WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Credit Industriel et Commercial S.A v. Above.com PTY. LTD / Domain Privacy
Case No. D2011-1160
1. The Parties
The Complainant is Crédit Industriel et Commercial S.A of Paris, France, represented by Meyer & Partenaires, France.
The Respondent is Above.com PTY. LTD / Domain Privacy of Beaumaris, Australia.
2. The Domain Name and Registrar
The disputed domain name <filbanqeu.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2011. On July 11, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 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 July 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2011.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on August 8, 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 French banking group which, in December 2010, had more than 4.3 million clients with a network of 2,117 offices in France and 36 branches on a worldwide basis totaling more than 20,000 employees.
The Complainant offers e-banking services through its online banking service Filbanque and owns several French trademarks consisting of that word:
- The verbal trademark FILBANQUE n° 92402299, that was registered on January 22, 1992 under classes 35, 36, 40, 42, 43, 44 and 45 of the Nice classification, duly renewed on January 17, 2002;
- The verbal trademark FILBANQUE n° 3126064, that was registered on October 15, 2001 under classes 9, 16, 28, 41 and 42 of the Nice classification;
- The combined trademark FILBANQUE n° 95553426, that was registered on January 13, 1995 under classes 35, 36, 38 and 41 of the Nice classification, duly renewed on November 2, 2004;
- The combined trademark FILBANQUE n° 95553427, that was registered on January 13, 1995 under classes 35, 36, 38 and 41 of the Nice classification, duly renewed on November 2, 2004;
- The combined trademark FILBANQUE n° 3130040, that was registered on November 7, 2001 under classes 9, 16, 28, 35, 36, 38, 41 and 42 of the Nice classification.
The Complainant also owns several domain names consisting of that term, including:
- <filbanque.tm.fr>, that was registered on April 24, 1996;
- <filbanque.eu>, that was registered on July 10, 2006.
The Respondent is the administrative contact of the disputed domain name <filbanqeu.com>, which consists of a parking page consisting of several links, notably related to the banking industry.
5. Parties’ Contentions
The Complainant first asserts that the disputed domain name is confusingly similar to its trademarks, as the mere inversion of the letters “u” and “e” does not exclude the confusion and is a substitution which commonly occurs as spelling error.
The Complainant then affirms that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It has never been known under the term “filbanqeu” and is not related in any way to the Complainant. The Complainant has never authorized the Respondent to use its trademarks nor to register domain names on its behalf.
The Complainant finally states that the disputed domain name has been registered and is being used in bad faith. According to the Complainant, it is difficult to imagine that the Respondent could have ignored its trademarks and the reputation gained by the term “filbanque”, all the more so as the Complainant carries out activities in Australia where the Respondent is located. In registering the disputed domain name, the Respondent tries to attract Internet users making a spelling mistake to its website. The Complainant further adds that the Respondent’s passive use of the disputed domain name may be deemed as a bad faith behavior, all the more so as the registration of a well-known trademark by a party that is unrelated to the right holder is a strong indication of bad faith.
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 issue
The Complaint has been filed against Above.com PTY. LTD / Domain Privacy as the sole Respondent, consistent with the WhoIs-listed registrant information appearing in the Registrar’s database.
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 from UDRP panelists. The various questions raised by that situation and in particular the question of the identity of the proper respondent between the privacy service named in the Complaint and the underlying registrant has already been discussed and did not so far result in a unified position among the other learned panelists.
The Panel is of the opinion that the correct approach in that type of cases has to be pragmatic. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9,
“the UDRP and UDRP Rules do not contemplate the use of privacy or proxy registration services per se, nor provide express guidance on the issue. The UDRP Rules define the respondent as the holder of a domain name registration against which a complaint is initiated. The UDRP Rules also give the panel power to conduct proceedings in such manner as it considers appropriate in accordance with such Rules and the UDRP”.
In the present case, there has been no disclosure of the underlying registrant by the Registrar. As a result, the Panel is of the opinion that there is no reason to depart from the UDRP Rules previously mentioned, and that it is up to the underlying registrant to bear the potential negative consequences resulting from the deliberate use of privacy or proxy registration services. This practice is in line with the WIPO Overview 2.0 paragraph 4.9, according to which, where the identity of the underlying registrant has been disclosed, “should a complainant choose not to amend its complaint in such circumstances, this would not normally amount to a complaint deficiency for the purpose of the WIPO Center completing its administrative responsibilities under the UDRP Rules”. Such obviously also has to be the case when this identity has not been disclosed.
As a result, Above.com PTY. LTD / Domain Privacy shall be considered as the proper 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 several French trademarks consisting of the word “filebanque”. Considering the significance of the current use of online banking services and the fact that the Complainant enjoys more than 4 million clients, the Panel considers that its trademarks enjoy a strong reputation.
In the present case, the disputed domain name <filbanqeu.com> entirely contains the Complainant’s trademarks, but for the inversion of the letters “u” and “e”. As convincingly pointed out by the Complainant, this sole inversion, which demonstrates an attempt to benefit from users’ spelling mistakes, does not exclude the confusing similarity between the signs as held by numerous UDRP panels, including in cases having to deal with the FILEBANQUE trademarks (Crédit Industriel et Commercial S.A. v. WhoisGuard Protected, WIPO Case No. D2006-1162 related to the domain name <filebanqe.com> as well as Crédit Industriel et Commercial S.A. v. Name Privacy, WIPO Case No. D2005-0457 related to the domain names <filebanue.com> and <filebanques.com>).
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) of the Policy requires the Complainant to prove a negative fact, which often proves to be a difficult 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 a 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 rights or legitimate interests 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 it of the dispute, the respondent 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 it 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, 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.
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 Respondents must first have been aware of the existence of the Complainant.
Considering the reputation enjoyed by the Complainant, its global reach, including in Australia where the Respondent is located, and its number of clients on a worldwide basis, one finds it hard to imagine that the Respondent could have registered the disputed domain name without having been aware of the Complainant’s trademarks.
The registration of a domain name consisting of the word “filebanqeu” by a third party appears so unlikely that it is hardly conceivable. Absent any explanation, the Panel is convinced that the Respondent has deliberately registered a domain name consisting of the Complainant’s trademarks to attract users that would have misspelt the word “filebanque” to its site. While using a proxy or privacy services does not in itself indicate bad faith registration of a domain name, in the present proceedings it constitutes a fact indicating bad faith (Tractor Supply Co. of Texas, LP Tractor Supply Company v. Contact Id 9668727, Host Master, Transure Enterprise Ltd / Above.com Pty. Ltd. Domain Privacy, WIPO Case No. D2011-0737). As a result, there is no doubt in the Panel’s opinion that the Respondent deliberately registered a domain name consisting of a misspelt trademark to benefit from users’ spelling mistakes and attract them to a parking website which, taken into account all the circumstances surrounding this case, amount to a registration and use in bad faith.
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 the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <filbanqeu.com> be transferred to the Complainant.
Dated: August 16, 2011