WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Confederation Nationale du Credit Mutuel v. Philippe Marie
Case No. D2010-1513
1. The Parties
Complainant is Confederation Nationale du Credit Mutuel of Paris, France, represented by MEYER & Partenaires, France.
Respondent is Philippe Marie of France.
2. The Domain Name and Registrar
The disputed domain name <credit-mutuel-3dsecure.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2010. On September 8, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 9, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing 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 September 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2010. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2010.
In the meantime, Complainant sought to file an amendment to the Complaint on October 8, 2010 to include the additional domain name <3dsecure-creditmutuel.com> registered by Godaddy Software and the domain names <3d-creditmutuel.com> and <creditmutuel-3dsecure.com> registered by Olivier Prot.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on October 22, 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.
4. Factual Background
The disputed domain name <credit-mutuel-3dsecure.com> was registered on August 13, 2010. According to Complainant, it directed towards a page specifying that said domain name has been shutdown. The website was inactive at the time the Panel rendered its decision.
The domain name <3dsecure-creditmutuel.com> was registered on September 12, 2010. The two other domain names <3d-creditmutuel.com> and <creditmutuel-3dsecure.com> were registered on September 13, 2010. These three domain names were not included in the Complaint as filed. They were later sought to be added by Complainant.
Complainant is specialized in bank and finance services.
Complainant is the holder of the following trademark registrations:
CREDIT MUTUEL No. 1475940, French trademark filed on July 8, 1988 in classes 35, 36;
CREDIT MUTUEL No. 1646012, French trademark filed on November 20, 1990 in classes 16, 35, 36, 38 and 41;
CREDIT MUTUEL No. 570182, International trademark registered on May 17, 1991 in classes 16, 35, 36, 38 and 41.
Respondent in the present Complaint is Philippe Marie, localized in France. The Panel explains below why the registrants of the domain names <3dsecure-creditmutuel.com>, <3d-creditmutuel.com> and <creditmutuel-3dsecure.com> are not considered as respondents in the present procedure.
5. Parties’ Contentions
First, Complainant asserts that the disputed domain names are identical or confusingly similar to the Complainants’ trademark CREDIT MUTUEL.
Second, Complainant alleges that Respondent as well as Godaddy Software and Olivier Prot have no rights or legitimate interests in the disputed domain names. Complainant claims that they are not related to it. Complainant further claims that they have not been granted any licence or authorization to use the trademark CREDIT MUTUEL and that they have not engaged in any action expressing any rights or legitimate interests.
Third, Complainant contends that the disputed domain names were registered and are used in bad faith due to the reputation of the trademark CREDIT MUTUEL. Among other things, Complainant claims that Respondent as well as Godaddy Software and Olivier Prot could not have ignored the trademark CREDIT MUTUEL when registering the domain names. Furthermore, it asserts that the domain names have been used in bad faith.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The preliminary issue of multiple respondents
Before determining whether the domain names involved in the present procedure are to be transferred to Complainant, the Panel has to determine, based on the Rules and the previous UDRP decisions, whether Philippe Marie, Godaddy Software and Olivier Prot can be treated as multiple respondents, for the purpose of replying to a single, “consolidated” complaint in a single proceeding. So as to resolve the issue, the Panel has to determine, inter alia, whether they can be considered as one single domain name holder.
This issue of multiple respondents has already been addressed by various Panels. It was recently addressed in Accor v. Jose Garcia, Jan Cerny, and N/A,Dopici Nasrat, WIPO Case No. D2010-0471. In that case the panel stated:
“4.2 The starting point is that normally it is not possible to commence a single UDRP proceeding in relation to domain names registered in the name of more than one person. Paragraph 3(c) of the Rules states that “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”, and although this is permissive rather than a proscriptive provision, the intent of the drafters of the Rules seems reasonably clear. Thus, in a case where a complaint is filed against multiple unconnected respondents, a panel may continue that case against one of the respondents and dismiss it against the others (see for example The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132).
Since the domain names are not registered by a person whose name is strictly identical on the domain names whois pages, the Panel has to determine, inter alia, whether there is common control of all domain names involved in the complaint.
