WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BPCE v. PrivacyProtect.org / Maksym Pastukhov
Case No. D2010-1666
1. The Parties
The Complainant is BPCE of Paris, France, represented by HAAS Société d’Avocats, France.
The Respondent is PrivacyProtect.org / Maksym Pastukhov of Moergestel, the Netherlands, and of Alchevsk, Luhansk Oblast, Ukraine, respectively (collectively the “Respondent” except where expressly indicated).
2. The Domain Name and Registrar
The disputed domain name <epargnecaisse.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2010. On the same day, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On October 5, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The registrant had utilized a privacy service however the Registrar communicated the name and contact information of the registrant behind the privacy service. The Center sent an email communication to the Complainant on October 5, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 8, 2010.
The Center verified that the Amended 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 October 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2010. On October 8, 2010, the Respondent communicated directly with the Complainant via email, The Complainant’s counsel replied to that communication informing the Respondent that all communications should occur through the Center. Following that exchange, the Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2010.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on November 4, 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 Complainant is a French banking group created following the merger of Banque Populaire and Caisse d’Epargne. The Complainant holds the French figurative trademark CAISSE D’EPARGNE and design (No. 1658134) registered under classes 9, 16, 35, 36, 37, 38, 39, 41 and 42 with a priority date as of April 26, 1991, following a transfer of ownership dated November 25, 2009. The Complainant also is the owner of the figurative Community Trademark No. 637504, filed on September 24, 1997 and registered on April 8, 1999 in classes 9, 16, 35, 36, 38, 41 and 42.
The disputed domain name was registered on June 24, 2010.
On July 13, 2010, after having discovered the existence of the disputed domain name, the Complainant addressed to the designated registrant, through PrivacyProtect.org, a formal cease and desist letter in French, requesting the transfer of the disputed domain name. On the same day, the Complainant received an email from a Mr. Kozlovcki, in which the sender stated that he was the owner of the disputed domain name and requested to be sent all documents in English as he claimed not to understand French.
Following that email from the claimed owner of the disputed domain name, the Complainant replied on July 20, 2010 with an English version of the cease and desist letter, informing the recipient that in the absence of an answer to the injunction, the Complainant would take all legal actions to obtain the transfer of the disputed domain name.
The Complainant did not receive any further email from the said Mr. Kozlovcki, but noticed that the website of the disputed domain name had been modified and was not anymore displaying on its homepage a squirrel similar to the mascot of the Caisse d’Epargne, one of the legal subsidiaries of the Complainant.
The Complainant filed a Complaint with the Center on October 4, 2010 and an amended Complaint on October 8, 2010, following the disclosure by the Registrar of the name and contact information of the underlying registrant of the disputed domain name.
Following the notification of the amended Complaint to the registrant, the second named Respondent, Maksym Pastukhov, sent an email to the Complainant on October 8, 2010, inquiring how the domain name could be transferred to the Complainant. The Complainant replied, re-directing the Respondent towards the Center through which all communications must go during the proceedings.
No further emails or communications between the parties have been submitted and the Respondent’s default was notified by the Center to the Parties on November 1, 2010.
5. Parties’ Contentions
The Complainant first argues that the disputed domain name <epargnecaisse.com> is identical or confusingly similar to its trademarks CAISSE D’EPARGNE, as the inclusion of the entire distinctive sequence of its trademarks creates important visual, aural and conceptual similarities with the said protected trademarks. The Complainant stresses the fact that the mere inversion of the two words does not exclude a likelihood of confusion between the disputed domain name and the Complainant’s rights, and that the absence of the letter “D” is not in itself sufficient to exclude the high similarities.
The Complainant reinforces its position on a potentially high risk of confusion by mentioning the reputation of the Complainant’s trademarks.
The Complainant then asserts that the Respondent has no right or legitimate interest in respect of the disputed domain name, as the Complainant has never granted any license or authorization to use its protected trademarks and the disputed domain name does not correspond to the Respondent’s names or businesses.
