to prove a negative i.e. that a respondent has no rights or legitimate interests in a domain name can sometimes be a difficult task given that complete knowledge in this regard will usually rest with the Respondent itself. Thus it has become accepted practice to require a complainant to demonstrate only a prima facie case of lack of rights or legitimate interests and, if so demonstrated, the burden of proof shifts to the Respondent to demonstrate that it does in fact have rights or legitimate interests. Here, the Respondent has failed to take part in the proceedings so the only issue for the Panel is whether the Complainant has made out a prima facie case of an absence of rights or legitimate interests. (As to a complainant’s and respondent’s respective burdens of proof, see Cornell Trading, Inc. v. Web-Interactive.com Inc., WIPO Case No. D2000-0887; and Tremco Incorporated v. IA Consulting, Inc., WIPO Case No. D2003-0997).
Given the factors the Complainant has identified as demonstrating a lack of rights or legitimate interests as set out above, namely the complete lack of association between the Complainant and the Respondent, that the Respondent does not appear ever to have been known by the names/words incorporated within the disputed domain name, that no licence or authorisation has been given by the Complainant to the Respondent to apply for or use the domain name and the absence of any conduct indicative of a right or legitimate interest but rather conduct indicating the contrary (the Respondent’s failure to respond to the cease and desist letter), this Panel is satisfied that the Complainant has made out a prima facie case. Given there is nothing advanced on the part of the Respondent to meet that prima facie case and prove that it does have rights or legitimate interests, this Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
In reaching this conclusion it is worth noting that none of the (albeit non-exhaustive) list of circumstances potentially indicative of rights or legitimate interests identified in paragraph 4(c) of the Policy would appear to naturally avail the Respondent in the circumstances of this Complaint – there would appear to be no bona fide offering of goods or services, there is nothing to suggest that the Respondent has been known by the domain name, or that the Respondent is making legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) provides a non-exhaustive list of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith.
To the extent that the Complainant relies on any of these circumstances, it appears to be the last in the list, namely ‘by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line 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’.
It is difficult to imagine circumstances in which the Respondent would have come to register the domain name in dispute without being aware of the Complainant. Indeed the evidence suggests that the Respondent intended to refer to the Complainant – the use of the word ‘France’ in the domain name, for instance. There is no relationship between the Complainant and the Respondent. It seems clear that there could be a likelihood of confusion – internet users might think, at least initially (such initial user confusion being sufficient for present purposes), that the website to which the domain name resolves is associated with the Complainant. That there is some form of commercial advantage to the Respondent in conducting its business in this way can be assumed in all the circumstances. Other factors which this Panel takes into account in its consideration of alleged bad faith registration and use are those advanced by the Complainant, namely that the Respondent’s postal and e-mail addresses in the WHOIS database appear to be of no benefit to those trying to correspond with it, and that Internet users are first diverted to a default webpage provided by Maroc Data, that by clicking on the link ‘Maroc Data’ Internet users are directed to Maroc Data’s website and that Maroc Data offers online payment solutions for its web hosting services, an area of activity of the Complainant.
In all the circumstances, this Panel is satisfied that, for the purposes of the Policy, the Complainant has demonstrated bad faith registration and use by the Respondent.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <creditmutuellefrance.com> be transferred to the Complainant.
Dated: February 7, 2007