Common control can be determined based on various features, such as the following:
- the use of the same Registry and privacy service;
- the fact that the registrants are located in the same country;
- the similarity of the domain names involved;
- the fact that all the domain names are being used for the same purpose.
(See RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894). In such cases, it is also necessary to consider whether consolidation of multiple Respondents in a single proceeding would be procedurally efficient and fair and equitable to all parties. See e.g. Akbank Turk A.S. v. Mr. Cihan Uluca, Andrew Espanza, Ahmet Mithat, WIPO Case No. DCO2010-0001.
The Panel considers that these features may be relevant or not depending on the facts at issue. For instance, the use of the same registrar could be totally irrelevant if said registrar is one of the most widely used across the world. However, if the registrar used by the registrants involved in the case is little known, of small size and mostly dedicated to one country, which also happens to be the country where the registrants are localized, that fact may be taken into account when determining whether there is common control.
In the end, it is the duty of the Panel to analyze each feature before deciding whether there is indeed common control.
In the present case, Complainant argues the following so as to conclude that Philippe Marie, Godaddy Software and Olivier Prot can be treated as multiple respondents appropriate for inclusion in a single amended complaint:
- Similarity of the domain names involved;
- Same registrar;
- Godaddy Software may have involuntarily revealed Olivier Prot’s identity for the domain names <3d-creditmutuel.com> and <creditmutuel-3dsecure.com> and, in the end, he is in fact holder of three domain names involved in the present case;
- Philippe Marie and Olivier Prot are located in the same country, France, and they both have an AOL email address;
- Close registration dates of some domain names involved in the present case;
- Disputed domain names are redirected to similar websites and use the same server.
The Panel deems that these data are not sufficient to conclude that there is common control of the domain names, for the reasons explained below.
6.1. Technical data
The registrar GoDaddy.com Inc is one of the most widely used registrars in the world. Millions of unrelated domain names are registered via GoDaddy.com Inc every year.
The Panel also takes note that Philippe Marie’s email address is email@example.com and that Olivier Prot’s email address is firstname.lastname@example.org. Both men use the same Internet service for their email addresses. This being said, AOL was one of the most widely used email service providers. There are still today many people using this service.
All the domain names have Godaddy servers but they don’t have the same DNS, which could have been a feature to take into consideration.
Godaddy Software is not a privacy shield service provided by GoDaddy but a registrar which operates as a subsidiary of the GoDaddy Group Inc, according to the investigation made by the Panel (See businessweek.com, Internet Software and Services, “Go Daddy Software, Inc.”, November 04, 2010). Even if Godaddy Software acted as a privacy shield service and mistakenly revealed Olivier Prot’s identity, it should have been demonstrated by Complainant.
In addition, regarding the alleged close registration dates of the domain names at issue, the Panel notes that the domain name <credit-mutuel-3dsecure.com> was registered about one month prior to the other domain name. Thus, in the Panel’s opinion, this cannot be considered “close dates” registrations.
In conclusion, the Panel deems that none of these different features can be considered conclusive indicia of common control of the domain names.
6.2 Identity of the three registrants of the domain names and their ties
The Panel considers that ties between the concerned registrants (or the absence of relevant evidence of such ties) are very important when assessing whether there is common control of the domain names.
One domain name is registered by a company localized in the United Stated of America and the other domain names are registered by two individuals localized in France.
This Panel finds Complainant has not demonstrated an existing connection between these two individuals and Godaddy Software. The alleged involuntary mention by Godaddy Software of Olivier Prot’s identity on the whois pages of the domain names <3d-creditmutuel.com> and <creditmutuel-3dsecure.com> does not prove any such connection.
Furthermore, the only similarity between Philippe Marie and Olivier Prot’s addresses is their country, France. Their addresses are otherwise completely different. According to the French white pages checked by the Panel, these two men do seem to exist (i.e. the names do not appear to be fictions or made up). However, there is no obvious similarity between the two individuals, and the Panel thus finds it impossible on the provided record to conclude that there is one single person or controlling entity behind these identities.
As a conclusion, the Panel deems that none of these different features can be considered conclusive indicia of common control of the domain names.
6.3 Similarity of the domain names and websites involved
The Panel accepts that the domain names <credit-mutuel-3dsecure.com>, <3dsecure-creditmutuel.com>, <3d-creditmutuel.com> and <creditmutuel-3dsecure.com> have visual, phonetic and intellectual similarities.
