Complainant is Confederation Nationale du Credit Mutuel, Paris, France, represented by MEYER & Partenaires, France.
Respondent is Tribhuwan, Tribhuwan Nailwal, Luxor Writing Instruments pvt. Ltd., New Delhi, India.
The disputed domain name <creditmute.com> is registered with Register.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2008. On November 10, 2008, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On November 10, 2008, Register.com transmitted by email to the Center its verification response confirming that 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” 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2008. By email dated November 17, 2008, Respondent requested the Center to provide an explanation of the Complaint. By email of that date, the Center provided Respondent with information concerning the nature of the administrative proceeding and detailed information regarding the resources available at the Center website for facilitating the filing of a response. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 9, 2008.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 16, 2008. 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.
By email dated December 29, 2008, the Center transmitted the Panel's Administrative Procedural Order No. 1 to the parties, providing in substantive part:
“Complainant has indicated that it commonly uses, and that its clients commonly use, the term ‘Credit Mut' as an abbreviated or informal reference to its trademark and service mark CREDIT MUTUEL. Complainant is requested to provide evidence to support this claim of common usage in commerce of the term ‘Credit Mut', particularly among Complainant's clients or the general public.”
By email dated January 5, 2009, Complainant provided responsive evidence in electronic format to the Center. The Center forwarded that evidence to the Panel. The due date for submission to the Center of the Panel's decision was extended to January 9, 2009.
Complainant is the owner of registrations for the word and design trademark and service mark CREDIT MUTUEL at the French intellectual property office, including registration number 1475940, dated July 8, 1988, in International Classes (ICs) 35 and 36, covering, inter alia, business promotion, and; registration number 1545012, dated November 20, 1990, in ICs 16, 35, 36, 38 and 41, collective mark covering, inter alia, printed products. Complainant is also the owner of an international registration for the collective word and design mark CREDIT MUTUEL (through the Madrid system) covering Benelux, Italy, and Portugal, registration number 570182, in ICs 16, 35, 36, 38 and 41. (Complaint, Annex E)
Complainant is a financial services institution with a network of 3,100 offices in France through 18 regional bank federations, and with net income in 2007 in the billions of Euros.1 Complainant also maintains offices in foreign countries, including elsewhere in Europe, in the United States of America and in Asia. Complainant operates a commercial Internet website at “www.creditmutuel.com” at which it provides information concerning its products and services. Complainant has registered a number of domain names that are linked into its principal commercial website (e.g., “www.creditmutuel.eu”). Complainant has indicated that as a consequence of its long public presence and extensive business dealings in France, it has “acquired a great renown in the field of banking and insurance services”. (Complaint)
In response to the Panel's Administrative Order No.1, Complainant has provided evidence in the form of news media reports (e.g., at “http://lyonpremiere.com/”, dated December 23, 2008), employee group news reports (e.g., at “http://cgt-banque-assurance.fr”, dated May 15, 2008) and Internet forum records (e.g., at “http://forum-auto.com”, dated April 1, 2005), that Complainant, its employees, Internet users and customers use the abbreviated term “Credit Mut” to refer to Complainant.
According to the Registrar's verification report, Respondent is registrant of the disputed domain name. According to that report, the record of registration of the disputed domain name was created on June 21, 2008.
There is no evidence on the record of this proceeding that Respondent has used the disputed domain name. Complainant indicates that Respondent appears to have falsely used the corporate name and address (Luxor Writing Instruments Pvt. Ltd.) of a business in India, although it has not provided information regarding its basis for such assertion.
By registered letter and email dated August 22, 2008, Complainant through its counsel sent a cease and desist and transfer demand to Respondent at the addresses indicated on its record of registration. Respondent did not reply to that correspondence.
The Registration Agreement in effect between Respondent and Register.com, subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
Complainant alleges rights in the trademark and service mark CREDIT MUTUEL based on registration in France and in other countries, and as supported by long use in commerce. Complainant indicates that its trademark is well known.
Complainant argues that the disputed domain name, <creditmute.com>, is confusingly similar to its trademark because the disputed domain name is the same in all respects, with the exception of eliminating the letters “u” and “l”. Complainant states that the disputed domain name is a common misspelling of its trademark. Complainant further states that this confusion is enhanced by the fact that Complainant, its affiliated banks and its clients “usually use the wording CREDIT MUT to informally name the Complainant”.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant alleges: (1) Respondent is not related in any way to Complainant's business, and is not one of its agencies or offices; (2) Respondent is not currently and “has never been known under the wording CREDITMUTE,” nor has it acquired rights in that term; (3) Complainant has not authorized Respondent to use its trademark in the disputed domain name, and; (4) Respondent has not otherwise engaged in any action that evidences rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Complainant indicates that Respondent must have known of its well-known trademark when it registered the disputed domain name, that the name was registered to take advantage of typographical errors, that the disputed domain name has no meaning either in the French or English language, that Respondent has provided presumably false information in its registration, and that the totality of such conduct constitutes bad faith registration.
