WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Credit Agricole S.A. v. Wang Rongxi

Case No. D2012-0258

1. The Parties

The Complainant is Credit Agricole S.A. of Montrouge Cedex, France, represented by Nameshield, France.

The Respondent is Wang Rongxi of Yiwu, Zhejiang, China.

2. The Domain Name And Registrar

The disputed domain name <creditagricole.mobi> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2012. On February 10, 2012, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn. a request for registrar verification in connection with the disputed domain name. On February 13, 2012, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 13, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.

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 February 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2012. The Center received email communications from the Respondent and a reply from the Complainant on April 21, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the parties of the procedure update on March 12, 2012.

The Center appointed Jonathan Agmon as the sole panelist in this matter on March 20, 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

The Complainant is Credit Agricole S.A., a French banking group, which also engages in asset management and insurance.

The Complainant provides its services worldwide to approximately 60 million clients. The Complainant operates a network of 11,850 offices in more than 20 countries and manages 164,000 collaborators in more than 70 countries.

The Complainant owns multiple worldwide trademark registrations for the marks CREDIT AGRICOLE and CA CREDIT AGRICOLE. For example: International trademark registration No. 441714 – CA CREDIT AGRICOLE (logo), with the registration date of October 25, 1978, designated, among others, to Germany, Spain and Russia; International trademark registration No. 525634 – CA CREDIT AGRICOLE (logo), with the registration date of July 13, 1988, designated, among others, to Switzerland, Czech Republic, Russia, Spain and Sweden; People's Republic of China trademark registration No. 526081 – CA CREDIT AGRICOLE (logo), with the application date of August 31, 1989; People's Republic of China trademark registration No. 6991430– CREDIT AGRICOLE, with the registration date of July 7, 2010; People's Republic of China trademark registration No. 6991431 – CREDIT AGRICOLE, with the registration date of August 28, 2010, and others.

The Complainant has also developed its presence on the Internet and is the owner of multiple domain names, which consist its CREDIT AGRICOLE trademark: <creditagricole.fr>, <creditagricole.com>, <creditagricole.net>, <creditagricole.info>, <creditagricole.cn> and more.

The disputed domain name <creditagricole.mobi> was registered by the Respondent on September 26, 2006.

On November 20, 2009, a representative of the Complainant sent the Respondent a letter, informing the Respondent of the Complainant’s rights in its trademark and offering the Respondent USD 400 as compensation for transferring the disputed domain name to the Complainant.

On November 25, 2009, the Respondent replied to the Complainant's letter. The Respondent denied previous knowledge of the Complainant and indicated that he does not intend to transfer the disputed domain name.

On January 13, 2010, the Respondent replied to further communications of the Complainant and indicated that although he initially did not intend to sell the disputed domain name, he was now willing to transfer the disputed domain name to the Complainant for a sum of at least USD 5000.

The disputed domain name resolves to an inactive webpage displaying an error page.

5. Parties’ Contentions

A. Complainant

The Complainant argues the disputed domain name is identical to its widely known CREDIT AGRICOLE trademark.

The Complainant further argues the addition of the gTLD ".mobi" is not sufficient to avoid the identity between of the disputed domain name and the Complainant's CREDIT ARICOLE trademark.

The Complainant further argues the term “credit agricole” is a French composition which is known especially in relation with the Complainant. Furthermore, the Complainant argues that the term “Agricole” lacks both English and Chinese dictionary meaning.

The Complainant further argues the Respondent is not affiliated with it nor authorized by it to use the CREDIT AGRICOLE or CA CREDIT AGRICOLE trademarks.

The Complainant further argues the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent is not related in any way to the Complainant’s business.

The Complainant further argues that the Respondent failed to prove a legitimate use of the disputed domain name.

The Complainant further argues the Respondent has registered the disputed domain name in knowledge of its trademarks CREDIT AGRICOLE and CA CREDIT AGRICOLE.

The Complainant further argues that when considering the distinctiveness and the notoriety of its trademarks and the location of the Respondent, it all reflects to that the use of the disputed domain name is not in good faith. The Complainant further contends that its goodwill in its trademarks was acknowledged by previous UDRP panel.

