WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Confédération Nationale du Crédit Mutuel v. Joanna Rosen
Case No. D2010-1348
1. The Parties
The Complainant is Confédération Nationale du Crédit Mutuel of Paris, France, represented by Meyer & Partenaires, France.
The Respondent is Joanna Rosen of Akron, Ohio, United States of America.
2. The Domain Name and Registrar
The disputed domain name <creditmutuelbank.com> is registered with 1API GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2010. On August 10, 2010, the Center transmitted by email to 1API GmbH a request for registrar verification in connection with the disputed domain name. On August 12, 2010, 1API GmbH 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” 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 the Respondent of the Complaint, and the proceedings commenced on August 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2010.
The Center appointed Marilena Oprea as the sole panelist in this matter on September 14, 2010. 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 language of the present proceedings is English.
4. Factual Background
The Complainant is the political and central body for the Crédit Mutuel Banking Group which is the second French banking and insurance service group providing services to approximately twelve millions of clients for more than a century. The Complainant’s network in France consists of more than 3000 offices.
The Complainant operates in the United States through its subsidiary, Crédit Industriel et Commercial.
The Complainant owns several trademark registrations worldwide for CREDIT MUTUEL, including the following:
- French Trademark no. 1475940 of July 8, 1988 for the mark CREDIT MUTUEL in classes 35, 36; and
- International Trademark no. 570182 of May 17, 1991 for the mark CREDIT MUTUEL in classes 16, 35, 36, 38, 41.
The Complainant also holds numerous domain names, such as <creditmutuel.com>, <creditmutuel.fr>, <creditmutuel.eu>, <creditmutuel,info>.
The disputed domain name <creditmutuelbank.com> was registered on May 3, 2010 and is currently held by the Respondent.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:
(i) The disputed domain name <creditmutuelbank.com> is confusingly similar to its trademark CREDIT MUTUEL:
- The Complainant states that the gTLD suffix “.com“ is not taken into account in such procedures as it is a technical and necessary part of the domain name with no distinguishing feature nor legal significance;
- The disputed domain name incorporates (a) the Complainant’s trademark without space between the two words composing the mark, this lack of space should be ignored in assessing the confusing similarity or identity between a trademark and a domain name, and (b) the word “bank” which is descriptive and bears an obvious relation with Complainant’s core business of activity.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
- The Respondent is not related to the Complainant, the Respondent is not an agent of the Complainant, the latter never granted the Respondent any authorization or license to use or to apply for the registration of the disputed domain name;
- The Respondent is not currently and has never been known under the wording “credit mutuel” or “credit mutuel bank” and has no trademark rights in it;
- the Respondent registered the disputed domain name to take advantage of Complainant’s renown trademark in order to confuse and divert Internet users to a parking webpage which contains sponsored links, some of these pointing to the Complainant’s competitors in the banking and financial field;
- The Respondent has not engaged in any action that shows it has rights or legitimate interests in the disputed domain name.
(iii) The disputed domain name was registered and is being used in bad faith:
- The Respondent could not have ignored Complainant’s reputation and its well-known trademark in the field of banking and finance at the time it registered the disputed domain name;
- Through its subsidiary Crédit Industriel et Commercial, the Complainant is known in the United States, the place where the Respondent is apparently located;
- The wordings composing the disputed domain name cannot be the result of a random choice and supports the Respondent’s knowledge of the Complainant and its activities;
- The Respondent is using the disputed domain name to divert Internet users to a parking webpage containing hyperlinks in French language, some of them directing to information related to the Complainant’s competitors in the field of banking, financial and insurance services. These hyperlinks could generate revenue for the Respondent through a “pay-per-click” domain parking solution and the dilution of the fame of the Complainant’s trademark identically reproduced by the disputed domain name;
- The Respondent is liable for the content posted on the website corresponding to the disputed domain name;
- The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but to the contrary the use of the same as above described should be considered unfair competition.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the policy, these rules and any rules and principles of law that it deems applicable.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not hold rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
There are two requirements that the Complainant must establish under paragraph 4(a)(i), namely: that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to the mark.