Finally, the Complainant alleges that the disputed domain name was registered and is being used in bad faith. In that regard, the Complainant invokes its reputation and well-known establishment in France to show that the Respondent knowingly registered the disputed domain name despite the existing protected rights in that name. In addition, the Complainant points out that the words used in the disputed domain name do not have any specific meaning in other languages but French, and that the website linked to the disputed domain name contains pages written in French only and displays a picture of the street where the Complainant’s headquarters are located. The Complainant additionally mentions the fact that following its email exchange of July 2010 with the claimed owner of the disputed domain name, the representation of a squirrel, which is the Complainant’s mascot, has been deleted from the website linked to the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this 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 view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to the Rules, paragraphs 5(e), 14(a) and 15(a) and will draw such inferences as it considers appropriate pursuant to the Rules, paragraph 14(b).
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be 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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Before addressing the above, a preliminary matter needs to be examined by this Panel, i.e., the issue of the identity of the proper Respondent to the present Complaint.
A. Procedural matters
As stated in the brief summary on the procedural history above, the Complaint was originally filed against PrivacyProtect.org (also mentioned as “X” or “anonymous”) as the sole Respondent, consistent with the WhoIs-listed registrant information appearing in the Registrar’s database as of October 4, 2010, when the Complaint was filed with the Center.
The Complaint has however been amended following the disclosure by the Registrar of the second named Respondent’s identity in its verification response to the Center. The amended Complaint thus now names the two Respondents and has been notified to all named Respondents.
The situation where a registrant wants to acquire a domain name but does not want to disclose its identity and therefore uses privacy services to protect his/her identity is not unknown to UDRP panels. The various questions raised by that situation and in particular the question of the identity of the proper respondents between the privacy service originally named in the Complaint and the underlying registrant disclosed by the Registrar has already been discussed and has not so far resulted in a consensus position among UDRP panels.
The Panel is of the opinion that the correct approach in that type of case is the pragmatic approach to treat both the privacy service and the underlying registrant as the Respondent (see Aluship Technology SP. Z O.O v. Belize Domain WHOIS Service, WIPO Case No. D2009-0028 and Reasearch in Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320). The Panel is indeed satisfied that the Complaint was originally filed against the correct Respondent since it was the one appearing in the Registrar’s publicly available WhoIs as the registrant at the time of the filing. The Panel also believes that it is correct to also treat the underlying registrant as a Respondent in the commenced proceedings. In Mark Alan Pearson and Marco Media Limited v. Domains by Proxy, Inc. and China Snake Media, WIPO Case No. D2009-0253, the panel expressed the following view to which this Panel adheres: “[t]he [p]anel proposes to treat [the underlying registrant] as the substantive [r]espondent”.
This opinion appears to the present Panel as a sensible and pragmatic position. The privacy provider needs however also to be treated as the Respondent in this Panel’s view since it results from the Rules, paragraph 1, that a UDRP complaint must be filed against the person identified as the registrant in the Registrar’s WhoIs database at the time the Complaint is submitted.
In conclusion, this Panel is of the opinion that the Complaint was originally filed against the valid Respondent – PrivacyProtect.org – and the amended Complaint identified a valid second Respondent – Maksym Pastukhov – that will be treated as the substantive Respondent in the present case.
B. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the right holder of the French and Community trademarks CAISSE D’EPARGNE, following a transfer of property from Caisse Nationale des Caisses d’Epargne et de Prévoyance to the Complainant. In addition, it is unquestionable that the Complainant’s trademark registrations pre-date the Respondent’s domain name registration.
The disputed domain name <epargnecaisse.com> is composed of the same two words as the Complainant’s trademarks, “caisse” and “epargne”, which have been inversed, the letter “D” in the middle having simply been suppressed. In the French language, which is the language of the country where the Complainant has its registered seat as well as the language used on the website linked to the disputed domain name, the letter “d” followed by an apostrophe is a simple liaison article, corresponding to the word “of” in the English language.
The Panel finds that the disputed domain name <epargnecaisse.com> is confusingly similar to the Complainant’s registered trademarks since it reproduces the two words constituting the trademark CAISSE D’EPARGNE, and the mere inversion as well as the suppression of the letter “d” are not sufficient to exclude confusing similarity.
