WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Confdration Nationale du Crdit Mutuel v. Marley Bryan

Case No. D2007-0072

 

1. The Parties

The Complainant is Confdration Nationale du Crdit Mutuel of Paris, France, represented by MEYER & Partenaires, of Strasbourg, France.

The Respondent is Marley Bryan, of London, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Names and Registrar

The disputed domain names (hereinafter “Domain Names”)

<securite-creditmutuel.com>, <securite-creditmutuel.net>, <securite-creditmutuel.org> are registered with Tucows, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January19,2007. On January19,2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain Names at issue. On January22,2007, Tucows 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, billing, 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January24,2007.

The Respondent sent emails to the Center on January23,2007, January30,2007 and February1,2007, respectively claiming inter alia not to be the registrant of the Domain Names. In accordance with the Rules, paragraph 5(a), the due date for Response was February13,2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February15,2007.

The Center appointed Anna Carabelli as the sole panelist in this matter on February22,2007. 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.

The Panel finds that the Complaint complies with the requirements of the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant submitted evidence of the following French and U.K. registrations of the trademark Credit Mutuel (Annex E1, E2 and E3):

A) French trademark registrations:

T.M./S.M.

Reg. No.

Date of Deposit

Credit Mutuel

1475940

July8,1988

Credit Mutuel

1646012

November20,1990

B) U.K. trademark registration:

T.M./S.M.

Reg. No.

Date of Registration

Credit Mutuel

1464456

January4,1994

The Complainant submitted evidence of registration of the following domain names, all of which lead to its operative web site:

- <creditmutuel.fr>, created August10,1995;

- <creditmutuel.com>, created on October28,1995;

- <creditmutuel.eu>, created on March13,2006; and

- <creditmutuel.mobi>, created on September26,2006.

The Complainant is the France’s second-largest retail bank (Annex D) and, as confirmed by the information posted on its website, and is also present in other European countries, namely, Germany, Belgium, the United Kingdom as well as outside of Europe in New York, Hong Kong, Singapore, Tunis, and in China, by affiliation to the Bank of East Asia.

The Respondent registered the Domain Names on July23,2006.

The Domain Names are inactive.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- It is well known, being the second French international banking group, providing services to more than 10 millions of clients, with a network of 3100 offices in France;

- It provides online banking services to its customers through the Complainant web site <creditmutuel.com>;

- It holds registrations for the trademark CREDIT MUTUEL.

- The Domain Names are confusingly similar to the trademark CREDIT MUTUEL as the Domain Names reproduce the mark entirely. Moreover, the addition of the French word “securite” is not capable to differentiate the Domain Names from the trademark but may rather strengthen the confusion with the Complainant’s trademarks.

With respect to the Respondent, the Complainant further contends that:

- The Respondent does not have any rights or legitimate interests in the Domain Names as:

(i) the Respondent is not in any way related to the Complainant;

(ii) the Respondent is not currently and it has never been known by the name Credit Mutuel;

(iii) the Respondent has not engaged in any action that shows it has rights or legitimate interests in the Domain Names.

- The Respondent registered the Domain Names and is using them in bad faith as:

(i) it is difficult to imagine that the Respondent could have ignored the well-known trademark CREDIT MUTUEL at the time of registration of the Domain Names;

(ii) the Respondent registered the Domain Names to mislead Internet users, relying on the notoriety of Credit Mutuel in the banking and financial services field;

(iii) the Domain Names are inactive and may be used for phishing attacks;

(iv) the Domain Names inactivity may be considered as passive holding for the following circumstances:

- strength of the trademark CREDIT MUTUEL;

- the Respondent has shown no good faith use of the Domain Names;

- the Respondent has engaged in a pattern of conduct preventing the trademark owner’s registration;

- the Respondent intends to profit from the fame of the relative trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

The Respondent sent to the Center emails on January30,2007 and February1,2007, claiming inter alia not to be the owner/holder of the Domain Names. The Respondent also stated that it “never registered” the Domain Names and suggested that someone else did so using the Respondent’s name.

The Respondent’s claim, however, is not supported by any evidence, from which the Panel might legitimately infer the unreliability of the registration details provided by the registrar. Therefore the proceedings are to be regarded as having been validly constituted and there is no impediment for the Panel to deal with the merits and to decide the dispute.