The Complainant further argues that the Respondent’s passive holding of the disputed domain name constitute bad faith use. Moreover, the Respondent’s use is preventing the Complainant from reflecting its mark in a corresponding domain name.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

On February 21, 2012, the Respondent sent an email communication to the Center stating that he had no knowledge of the Complainant’s trademark when he registered the disputed domain name and he registered it for self use only. But the Respondent is willing to negotiate a settlement with the Complainant. In reply to this communication, the Complainant sent an email communication to the Center providing further evidence of the bad faith registration and use of the disputed domain name by the Respondent and therefore declined the possibility to negotiate a settlement with the Respondent.

The Respondent did not file a formal response to reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural Issue – Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of proceedings should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

Upon deciding on the language of the proceeding, the Panel takes the following into consideration:

a) The disputed domain name consists of the English word "credit".

b) The Respondent did not object to the Complainant's request that English be the language of proceedings.

c) The earlier correspondence between the parties took place in the English language.

Upon considering the above, the Panel decides to accept the Complainant's request and rules that English be the language of proceedings.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The disputed domain name <creditagricole.mobi> integrates the Complainant's CREDIT AGRICOLE trademark in its entirety, as a dominant element. The disputed domain name differs from the CREDIT AGRICOLE trademark by the additional gTLD suffix “.mobi”.

Also, the disputed domain name differs from the CA CREDIT AGRICOLE trademark by the removal of the term "ca" and the additional gTLD suffix “.mobi”.

The addition of the gTLD ".mobi" to the disputed domain name does not avoid confusing similarity (See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD ".mobi” is without legal significance since the use of a gTLD is technically required to operate a domain name.

Also, the fact that the disputed domain name does not include the term "ca" does not avoid confusing similarity, since the term "ca" is an acronym for the Complainant's name and mark CREDIT AGRICOLE, which is the dominant part of the disputed domain name.

Consequently, the Panel finds that the Complainant had shown that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate Interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the CREDIT AGRICOLE trademark, or a variation thereof.

The Respondent has not submitted a formal response and in his email communication he did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the CA CREDIT AGRICOLE trademark since the year 1978. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using a domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.

The disputed domain name is identical to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

Furthermore, the disputed domain name <creditagricole.mobi> resolves to an inactive webpage. The Respondent had registered the disputed domain name, but did not put it to any use.

It was held in prior UDRP decisions that passive holding of domain names can, under certain circumstances, be considered bad faith use of the domain name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and alayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393).

In the present case, taking into consideration the goodwill the Complainant achieved in its trademark, which was acknowledged in Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683, and the fact that the Complainant's trademark is neither a common noun, nor a common name and the fact that the disputed domain name incorporated the Complainant's trademark as a whole, it is determined by the Panel that the passive holding by the Respondent is considered bad faith.

Also, from the evidence provided by the Complainant it is apparent that the Respondent offered the Complainant to transfer the disputed domain name on exchange for monetary compensation which is clearly in excess of the Respondent’s out-of-pocket costs to register and maintain the disputed domain name.

Circumstances where a respondent offers to sell the domain name for amounts, which are considered as valuable consideration in excess of the respondent's out of pocket costs directly related to the domain name, indicate bad faith on behalf of the respondent (see Merck KGaA v. Sunmeet Jolly, WIPO Case No. D2004-0195).

Although it appears that the Complainant did not provide the entire communications between the Complainant and the Respondent, which may shed a different light on the Respondent's offer, the Respondent failed to reply to the Complainant's assertions and did not rebut them.

Therefore, the Panel concludes that the Respondent's offer to transfer the disputed domain name for monetary compensation which is in excess of the Respondent’s out-of-pocket costs to register and maintain the disputed domain name is another indication of the Respondent's bad faith.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the passive holding of the disputed domain name by the Respondent, the identity between the disputed domain name to the Complainant’s marks, and the evidence given to the Panel indicating the Respondent’s attempts to sell the disputed domain to the Complainant at an excessive price, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of 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 disputed domain name <creditagricole.mobi> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: April 3, 2012