As several panels have previously stated, a domain name which incorporates a complainant’s trademark is likely to be confused with the said trademark and the fact that the words are inversed is not significant (see Citibank Privatkunden AG & Co. KGaA v. PrivacyProtect.org / N/a, indish india mr.ugala, WIPO Case No. D2010-1147, and Credit Industriel et Commercial S.A., Banque Fédérative du Crédit Mutuel v. Headwaters MB, WIPO Case No. D2008-1892).
In light of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the Policy, paragraph 4(a)(i) has been satisfied with regards to the disputed domain name.
C. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
This condition of paragraph 4(a)(ii) requires the Complainant to prove a negative fact, which often proves to be an impossible task for the complainant since it often requires information that is primarily within the knowledge of the respondent. In Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, the panel stated in that regard that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. A consensus view has since been developed by subsequent panels, according to which a complainant is required to make a prima facie case that the respondent lacks rights or legitimate interests; once such prima facie case has been made, the respondent then carries the burden of demonstrating rights or legitimate interests in the disputed domain name (see e.g. Belupo d.d. v. Wachem d.d.o., WIPO Case No. D2004-0110).
In the present case, the Panel finds that the Complainant has made a prima facie case showing that the Respondent has no right or legitimate interest in the disputed domain name. It is therefore the Respondent’s burden to demonstrate rights or legitimate interests by showing, among other circumstances, any of the following elements:
(i) Before any notice to him of the dispute, he used or made 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 is commonly known by the domain name, even if he 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.
In the case at hand, despite a valid notification of the amended Complaint, the Respondent did not respond to the Complainant’s allegations and therefore did not rebut the Complainant’s prima facie case, failing to invoke any circumstances that could demonstrate any rights or legitimate interests in the disputed domain name.
The Panel observes that there is no relation between the Respondent and the Complainant, nor is there any indication that the Respondent is commonly known by the disputed domain name. In addition, the Panel finds no evidence that the Respondent has made preparations to use the disputed domain name to make a bona fide offer of goods and services; on the contrary, the Panel has been informed of the second named Respondent’s offer to transfer the disputed domain name to the Complainant, following the notification of the amended Complaint.
Consequently, in light of the above, the Panel considers the Policy, paragraph 4(a)(ii) to be fulfilled.
D. Registered and Used in Bad Faith
For the Complaint to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith, according to paragraph 4(a)(iii) of the Policy.
To have registered the disputed domain name in bad faith, the Respondent must first have been aware of the existence of the Complainant. Considering the evidence brought by the Complainant, and in particular the screenshots of the website linked to the disputed domain name, both before and after the notification of the Complainant’s cease and desist letter, the Panel is convinced that the Respondent was well aware of the existence of the Complainant.
In the first place, the image displayed on the website linked to the disputed domain name is a picture of the street where the Complainant’s headquarters are located. The display of this image cannot be found to be a coincidence, since the same website was also displaying a picture of a squirrel extremely similar – if not identical – to the Complainant’s mascot, which is used in relation with the marketing of the Complainant’s goods and services and is well-known by the general public. The Panel finds therefore that the Respondent most likely intended to use the Complainant’s goodwill and reputation to attract customers for its own commercial gain.
In addition, the evidence brought by the Complainant shows that the language used on the website related to the disputed domain name is French, which is also the official language used by the Complainant, which clearly indicates the intent of the Respondent to divert the Complainant’s customers for its own commercial gain.
The Respondent’s bad faith is furthermore evidenced by the fact that immediately following the notification of the amended Complaint by the Center, the Respondent sent an email directly to the Complainant to offer the transfer of the disputed domain name. Although the Respondent did not claim any amount of money in exchange of the transfer of the disputed domain name, it is highly doubtful that the owner of a domain name having the intent to use such domain name in good faith would not try and at least defend its own position before offering an immediate transfer to a claiming party.
All the facts above are therefore clear evidence of the Respondent’s intent to use the Complainant’s reputation and goodwill to divert customers and clearly show the Respondent’s bad faith under 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 <epargnecaisse.com> be transferred to the Complainant.
Dated: November 12, 2010