On the other hand, the above emails appear to be relevant with regard to the assessment of the requirements under Paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, whether the registrant of the Domain Names be the Marley Bryan, who has apparently communicated with the Center, or someone else taking on her identity (but, again, there is no supporting evidence on this point before the Panel) for the reasons explained below, it being understood that under the Rules the respondent is meant to be the holder of the Domain Names.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights in the trademarks listed under paragraph 4 above, by submitting evidence of French and U.K. registrations of the trademark CREDIT MUTUEL.

The Panel, consistent with previous WIPO UDRP decisions, finds that the Domain Names are confusingly similar to the Complainant’s registered trademarks as the Domain Names incorporate their textual part entirely, and since the addition of the French word “securite” and of a hyphen is not sufficient in the context to differentiate the Domain Names from the Complainant’s CREDIT MUTUEL mark.

Moreover, the Panel agrees that the use of the word “securite”, may increase the likelihood of confusion, as it may suggest to Internet users a reference to a more secure tool or mean for online banking services, which is a sensitive issue for both online banking services providers and users (Annexes G, H and I). (VoiceStream Wireless Corporation v. Salem Zeto, d/b/a/ Pacific Wireless Communications, d/b/a/ prepaidcellularwide.com, WIPO Case No. D2002-0313; Sanofi-aventis v. John Adams, WIPO Case No. D2006-0688; F. Hoffmann-La Roche AG v. Cheaptamiflu.net, WIPO Case No. D2005-1256; Ralph Maltby Enterprises, Inc. v. Women With Balls (W.W.B. Accessories), WIPO Case No. D2004-0917; Microsoft Corporation v. 3D Roulette, WIPO Case No. D2004-0232; Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661; Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755).

Consequently, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(i) of the Policy

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:

(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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 Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in the disputed Domain Name under paragraph 4(c) of the Policy. According to a consistent line of WIPO UDRP decisions, in such a case the burden of proof shifts to the Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683). As a consequence, the Respondent’s failure to rebut the Complaint’s allegations, allows the Panel to infer, taking into consideration the circumstances of this case, that the Respondent has no such rights or legitimate interests.

The Panel also notices that either the Respondent is the stated Marley Bryan who has engaged in email communication with the Center indicating they are not the registrant of the DNS, in which case by denying this fact, this would support a finding of lack of rights or legitimate interests, or the Respondent is a different person (but, again, there is no supporting evidence on this point before the Panel), in which case the evident concealment of its true identity makes it unconceivable that the Respondent has any right or legitimate interests in the Domain Names for the purposes of Paragraphs 4(a)(ii) and 4(c) of the Policy.

Consequently, the Panel finds that the Respondent has no rights or legitimate interest in the Domain Names under Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As established in paragraph 6.A. above, the Domain Name is confusingly similar to the Complainant’s trademarks.

Moreover, the Panel accepts that the Complainant’s name and registered trademark CREDIT MUTUEL is well-known, the Complainant being the second French retail bank and given its presence also in other European and non European countries (Annexes C and D).

Therefore, the Panel finds that it is very unlikely that the Respondent was not aware of the Complainant’s trademark at the time it registered the Domain Names.

Consequently, the Panel finds that the Respondent has registered the Domain Names in bad faith.

The fact that at present the Domain Names appear to be inactive raises the issue of actual use in bad faith, according to the Rules paragraph 4a(iii).

According to Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which has been followed in several subsequent WIPO UDRP decisions, “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, under certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”

The Panel finds that the Respondent’s passive holding of the Domain Names meets the requirement of paragraph 4(a)(iii) that the Domain Names “is being used in bad faith” by the Respondent based on the following circumstances:

(i) the Complainant’s trademark is well-known, as evidenced by its substantial use in France, in Europe and in other countries;

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the Domain Names;

(iii) the Respondent is clearly acting in bad faith. On the basis of the available evidence, either the Respondent is the stated Marley Bryan in which case by denying the fact, would clearly be acting in bad faith, or the Respondent is a different person (but, again, there is no supporting evidence on this point before the Panel), in which case this would mean that it has evidently taken active steps to conceal its true identity, in so evidencing bad faith.

In light of all the above, the Panel deems that it is not possible to conceive any plausible actual or contemplated active use of the Domain Names by the Respondent that would not be illegitimate, such as being a passing off, an infringement of consumer protection legislation or an infringement of the Complainant’s right under trademark law.

In view of all the foregoing the Panel finds that the Complainant has established the element of bad faith according to paragraph 4(a)(iii) of the Policy.

 

7. Decision

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 Names, <securite-creditmutuel.com>, <securite-creditmutuel.net> and <securite-creditmutuel.org> be transferred to the Complainant.


Anna Carabelli
Sole Panelist

Dated: March8,2007