WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Visa Europe Limited v. Lycos
Case No. D2011-0301
1. The Parties
The Complainant is Visa Europe Limited of London, United Kingdom of Great Britain and Northern Ireland represented by Inlex IP Expertise, France.
The Respondent is Lycos of Sunnyvale, California, United States of America.
2. The Domain Name and Registrar
The Domain Name <paiement-cartebleue.net> is registered with Melbourne IT Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2011. On February 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 16, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Respondent of the Complaint, and the proceedings commenced on February 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2011.
The Center appointed Keita Sato as the sole panelist in this matter on March 25, 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 a company constituted under the British law, which is acting through its subsidiary in France. The Complainant is the owner of several registered trademarks for CARTE BLEUE, including Community Trademark No. 000710467 (dated on March 24, 1999) and No 000707067 (dated on June 18, 1999), and French trademarks No. 0533890890, 053389086, 053389094 and 053389087 (dated on October 25, 2005).
The Respondent is named Lycos, located in Sunnyvale, California, United States of America. The Domain Name <paiement-cartebleue.net> was registered on April 25, 2010 at Melbourne IT.
5. Parties’ Contentions
The Complainant alleges that the disputed Domain Name <paiement-cartebleue.net> is confusingly similar with the trademark CARTE BLEUE which is registered as Community Trademark and French trademark. And the element “paiement”, a French word in relation with banking services, is an adjunction of the descriptive element to the trademark CARTE BLEUE. This kind of a word cannot be considered as sufficient to avoid the confusing similarity.
Secondly, the Complainant also alleges that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, since the Respondent is not commonly known by ”Cartebleue” either on an individual or as a business. Moreover, the Respondent has no trademark rights neither on the sign “carte bleue”, nor on “paiement-cartebleue.net”. Also, the sole owner of the trademarks CARTE BLEUE in France and Europe has not licensed or otherwise authorized the Respondent to use its trademarks.
Thirdly, the Complainant also alleges that the Respondent registered and used the disputed Domain Name in bad faith. The Complainant pointed out that a combination and succession of the several facts leads the Respondent’s bad faith. These elements include 1) VISA Europe Ltd. and its trademarks are well-known in France and Europe. The Respondent surely knew the existence of the mark CARTE BLEUE at the time of registration of the disputed Domain Name, because the website “www.paiement-cartebleue.net” is written in French, and that mark is well-known in France and Europe. Such well-known business situation for CARTE BLEUE is based several facts under the Complainant allegation, which is on its website “www.carte-bleue.com/default.asp”. For example, the first “Carte Bleue” cards were edited in 1967 and permitted to the customers to withdraw and spend money. The GIE Groupment, which assigned activities later to Carte Bleue and Sas Carte Bleue, was created in 1971, and entered a partnership with the Bank Americard (later became Visa company) in 1973, and it continues its business with CARTE BLEUE trademark. In addition, the Complainant is one of the main companies in the bank card activity which helps banking institutions and banks in developing credit cards services, including management and promotion of trademark CARTE BLEUE etc. Under its allegation, to date, more than 34 million payment cards branded “Carte Bleue” are active on the French territory. 2) The Respondent reproduces quasi identically the trademark CARTE BLEUE of the Complainant. 3) Under the allegation by the Complainant, the website “www.paiement-cartebleue.net” is a parking page. 4) The disputed Domain Name reproduces prior trademark CARTE BLEUE, and the sole adjunction of the element “paiement” is clearly the demonstration that such reservation is intended to the squatting. Also, the Complainant alleges that the Respondent uses the disputed Domain Name in bad faith. The reasons are: 1) Due to the specificities of its activity concerning finance and payment, the Complainant has to be extremely vigilant and to ensure the security of payment to its customers and the security of all services rendered by Internet and so on without any prejudice for Carte Bleue’s users, 2) the existence the disputed Domain Name could lead to confusion, for example, if a French consumer searches information on the formalities of payment by Carte Bleue, he or she could find the Domain Name and parking page.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
As the Complainant alleged, the disputed Domain Name is confusingly similar with the registered trademarks CARTE BLEUE owned by the Complainant.
The part “cartebleue” of the disputed Domain Name is almost identical with the trademark CARTE BLEUE. Their difference is only a space inserted. Also, as explained above in the Factual Background, the Panel finds that CARTE BLEUE is registered by the Complainant as a Community trademark and a French. In addition, the part “-paiement” of the disputed Domain Name is just a combination of a descriptive word for the Complainant’s business and hyphen. Of course, the hyphen has no special meaning. And the trademark registrations made by the Complainant were for the class 36 and other classes. French trademark class contains services such as “assurances; affaires financiers; affaires monetaires, affaires immobilieres; emission de cartes de credit bancaires et de paiement”. This shows “paiement” is a descriptive word for the Complainant’s business. Also, on the top page of the French version of the Complainant’s official website, we find the first line clearly said, “VISA Europe, Visa est systeme de paiement leader en Europe.” (“www.visaeurope.fr/fr/home.aspx”).