According to Complainant itself, the 3D SECURE service was set up so as to increase security for payments via credit cards. This service is described on Complainant’s website “www.creditmutuel.fr”. The Panel entered the expression “credit mutuel 3d secure” in the Google search engine and noticed that there are many results linking said bank to the 3D SECURE service.
In the end, Complainant does not imply that this service is well-known but that it is nevertheless mentioned and described on Complainant’s website “www.creditmutuel.fr” and that it is also present and mentioned in various websites not related to Complainant. Therefore, it seems that the 3D SECURE service is available to the public and it seems fair to say that anyone who wishes to register a domain name comprising the trademark CREDIT MUTUEL may include the expression 3D SECURE or a variant such as 3D. However, in the present case, the Panel deems that the similarities between the domain names cannot of itself lead to the conclusion that, on the present record, all of them case were necessarily registered by the same person or are under the common control of such individual.
Finally, the Panel notes, based on the Complaint and its relevant annexes, that the domain names were not activated. Inactive websites are so common these days that they cannot be considered, even with other features, as proof positive of common control.
In conclusion, this Panel deems that the above are insufficient to enable a finding of common control of the domain names.
The Panel has reached the conclusion that there is insufficient evidence before it to decide the issue of common control in favour of Complainant. Complainant has therefore failed to satisfy this Panel that all the domain names are under the control of a single entity. Furthermore, noting that the Complainant’s request to add additional domain names and respondents to its Complaint was received only after the proceedings had been notified and formally commenced by the Center, it is questionable whether such addition (implying as it does a resultant need for re-verification and notification of such amended Complaint to such respondents) would have been procedurally efficient in the circumstances.
Therefore, the Panel determines that present decision will be issued in relation to the domain name <credit-mutuel-3dsecure.com>, which is the only disputed domain name concerned in the Complaint as initially filed. Naturally, the Panel’s determination on this procedural issue would in no way prevent the Complainant from bringing a separate Complaint or Complaints with respect to the other domain names it sought to add to its initial Complaint only after filing.
A. Identical or Confusingly Similar
It is clearly proven beyond doubt that Complainant has rights in the trademark CREDIT MUTUEL for purposes of paragraph 4(a)(i) of the Policy.
Complainant’s trademark is incorporated in the disputed domain name in its entirety with the adjunction of the expression “3dsecure”, which is a reference to a service offered by Complainant to increase security for credit card payments.
The adjunction of this expression is likely to reinforce the association with Complainant to the extent that it provides the 3D SECURE service.
The two “-” (hyphens) present in the domain name do not change this analysis.
As for the adjunction of the gTLD “.com”, it is now well established that the generic top-level domain, in this case “.com”, would typically be excluded from consideration when determining whether the domain name at issue is identical or confusingly similar to the trademark held by Complainant. It is indeed a functional or generic component of the domain name (Gerling Beteiligungs-GmbH (GBG) v. World Space Corp, WIPO Case No. D2006-0223).
Therefore, the Panel finds that Complainant has succeeded in demonstrating managed to demonstrate that the disputed domain name is confusingly similar to the trademark CREDIT MUTUEL and therefore, it has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, Respondent may demonstrate its rights and interests in the contested domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use or demonstrable preparations to use, the contested domain name or name(s) corresponding to contested domain name in connection with a bona fide offering of goods or services before any notice to them of the dispute, or
(ii) it (as individual, a business, or other organizations) has been commonly known by the contested domain name, even if it acquired no trademark or service mark rights, or
(iii) it is making a legitimate noncommercial or fair use of the contested domain name, without intent for commercial gain to misleadingly divert internet users or to tarnish the trademark or service mark at issue.
Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such a prima facie case is made, Respondent carries the burden of rebuttal, or it may be concluded that Respondent lacks rights or legitimate interests in the domain name, under paragraph 4(c) of the Policy.
Respondent has not made any effort to use the domain name for any purpose that might explain its registration choice in a manner consistent with having rights or legitimate interests. (See Chocoladefabriken Lindt & Sprüngli AG v. Jules Mass & Yuan Yuan Chou, WIPO Case No. D2007-0446, and Chocoladefabriken Lindt & Sprüngli AG v. Domain Magic LLC, WIPO Case No. D2007-0461).