Complainant states that Respondent's “passive use” of the disputed domain name may be deemed bad-faith behavior because: (1) there is no active website linked to the disputed domain name; (2) there is no actual or intended use in good faith by Respondent; (3) Respondent apparently used false information in registering the disputed domain name; (4) Respondent did not reply to Complainant's cease-and-desist and transfer demand, and; (5) Respondent harmed Complainant's rights in the CREDIT MUTUEL mark when it registered the disputed domain name.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant's contentions.
The Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding to Respondent by email and express courier to the address provided in its record of registration. Respondent subsequently contacted the Center by email for further information regarding the proceeding. The express courier tracking record indicates that when the courier attempted to make delivery in India, “The receiver did not want the order and refused this delivery”.
The Center has taken those steps designated by the Rules for discharging its responsibility to provide notice of the proceedings to Respondent. Based on its email response, Respondent received the Complaint in electronic form promptly upon transmission by the Center. The Panel is satisfied that Respondent was given adequate notice of these proceedings within the context of the Policy and Rules, and that each party has been given adequate opportunity to present its position.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has provided substantial evidence of rights in the trademark and service mark CREDIT MUTUEL in France and several other countries based upon registration and continuous long use in commerce (see Factual Background supra). Complainant has provided evidence that its mark is well known in France based, inter alia, on an extensive network of offices and as evidenced by its substantial annual income. Based on this unrebutted evidence, the Panel concludes that Complainant's mark is well known in France.2
Complainant has indicated, and in reply to request from the Panel has provided evidence demonstrating, that Complainant, its employees, external media and Internet users use a shortened form of the CREDIT MUTUEL trademark, “Credit Mut”, to refer to Complainant and its business. Complainant has not argued that “Credit Mut” is a trademark distinct from its CREDIT MUTUEL trademark. However, Complainant has argued that common public usage of “Credit Mut” to refer to Complainant creates a source of confusion between the disputed domain name and its trademark.
The disputed domain name <creditmute.com> differs from Complainant's mark by omission of the letters “u” and “l” in the term “mutuel”.3 The issue under paragraph 4(a)(i) of the Policy is whether the disputed domain name is “confusingly similar” to the trademark in which Complainant has rights.
The issue of confusing similarity is analyzed by examining the visual impression (or sight), sound and meaning of terms being compared. In the instant case, the first term of the mark and the domain name, i.e., “credit”, are visually identical. The pronunciation in the French and English languages would, in each respective language, be the same. There are various meanings of “credit” in the French and English languages. Because the disputed domain name uses “credit” in a combination that does not have a common meaning, comparison of meanings is not useful here.4
Following “credit” in the mark and disputed domain name, respectively, are the terms “mutuel” and “mute”. These terms are visually similar because the first three letters are identical, and the letter “e” follows the first syllable. However, when the viewer pays moderate attention, the terms are visually different. The terms “mutuel” and “mute” are similar in pronunciation because the first three letters of each term are the same. The terms are nonetheless different to the ear because “mutuel” includes more syllables than “mute”. “Mutuel” is a French term synonymous with “mutual” in English. When used in the finance context, the term in both languages means a form of banking or insurance institution in which members share in profits and expenses.5 The term “mute” in the English language refers to an inability to speak, or to inducing a state of quiet.6 Complainant has indicated that the term “creditmute” has no meaning in French or English.7 The combination is of two recognizable words in English, though creating a phrase with no common sense meaning.8
Overall, the terms “credit mutuel” and “creditmute” are fairly similar when viewed in combination, and their pronunciation would also be fairly similar. However, if an Internet user is paying reasonably close attention, the terms are distinguishable. The panel would be reluctant to find the terms confusingly similar in a trademark law sense absent some other factor(s). In this case, that other factor is the common usage by Complainant and the Internet-using public of “Credit Mut” as a short form of its mark. Because “Credit Mut” is used in that way, Internet users viewing the disputed domain name are substantially more likely to confuse it with Complainant's well known trademark than they might be without that common usage. The Panel concludes that the disputed domain name <creditmute.com> and the trademark CREDIT MUTUEL are confusingly similar based on the foregoing combination of factors.
Complainant also has argued that this proceeding involves “typo-squatting” by Respondent as a ground for finding confusing similarity.
Complainant first suggests that an Internet user seeking to enter <creditmutuel.com> in his or her browser address line will inadvertently type <creditmute.com>, and thus be directed to Respondent's (so far non-existent) website. From a typo-squatting standpoint, this argument is problematic. This is not a matter of a one-letter difference, or a transposition of two letters, but rather involves a significant variation between “mutuel” and “mute”. The typist must get the whole second half of the term wrong (i.e., typing “e” instead of “uel”). The Panel does not accept that this is a traditional “typo-squatting” situation when comparing the disputed domain name with Complainant's full mark.
However, as discussed above, Complainant has demonstrated that within its business and among Internet users the term “credit mut” is commonly used to refer to Complainant. It is not unlikely that a typist seeking to enter “creditmut.com” would inadvertently type “creditmute.com” in his or her browser address line. In this circumstance, the addition of a single letter “e” to the trademark term is an expected “typo-squatting” type of error (e.g., easily made by typists), taking advantage of Internet user confusion. This supports a finding of confusing similarity between the trademark and the disputed domain name.
