World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BPCE (Banque Populaire/ Caisse d’Epargne) v. Janice Liburd/Moniker Privacy Services

Case No. D2011-0555

1. The Parties

The Complainant is BPCE (Banque Populaire/ Caisse d’Epargne) of Paris, France, represented by Haas Société d’Avocats, France.

The Respondent is Janice Liburd of Panama, Panama and Moniker Privacy Services of Pompano Beach, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <caisse6epargne.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on March 28, 2011. On March 28, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On April 4, 2011, Moniker Online Services, LLC. 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 Center sent an email communication to the Complainant on April 8, 2011 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 April 13, 2011.

The Center verified that the Complaint together with 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 April 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2011.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on May 11, 2011. 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 the French banking group called BPCE, organized under the laws of France. The Complainant is the second largest banking group in France and provides a comprehensive range of banking, financial and real estate services to all types of customers. In June, 2009, the Complainant became the owner of both Caisse D’Epargne and Banque Populaire.

The Complainant owns trademark registrations for CAISSE D’EPARGNE & Design under Community Trademark Registration No. 637,504 registered on April 8, 1999 and French Trademark Registration No. 1,658,134 applied for on April 26, 1991 and duly renewed in April 2001.

The Complainant has used the trademark CAISSE D’EPARGNE in its 4,242 regional offices that provide services to 27 million clients.

The Complainant has sponsored many sporting events and sport teams over the years under the CAISSE D’EPARGNE banner, such as Football French Cup Partner (2004-2010), UCI Pro Tour Cycling Team (2005-2010), Marathon of Paris (2011), Official Partner of French Skiing Federation (2005-2011), and is an Official Partner of the Olympic Games in Annecy 2018.

The Complainant also owns several domain names with comprise or include the words “caisse” and “epargne”, namely: <caisse-epargne.com>; <caissedepargne.com>; and <caisseepargne.com>.

The Respondent registered the disputed domain name <caisse6epargne.com> on February 8, 2011. At the time the Complaint was filed, the domain name <caisse6epargne.com> reverted to a website which provides links to sites of third parties who are competitors of the Complainant.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant owns the trademark CAISSE D’EPARGNE, registered as Community Trademark Registration No. 637,504 and French Trademark Registration No. 1,658,134. The Respondent has registered the domain name <caisse6epargne.com> which is identical to the Complainant’s registered trademark, except for the replacement of the letter “d” with the number “6” between the words “caisse” and “epargne”. The replacement of the letter “d” with the number “6” does not reduce the high degree of similarity between the domain name and the Complainant’s trademark, in that the letter “d” and the number “6” share visual, aural and conceptual similarities. Further confusion is created with the Complainant’s domain name <caisse-epargne.com> because of the unique replacement of the dash “-” with the number “6” on Azerty keyboards, commonly called “the 6 dash”.

Rights or Legitimate Interests

The Respondent is not publicly known by the Caisse d’Epargne name, and the Complainant submits that the Respondent cannot have any rights or legitimate interest in the domain name, because the Complainant has exclusive rights to the trademark CAISSE D’EPARGNE. The Respondent has no past or current business relationship with the Complainant, and the Respondent was never licensed or otherwise authorized to use the Complainant’s trademark. Further, the Respondent is not making a bona fide use of the disputed domain name, and has used the domain name in connection with a website which provides links to third party websites which are direct competitors of the Complainant.

Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent must have known about the Complainant’s rights in the trademark CAISSE D’EPARGNE when it registered a confusingly similar domain name; (ii) the Respondent’s replacement of the dash “-” by the number “6” is intended to misdirect French Internet users from the Complainant’s site to the Respondent’s site by capitalizing on typing mistakes made on the common French Azerty keyboard; (iii) the Respondent did not respond to cease and desist letters sent by the Complainant; and (iv) the Respondent registered and is using a confusingly similar domain name which reverts to a website which provides links to website of direct competitors of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have trademark rights in the mark CAISSE D’EPARGNE by virtue of Community Trademark Registration No. 637, 504 and French Registration No. 1,658,134.

The Panel further finds that the domain name <caisse6epargne.com> is identical to the Complainant’s registered trademark CAISSE D’EPARGNE, except for the replacement of the letter “d” with the number “6”. The replacement of the letter “d” with the number “6” does not serve to distinguish the domain name from the Complainant’s trademark. The Panel notes that the two dominant elements of the Complainant’s trademark and the disputed domain name are the words “caisse” and “epargne”, and the Panel therefore agrees with the Complainant’s contention that when placed side by side <caissedepargne.com> and <caisse6epargne.com> are visually and aurally confusingly similar.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel notes that the Respondent did not file any response to the Complaint and accordingly did not contest any of the facts stated in the Complaint. The Panel is therefore prepared to accept the Complainant’s contention that its CAISSE D’EPARGNE trademark and its financial and banking services are well-known, with a well-developed reputation.

The Panel is prepared to infer that the Respondent knew of the Complainant’s trademark and banking and financial services when the Respondent registered the disputed domain name in February 2011.

The Panel finds no evidence that the Respondent is commonly known by the name “Caisse d’Epargne”, or that it was licensed or authorized by the Complainant to use the trademark CAISSE D’EPARGNE, or has any other form of legitimate interest in the “Caisse d’Epargne” name.

The Complainant has therefore satisfied the requirements under paragraphs 4(a)(ii) and 4(b) of the Policy.

C. Registered and Used in Bad Faith

The Panel, upon review of the evidence filed in the Complaint, and taking into consideration that the Respondent did not file any response contesting the facts contained therein, finds that the Respondent registered and has used the disputed domain name in bad faith.

The Panel finds that the Respondent was most likely aware of the Complainant’s trademark rights when it registered a confusingly similar domain name, and when it began operating a website in connection with that confusingly similar domain name which provides links to other websites operated by direct competitors of the Complainant. The Panel finds that the use of a confusingly similar domain name in association with a website that provides links to a Complainant’s competitors’ websites for the purposes of monetary gain to be evidence of bad faith under the Policy.

Further, the Panel is further prepared to find that the Respondent chose to replace the letter “d” with the letter “6” in the disputed domain name in an attempt to direct Internet users looking for the Complainant’s website to the Respondent’s site. The replacement of the letter “d” or the dash “-” with the number “6” constitutes typosquatting, which also supports a finding of bad faith under the Policy.

Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraphs 4(a)(iii) and 4(c) under the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <caisse6epargne.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Dated: May 25, 2011

 

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