These facts show the disputed Domain Name constitutes descriptive word for the Complainant’s business + hyphen + identical word with the Complainant’s registered trademarks. A descriptive word has no function directs a specified source. In this sense, the Panel finds that the disputed Domain Name is a confusingly similar with the Complainant’s registered trademarks.
For above reasons, the Panel finds the first element is made out.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed Domain Name. However, the Complainant does not submit any proof on this point. It has been a consensus view in the WIPO UDRP Panel Decisions (“WIPO Overview of WIPO Panel Views on Selected UDRP Questions, par. 2.1, “www.wipo.int/amc/en/domains/search/overview2.0”) where it is. It said “ (…) a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
Under paragraph 4(c) of the Policy, respondents may demonstrate their rights and legitimate interests in the disputed domain name by showing any of the following circumstances in particular but without limitation: (i) their use of, or demonstrable 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 before any notice to them of the dispute, or (ii) they (as individuals, businesses, or other organizations) have been commonly known by the domain name, even if they have acquired no trademark or service mark rights, or (iii) they are 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. The Respondent did not come forward with any information that might indicate his meeting any of the circumstances set for in paragraph 4(c) of the Policy, or any other circumstances that could indicate his rights or legitimate interests in the domain name at issue.
In this case, CARTE BLEUE is a well-known mark for banking cards business especially in France, since the numbers of carte bleue issued in France are at least over 32 million in 2006 (see, “www.visa-europe.fr/fr/a_propos_de_visa/qui_est_visa/historique_de_vef.aspx”, which is automatically diverted from the website linked to “www.carte-bleue.com/default.asp”. The latter link was mentioned in the page 8 of the Complaint, however, no such page is found on April 9, 2011 but the above mentioned diverted link is found). The Panel finds that the Complainant’s allegations and the well-known situation for the CARTE BLEUE mark make the case prima facie that the Respondent lacks rights or legitimate interests in the Domain Name.
Since the Respondent has never submitted any evidence for special circumstances, the Panels finds no reasonable grounds for the Respondent.
For these reasons, the Panel finds the second element is made out.
C. Registered and Used in Bad Faith
First, the Complainant alleges that the Respondent registered the disputed Domain Name in bad faith, because the website “www.paiement-cartebleue.com” is a parking page, and this fact leads to meet the bad faith category provided at paragraph 4 (b)(iv) of the Policy. It submitted a screen copy as evidence; however, the Panel cannot follow this allegation. The reason is that the Annex 5 submitted by the Complainant has no date on it, and such page could not be found on April 9, 2011. Accordingly, the Panel considers this means the case as passive holding. In the consensus view of WIPO UDRP Panel decisions, cited above, paragraph 3.2 it is said, “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith”.
In this regard, the disputed Domain Name is written in French. Normally, a person having residence in the United States word choose a domain name written in his or her mother tongue, English. In the present circumstances, the Panel infers that the Respondent must have known the registered trademark CARTE BLEUE at the time of registering the disputed Domain Name. Actually, the paragraph 4 (b) of the Policy shows examples registering in bad faith, however, the paragraph clearly said “but without limitation”. Then the Panel finds the requirement “registering in bad faith” is met.
Secondly, the Complainant alleges that the Respondent used the disputed Domain Name in bad faith. As explained above, CARTE BLEUE trademark is well-known for payment service (class 36 in France) especially in France, and this is a passive holding case. In the consensus view of WIPO UDRP Panel decisions paragraph 3.2, the sentence is following “The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
Several UDRP decisions are cited to support this proposition, namely Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 and Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131. In each of those cases, the result was that bad faith was made out and a transfer of the domain name was ordered. There have been many other decisions to the same effect, although as the Overview makes plain, they all depend on their own individual facts （see, SAS Carte-Bleue v. Business Affiliation Ltd., WIPO Case No. D2006-1583） In this present case, the Complainant has registered a well-known trademark, and the Respondent has not provided any explanation for doing so, as explained above. Also, this case is a default case and the Respondent concealed its identity. These facts fit the example shown in the Overview.
For these reasons, the Panel finds the third element is also made out.
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 <paiement-cartebleue.net> be transferred to the Complainant.
Professor Keita Sato
Dated: April 9, 2011