WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caisse Nationale des Allocations Familiales v. Domain Discreet Privacy Service / Medya Grup, Ozaltin Haydar
Case No. D2012-0877
1. The Parties
Complainant is Caisse Nationale des Allocations Familiales, Paris, France, represented by SELARL du Manoir de Juaye, France.
Respondent is Domain Discreet Privacy Service, West Jacksonville, Florida, United States of America / Medya Grup, Ozaltin Haydar, Istanbul, Turkey, represented by Laurent Ducharlet, France.
2. The Domain Name and Registrar
The disputed domain name <allocation-caf.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2012. On April 24, 2012, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On the same date, Register.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 Center sent an email communication to Complainant on May 1, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 9, 2012.
The Center verified that the Complaint together with the amendment to 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 May 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2012. The Response was filed with the Center on May 29, 2012.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on June 15, 2012. 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
Complainant in this case, Caisse Nationale des Allocations Familiales, is a French national public authority created to provide the financing of family benefit schemes in France. In relation to these services, Complainant is using the following registered trademarks of which it is the holder:
- French verbal mark CAF registered on October 26, 1989 under number 1718238, and duly renewed;
- French verbal mark CAF registered on October 28, 2009 under number 3687052;
- French semi-figurative mark ALLOCATIONS FAMILIALES CAF registered on March 25, 1999 under number 99782908, and duly renewed;
- French semi-figurative mark ALLOCATIONS FAMILIALES CAF registered on April 11, 2003 under number 3220366.
The disputed domain name has been registered on August 31, 2010. Respondent uses the disputed domain name in connection with a website showing information on state income support and family and housing benefits in France together with ”annonces Google”.
5. Parties’ Contentions
Complainant considers the disputed domain name to be confusingly similar to the trademarks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interest in respect of the disputed domain name. According to Complainant, Respondent has not used the disputed domain name in connection with a bona fide offering of services or a legitimate noncommercial use, as Respondent would be creating confusion by offering services normally offered by Complainant as a public service. Also, Respondent has not been commonly known by the disputed domain name, according to Complainant. Finally, Complainant considers that the disputed domain name was registered and is being used in bad faith.
Respondent considers the disputed domain name not to be confusingly similar to the Complainant’s trademarks as there would be multiple holders of a registered CAF trademark in France and the disputed domain name contains the word “allocation” whereas Complainant’s trademark contains the word “allocations”. Furthermore, Respondent claims that there can be no confusion as it mentions on its home page that its services are separate from the administration. Respondent also claims to make a legitimate and loyal noncommercial use of the disputed domain name.
Finally, Respondent considers that it did not register or use the disputed domain name in bad faith, as Respondent would have been unable to know that the disputed domain name could be a trademark. Respondent contends that it registered the disputed domain name for the purpose of informing Internet users from around the world about the rights to allowances provided by the French government.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is a trademark in which it has rights. The mark has been registered and used in France, which is the country that Respondent seems to target with the website that is linked to the disputed domain name.
The Panel considers the disputed domain name <allocation-caf.com> to differ from the ALLOCATIONS FAMILIALES CAF trademark by the substraction of the letter “s” in the word ”allocations”, the removal of the generic word ”familiales” and the addition of a hyphen. According to the Panel, the disputed domain name contains the most distinctive elements of Complainant’s ALLOCATIONS FAMILIALES CAF trademark and the abovementioned differences between the trademark and the disputed domain name are insufficient to remove the confusing similarity. See La Quinta Worldwide L.L.C. v. Satoshi Shimoshita, WIPO Case No. D2007-1241, where the fact that disputed domain name contained the principal textual element of the majority of complainants trademarks and the addition of a hyphen were considered insufficient to remove the confusing similarity; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768, where the omission of letters and the addition of a hyphen were considered insufficient to remove the confusing similarity; see also Creative Nail Design, Inc. and Colomer USA, Inc. v. Creative Nails, c/o E Designers Ltd, WIPO Case No. D2006-0873.
Accordingly, Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Previous UDRP decisions establish that it is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the domain name in order to place the burden of production on Respondent. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that Respondent has not been commonly known by the disputed domain name and that Respondent has not acquired trademark or service mark rights incorporating such name. Respondent’s use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed or exists.