The Panel concludes that the disputed domain name is confusingly similar to Complainant's mark.
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“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, paragraph 4(c))
Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent indicated through email correspondence that it was aware of these proceedings. The Center provided Respondent with information regarding resources that would facilitate the filing of a response, but Respondent elected not to file any submission that might demonstrate rights or legitimate interests in the disputed domain name. There is no evidence of any use by Respondent of the disputed domain name (either before or after notice of a dispute), and there is no evidence of any entity or enterprise that might credibly suggest that Respondent has been commonly known by the disputed domain name. Respondent is not making any active use of the disputed domain name and is not demonstrating a legitimate noncommercial or fair use of the name.9 Respondent has provided no evidence to rebut Complainant's prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel concludes that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “(i) … [respondent] ha[s] registered or acquired the domain name 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 or to a competitor of that complainant, for valuable consideration in excess of [respondent's] documented out-of-pocket costs directly related to the domain name”; “(ii) [respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct”; or “(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent's] website or location or of a product or service on [respondent's] website or location” (id., paragraph 4(b)(ii) and (iv)). The illustrative factors that may be taken into account in determining bad faith are non-exhaustive.
In this proceeding, Respondent has made no active use of the disputed domain name. Therefore, if it is to be found to have registered and used the disputed domain name in bad faith the evidence must be inferred from other circumstances associated with the registration. The circumstances suggesting bad faith in the instant proceeding are that Complainant's mark is well-known in France because Complainant is one of the largest financial services providers in that country with active advertising and promotion, including on the Internet, and there is no apparent justification for Respondent's registration of the confusingly similar disputed domain name given that it has no common sense meaning in French or English. Also, Respondent has not contested that it provided false registrant and contact information in its registration of the disputed domain name. These circumstances suggest that Respondent registered the disputed domain name for the purpose of selling or transferring it to a third party for consideration in excess of expenses directly associated with the domain name, or to use it for commercial gain to attract Internet users to its own website by creating confusion regarding Complainant as a source, sponsor or affiliate of Respondent's yet-to-be-established website.
The factors of a well-known mark, an active commercial Internet presence by the trademark holder, the provision of false contact information by the registrant and the absence of a reasonably foreseeable good faith of the disputed domain name are among those that have been consistently determined by panels under the policy to give rise to an inference of bad faith registration and use (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Third UDRP Element) (as of December 26, 2008)).
The Panel determines that Respondent registered and used the disputed domain name in bad faith within the meaning of paragraph 4(b) 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, <creditmute.com> be transferred to Complainant.
Frederick M. Abbott
Dated: January 9, 2009
1 Complainant indicated that its “net income” for 2007 was €10.6 billion. In the course of research in this proceeding, the Panel found reported “net income” figures for Complainant in 2007 in the range of €2-2.7 billion (see, e.g., Citi Sells Unit to Credit Mutuel for EU4.9 Billion (Update4), Bloomberg.com, July 1, 2008). The Panel has not included a specific net income figure in the body of its decision.
2 The evidence provided is not sufficient to establish that the mark is well known in other countries.
3 Under circumstances such as those of the present case, addition of the generic top level domain (gTLD) identifier is not material.
4 The term “credit” has a number of meanings in the English language. In the area of finance, the term refers to a positive account balance or to an amount of money made available. See, e.g., Merriam-Webster Online Dictionary, def. 2.
5 According to Merriam-Webster Online Dictionary, “mutual” is defined as, “3: of or relating to a plan whereby the members of an organization share in the profits and expenses; specifically: of, relating to, or taking the form of an insurance method in which the policyholders constitute the members of the insuring company”.
6 See, e.g., Merriam-Webster Online Dictionary, noun and verb definitions. The term “mute” is commonly used in the electronics sector to refer to the silencing of audio output.
7 The Panel has found that the term “muter” in French means “to transfer” (in English), and that “je mute” means “I transfer” (in English). Initial translation from SDL FreeTranslation.com (http://www.freetranslation.com/), confirmed by Larousse English-French Pocket Dictionary (1999), at “muter” (French) and “transfer” (English). SDL FreeTranslation.com, French to English, translates “credit mute” as “credit transfers”. Panel visit to “http://www.freetranslation.com” of December 22, 2008. Although Complainant's argument has not been contested by Respondent, it is not inconceivable that an Internet user would attribute a French meaning to the disputed domain name, though from the record and publicly-available sources, there does not appear to be any commonly understood usage or meaning of the phrase in French.
8 Hypothetically, e.g., quiet as to a person's financial status.
9 The Panel appreciates that not using a domain name may be “legitimate” or “fair” in the sense that non-use under neutral circumstances may not be evidence of anything other than passive holding of a domain name. Rebutting a prima facie case of lack of rights or legitimate interests through legitimate noncommercial or fair use appears to require an active “use” of the disputed domain name, or an explanation as to why the passive holding otherwise is justifiable as legitimate or fair use notwithstanding confusing similarity with the complainant's trademark.