WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SA Natixis Interepargne v. Whois Protection
Case No. D2007-1108
1. The Parties
The Complainant is SA Natixis Interepargne, of Paris, France, represented by ARAMIS Société d’Avocats, France.
The Respondent is Whois Protection, of West Bay, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <interepargne.com> (the “Disputed Domain Name”) is registered with Rebel.com Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2007. On August 1, 2007, the Center transmitted by email to Rebel.com Services Corp a request for registrar verification in connection with the domain name at issue. On August 1, 2007, Rebel.com Services Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 August 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2007.
The Center appointed Jacques de Werra as the sole panelist in this matter on September 7, 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 a French company providing financial services such as employee savings, retirement savings and employee shareholding schemes. The Complainant is the owner and actively operates the domain names <interepargne.fr> and <interepargne.net>.
The Complainant is the owner of the following trademarks (hereafter: the “Trademarks”):
- French word trademark INTEREPARGNE, number 1609097 filed on August 10, 1990, and renewed on July 20, 2000 covering various goods and services in classes 16, 36 & 41;
- International word and design trademark INTEREPARGNE, number 566593, filed on February 7, 1991 under priority of the French trademark, covering various countries (including Austria, Benelux, Germany, Spain, Italy, Morocco and Portugal) for various goods and services in classes 16 and 36.
The Complainant was also the owner of a UK trademark INTEREPARGNE number 1455436 covering various goods and services in classes 16 & 36 the protection of which has however elapsed on August 13, 20071.
The Disputed Domain Name was registered on June 26, 2004. Based on the evidence filed by the Complainant, it appears that, at the time of filing of the Complaint, the Disputed Domain Name was used as a portal listing commercial websites which have no connection with the Complainant. Some of these links however expressly referred to the Trademarks, to the previous or the present company name of the Complainant (i.e. “Natexis” and “Natixis”) or to the company name of companies affiliated with the Complainant (i.e. “Banque Populaire”) and further related to financial services offered by competitors of the Complainant in what appears as a pay per click revenue scheme.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Name is identical to the Trademarks.
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent does not have any prior rights (such as trademarks rights) in the Disputed Domain Name, that the Respondent has never been authorized or otherwise be permitted by the Complainant to use the Trademarks or to use any domain name incorporating the Trademarks and that the Trademarks have been registered before the Disputed Domain Name. The Complainant contends that there is no evidence of the Respondent being commonly known by the Disputed Domain Name. The Complainant further contends that the type of use made of the Disputed Domain Name by the Respondent has already been found not to constitute a bona fide offering of goods and services in previous decisions allegedly rendered against the Respondent (whereby the Respondent refers in this context to WIPO and NAF UDRP cases which were decided against a company named “Whois ID Theft Protection”).
Regarding the condition of registration and use in bad faith of the Disputed Domain Name, the Complainant contends that the Respondent would have been involved in numerous proceedings in order to establish its bad faith. It further contends that there can be no reason for the choice of the Disputed Domain Name by the Respondent except the actual knowledge of the Trademarks, as this is evidenced by the fact that many links found on the Disputed Domain Name relate to sites of competitors of the Complainant, which cannot constitute a coincidence. On this basis, the identity between the Disputed Domain Name and the Complainant’s Trademarks is likely to create confusion with the Complainant’s Trademarks. In addition, the fact that the Disputed Domain Name was at the time of the filing of the Complaint pointing to a pay per click sponsored website with a number of links related to bank and finance services (such as “Money management”, “Personal Finance”, “Banking” etc.), which are corresponding to the main services provided by the Complainant confirms that the Respondent seeks to commercially exploit the confusion with the Complainant’s Trademarks. In light of these facts, consumers are led to believe that Disputed Domain Name is sponsored or endorsed by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its rights in the INTEREPARGNE trademark, by virtue of the Trademarks.
The Panel finds that the Disputed Domain Name is identical or at least confusingly similar to the Trademarks given that it replicates the French INTEREPARGNE trademark in its entirety and the word element of the INTEREPARGNE international trademark owned by the Complainant.
The Panel, therefore, finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the 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 a 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.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In this case, the Panel finds no evidence that the Respondent ever had any legitimate right or interest in the Disputed Domain Name. Based on the Complainant’s uncontradicted allegations, the Complainant has demonstrated that the Disputed Domain Name is used to provide links to services in what appears to be a “click-through” site.
The Disputed Domain Name is thus used for the purpose of listing sponsored advertising links pointing to third party commercial websites, whereby some of these links expressly refer to the Trademarks owned by the Complainant.
The Panel further acknowledges that the Complainant never authorized, licensed or permitted the Respondent to use the Trademarks in any manner, and specifically not in the Disputed Domain Name, and that the Respondent is not commonly known by the Disputed Domain Name (it being noted that the Respondent uses a privacy shield for the Disputed Domain Name).
On this basis, the Panels finds that the Complainant has made a prima facie showing that the Respondent has no right or legitimate interest in the Disputed Domain Name and that the Respondent has not shown any legitimate interest in the Disputed Domain Name. The Complainant has consequently satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel is not ready to accept the argument raised by the Complainant which contends that the Respondent has already been involved in many cybersquatting cases for which the Complainant has filed copies of various WIPO and NAF UDRP decisions which where rendered against a company called “Whois ID Theft Protection”. The Panel has indeed not been provided any evidence that the Respondent — the name of which is “Whois Protection” — is the same entity as “Whois ID Theft Protection”. The Panel notes in this context that a similar argument was raised and left open by another panel. See Standard & Poor’s, a Division of The McGraw-Hill Companies, Inc. and State Street Global Advisors, a Division of State Street Bank and Trust Company v. Whois ID Theft Protection, Whois Protection, WIPO Case No. D2007-0978.
In any case, based on the uncontradicted evidence filed by the Complainant, the Panel is prepared to find that the Respondent registered the Disputed Domain Name and is operating a website for the purposes of monetary gain by providing links to sites which are unrelated to the ones of the Complainant and some of which refer to financial services offered by competitors of the Complainant. On this basis, this Panel is ready to hold that bad faith must be admitted because the Respondent is using the Disputed Domain Name in connection with a “link farm” website that offers products and services competitive with those of the Complainant. See VeriSign Inc. v. Domain Admin, E Promote, WIPO Case No. D2006-1501 referring to Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850.
In addition, by trading on the goodwill of the Complainant’s Trademarks, the Respondent has disrupted the business of the Complainant and diverted Internet traffic intended to the Respondent’s website. Such use of the Disputed Domain Name can only be explained by the intent of the Respondent to attract Internet traffic by capitalizing on the Complainant’s Trademarks. This use of the Disputed Domain Name constitutes sufficient evidence of the bad faith of the Respondent under paragraph 4(b)(iv) of the Policy. See Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968 and Imperial Chemical Industries PLC v. RareNames, WIPO Case No. D2006-0124.
For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.
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 <interepargne.com> be transferred to the Complainant.
Jacques de Werra
Date: September 21, 2007
1 Based on an independent verification conducted by the Panel in the on-line UK trademark database; given that the Complainant is the owner of other trademarks, the Panel considers it unnecessary to enquire further about this elapsed UK trademark.