The Panel also concludes that Respondent is not 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)(iii). First, there is a high likelihood that Respondent is making “commercial gain” by virtue of providing sponsored links (“annonces Google”’) on the Web page. That “commercial gain” appears to be based on the misleading diversion of some consumers, to the extent they navigate to the “www.allocation-caf.com” website because they believe it associated with the Complainant. And, Respondent’s use of the disputed domain name to resolve to a Web page offering services that are also offered by Complainant together with the provision of third party links (“annonces Google”’) cannot be considered fair on the facts of this case. Registering a domain name for such pages might be fair, and hence legitimate, if the domain name were being used for its generic or descriptive value and if the sponsored links on the page were related to that generic or descriptive value. See, e.g., Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 285459 (legitimate interest “[if] the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”); National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424 (“A number of Panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of the complainant […] It is clear, however, that the respondent must be using the domain name not in the trademark sense but in the descriptive sense, to communicate some aspect of the services offered.”); Havanna S.A. v. Brendan Hight, Mdnh Inc, WIPO Case No. D2010-1652 (“Prior decisions under the UDRP show there may well be a legitimate interest if the domain name is a generic word or a geographic indicator, provided it is not used to trade on the trademark owner’s goodwill”). However, it is not legitimate to register a domain name and use it for a Web page with sponsored links, where such domain name contains a trademark and has no dictionary or descriptive meaning, and where the sponsored links have no relationship to any alleged descriptive meaning of the domain name. See Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598 (“The Respondent is correct that registering a domain name for its descriptive value may constitute a legitimate interest for the purposes of paragraph 4(c) of the Policy. However, this proposition is true only so long as the domain name has not been registered because of its value as a trademark, and only if it is being used solely in connection with its descriptive meaning […]. It is by now well established that PPC parking pages built around a trademark (as contrasted with PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii).”) (citing mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Mobile Communication Service Inc v. WebReg, RN, WIPO Case No. D2005-1304; Gerber Products Co. v. LaPorte Holdings, WIPO Case No. D2005-1277; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Champangne Lanson v. Development Services/MailPlanet.com, WIPO Case No. D2006-0006; and The Knot, Inc. v. In Knot we Trust Ltd, WIPO Case No. D2006-0340).
In the instant case, there is no dictionary meaning for the term “caf”, which forms part of Complainant’s trademarks and the disputed domain name that is confusingly similar to these trademarks. The value of the disputed domain name to Respondent is, therefore, its value as a trademark referring to Complainant. This is clearly shown by the fact that Respondent is offering services that are also offered by Complainant using its ALLOCATIONS FAMILIALES CAF trademarks. Therefore, the Panel believes that Respondent’s use of the disputed domain name is detrimental to Complainant and cannot be considered to constitute a bona fide commercial use or a noncommercial or fair use.
C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Web site or location or of a product or service on the web site or location.
In the present case, it is inconceivable that Respondent was unaware of Complainant and its trademark rights when it registered the disputed domain name. It is apparent from the website linked to the disputed domain name that Respondent is familiar with the social security sector in France in which Complainant is actively involved and for which its CAF trademarks are used in association with allowances (”allocations” in French). According to the Tribunal de Grande Instance de Paris, the Complainant’s CAF mark is reputed in France, prior to May 31, 2010 (which is prior to the date of registration of the disputed domain name). For these reasons, it is inconceivable that Respondent was unaware of Complainant’s rights in the CAF and ALLOCATIONS FAMILIALES CAF trademarks.
Furthermore, without authorization, Respondent is using Complainant’s trademark for the provision of services, that are also offered by Complainant, while it seems likely that Respondent is making commercial gain out of sponsored links. Hence, the Panel opines that Respondent tries to intentionally attract Internet users to visit its website for commercial gain, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the web site or location and of the products offered for sale on the website. The Panel finds that Respondent’s claim that there can be no confusion as it mentions on its home page that its services are separate from “the administration” does not by itself cure bad faith. See paragraph 3.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and is being used in bad faith.
For 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 <allocation-caf.com> be transferred to Complainant.
Flip Jan Claude Petillion
Dated: July 24, 2012