The Complainant has rights in the CREDIT MUTUEL trademark, holding registrations worldwide for decades. Also, even if the Complainant does not hold a registered trademark in the United States, the Respondent’s apparent location, this is not relevant under the first element of the UDRP as it suffices for these purposes that the Complainant demonstrates it has trademark rights in some jurisdiction (see also Deutsche Telekom AG v. Oded Zucker, WIPO Case No. D2004-0749 and cases cited therein). Furthermore, the Panel notes that the Complainant is present in the United States through its subsidiary Crédit Industriel et Commercial.
In addition to the Complainant’s trademark CREDIT MUTUEL, the disputed domain name contains the term “bank” which is directly related to the Complainant’s area of activity. A wide variety of UDRP panels have ordered the transfer of domain names incorporating trademarks and generic or descriptive words (see Caterpillar Inc. v. Matthew Quinn, WIPO Case No. D2000-0314, Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648, Twentieth Century Fox Film Corporation v. KeithMalley.com, WIPO Case No. D2007-0760).
The Panel agrees with the previous UDRP panels and concludes that adding descriptive terms which indicate the business for which the trademark was registered to a domain name incorporating entirely a trademark, does not prevent the domain name from being confusingly similar to the Complainant’s trademark, therefore the disputed domain name <creditmutuelbank.com>, after disregarding the lack of spaces between words and the “.com” generic top level domain which are irrelevant in domain name disputes, is confusingly similar to the Complainant’s CREDIT MUTUEL trademark.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is confusingly similar to its trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel finds that the Complainant has provided a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Indeed, the Complainant alleges that it has no relationship with the Respondent and that it has not granted the Respondent any right to register or use its trademark or any domain name referring to its trademark. Thus, the burden of proof on this element shifts to the Respondent; either by demonstrating one of the three circumstances under paragraph 4(c) of the Policy or providing other relevant acceptable grounds.
The Respondent failed to submit any response. The silence of the Respondent might support a finding, based on other relevant circumstances, that it has no rights or legitimate interests in respect of the disputed domain name (see also Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007, Ronson Plc v. Unimetal Sanayai ve Tic.A.S., WIPO Case No. D2000-0011).
Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or is commonly known by this name, or acquired a trademark right in “credit mutuel” wording, or is making any legitimate noncommercial or fair use of the disputed domain name. In fact, the Respondent uses the domain name as a portal for sponsored listings including services of Complainant’s competitors, to be further analyzed under the heading of bad faith below.
For these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Under this heading, the Complainant must prove both: registration and use of the disputed domain name in bad faith.
The Complainant has been providing services for more than a century and the trademark CREDIT MUTUEL has been used for banking and financial services for decades. Therefore, it is not difficult for the Panel in this present case to infer that the Respondent had or should have had knowledge of the Complainant’s trademark and business at the time it registered the disputed domain name as it incorporates the Complainant’s trademark in its entirety with the addition of the word “bank” which is descriptive for the Complainant’s field of activity.
Paragraph 4(b)(iv) of the Policy lists one of the typical situations which, if found, shall be evidence of the registration and use of the domain name in bad faith:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
From the records in the file, it appears that the Respondent is using the disputed domain name for a web portal providing sponsored links for various services, including banking and financial services provided by competitors of the Complainant. In the present proceeding it may reasonably be inferred that the Respondent has not set up this redirection system without the expectation of some financial gain, and is operating the well-known pay-per-click or click-through device whereby the operators of other websites pay a commission to the Respondent for traffic redirected to them.
Therefore, the Panel finds that this is a classic case of cybersquatting: the circumstances of this case lead the Panel to believe that the Respondent was aware of the Complainant’s CREDIT MUTUEL trademark and the corresponding services and thus registered the disputed domain name and uses the same in bad faith, to attract Internet users by creating a likelihood of confusion with the Complainant's mark for the Respondent’s commercial gain.
Further, the Respondent has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark and therefore reinforces this approach (see also Kabushiki Kaisha Toshiba v Shan Computers, WIPO Case No. D2000-0325).
For all these reasons, the Panel finds that the third element of the Policy is established, and that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <creditmutuelbank.com> be transferred to the Complainant.
Dated: September 28, 2010