Indeed, there is no evidence that Respondent holds registered trademarks in any countries consisting of / comprising the element CREDIT MUTUEL. There is also no evidence that Respondent has ever filed applications for the registration of such trademarks. Furthermore, it seems unrealistic that Respondent happened to register a domain name containing the trademark CREDIT MUTUEL with the expression “3dsecure”.
Taking into account of all these elements, it is quite obvious that Respondent never intended to conduct a legitimate activity via the domain name at issue.
The Panel has noted Complainant’s allegation that the domain name was registered to engage in a phishing activity, however the Panel has also noted that Complainant has not provided any evidence regarding this allegation. Complainant only argued that a phishing attack was conducted from the URL http://www.3dsecure-creditmutuel.com/identification/ which concerns the domain name 3dsecure-creditmutuel.com but not from the disputed domain name per se.
In any event, as previously observed, Respondent has not made any attempt to rebut the prima facie case made by Complainant. Therefore, the Panel may decide this dispute on the basis of Complainant’s undisputed contentions of fact. Although Respondent’s default does not automatically result in a decision in favour of Complainant, the Panel may draw negative inferences from the same (see Unilever N.V. v. Kentech, WIPO Case No. D2005-1021).
Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the domain name, thus the requirements of paragraph 4(a)(ii) are also satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of bad faith registration and use, namely:
(i) circumstances indicating that Respondent has registered or acquire the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainants who are the owner of the trademark or service mark or to a competitor of Complainants, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(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
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on the web site or location.
It should be noted that the circumstances of bad faith are not limited to the above.
C.1. Registered in bad faith
Complainant’s trademark is incorporated in the disputed domain name in its entirety with the adjunction of the expression “3dsecure”, which is a reference to a service offered by Complainant to increase the security of credit card payments.
Besides, Complainant’s trademark CREDIT MUTUEL is well known (Confédération Nationale du Crédit Mutuel v. DomainsByProxy/Gomes Paulo, WIPO Case No. DWS 2008-001). Accordingly, the Panel believes that Respondent knew of the existence of Complainant at the time the disputed domain name was registered. (See Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955; Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556).
The Panel finds it is more than likely that the fame of the trademark CREDIT MUTUEL was the reason why Respondent decided to register the domain name. Had said mark been unknown, such registration would have been far less appealing. In addition, as previously stated in the present decision, it seems unrealistic that Respondent “just happened” to register a domain name containing the trademark CREDIT MUTUEL with the expression “3dsecure”.
These findings lead the Panel to conclude that the domain name in dispute has been registered in bad faith by Respondent.
In order to meet the requirement of paragraph 4(b) of the Policy, it is not sufficient to prove that the domain name is registered in bad faith, it is also necessary to prove that the domain name is being used in bad faith.
C.2. Used in bad faith
The domain name was inactive at the time the Panel rendered its decision and when the complaint was filed.
As stated previously, the Panel has noted Complainant’s allegation that the domain name was registered to engage in a phishing activity, however the Panel has also noted that Complainant has not provided any evidence regarding this allegation. Complainant only argued that a phishing attack was conducted from the URL http://www.3dsecure-creditmutuel.com/identification/ which concerns the domain name <3dsecure-creditmutuel.com> but not the disputed domain name per se.
Nevertheless, it has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well known trademark, without obvious use for legitimate Internet-related purpose, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy.
Indeed, the concept of a domain name “being used in bad faith” is not limited to positive action; inaction may be included within that concept. Therefore, in certain circumstances, passive holding of the domain name can amount to bad faith use. In the present case, the circumstances are the following: Respondent’s registration was confusingly similar to Complainant’s mark, which is well-known, Respondent failed to respond to this Complaint, which suggests that Respondent was aware that he had no rights or legitimate interests in the domain name at issue and that the disputed domain name had been registered and is being used in bad faith (See Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273).
The Panel therefore concludes that Respondent registered and is using the domain name in bad faith according to paragraph 4(a)(iii) 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 <credit-mutuel-3dsecure.com> be transferred to Complainant.
Dated: November 12, 2010