WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Confédération Nationale Du Crédit Mutuel v. Skazi Slawi and Slawi (a/k/a Slawi Skizokama)
Case No. D2013-1001
1. The Parties
The Complainant is Confédération Nationale Du Crédit Mutuel of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Skazi Slawi and Slawi (a/k/a Slawi Skizokama) of Paris, France.
2. The Domain Names and Registrars
The disputed domain names <creditmutuel-la-banque.com> and <la-credit-mutuel-banque.com> are registered with Melbourne IT Ltd and Tucows Inc. (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2013. On the same date, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain name. On June 5, 2013 and June 13, 2013, the Registrar transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant and providing the contact details1.
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 June 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2013.
The Center appointed Daniel Kraus as the sole panelist in this matter on July 24, 2013. 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, Confédération Nationale Du Crédit Mutuel is a French association registered under French law. The Complainant is the political and central body for the Crédit Mutuel Banking Group.
The Complainant is the registered owner of a large number of trademarks consisting or including the wording “Crédit Mutuel” in France and abroad, registered between 1988 and 2006.
It also uses its trademark as the main part of several domain names to promote its activities, such as <creditmutuel.eu> and <creditmutuel.mobi>. It has also registered other domain names such as <creditmutuel.com>, <creditmutuel.net>, <credtimutuel.info> and <creditmutuel.fr>. The disputed domain name <creditmutuel-la-banque.com> was registered on February 22, 2013, whereas the disputed domain name <la-credit-mutuel-banque.com> was registered on April 7, 2013.
5. Parties’ Contentions
As a first contention, the Complainant requests the Panel to consolidate the two requests regarding the disputed domain names into a single administrative proceeding. The Complainant contends that the disputed domain names are subject to common control under a single identity, although the WhoIs data bases identify registrants with slightly different names: on the one hand Skazi Slawi, and on the other simply Slawi. In order to substantiate its request, the Complainant, in application of former UDRP decisions, demonstrates that the disputed domain names are subject to common control under a single identity.
The Complainant then demonstrates that it is the registered owner of a large number of trademarks consisting or including the wording “Crédit Mutuel” in France and abroad, as well as several domain names. It further argues that the disputed domain names are identical or confusingly similar with the trademark CREDIT MUTUEL which falls in the category of a famous trademark as one of the main French banking groups.
The Complainant finally argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names of which both registration and use have taken place under bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Consolidation of the parties
At first sight, there seem to be two Respondents in the present case, i.e. Skazi Slawi and Slawi (aka Slawi Skizokama). However, as pointed out by the Complainant, the names and postal addresses of the Respondents seem visibly fanciful and inaccurate. None of these addresses seem to exist. On the bases of paragraphs 3(c) and 10(e) of the Policy, the Panel agrees to consolidate the two requests for the following reasons:
Firstly, there is some overlap in the disputed domain names contact details. The names of the registrants of the disputed domain names are similar, as both use the alias “Slawi”. Besides, the postal addresses are similar, being located in the same country, the same city and the same arrondissement. The house numbers are also identical and the names of the streets indicated are strongly similar and contain the same grammatical errors. These elements do demonstrate the strong similarities between both addresses. These reasons are indicative that the disputed domain names are subject to common control by the same person or company. (See Camper S.L. v. zhengmaisen, jolin kelly, WIPO Case No. D2011-1750).
The fact that both grammatical errors are contained in the two addresses is also an indication that there is a connection between those behind the disputed domain names. (See Tiffany and Company, Tiffany (NY) (Inc.) v. Jin Liang, Liang Jin, Selina Chow and Alan Dolton, WIPO Case No. D2010-2200).
Secondly, the fact that the two disputed domain names use the same trademark CREDIT MUTUEL and words (“la” and “banque”) is also indicative that the disputed domain names are subject to common control by the same person or company. (See IM Production v. Liu An Qiang, Liu An, Liu An Fu, Liu An Xing, Liu An Jin, WIPO Case No. D2011-2318).
Thirdly, the fact that the content of the websites to which the disputed domain names led was similar or identical is also indicative of a link between the Respondents.
For all these reasons, the Panel accepts the consolidation of the two requests.
Having said that, paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order to have the disputed domain names transferred:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
B. Identical or Confusingly Similar
In several UDRP cases, such as Confederation Nationale du Credit Mutuel v. Philippe Marie, WIPO Case No. D2010-1513 or Crédit Industriel et Commercial, Confédération Nationale du Credit Mutuel v. Whoisguard Protected / Plaisant Patrice, WIPO Case No. D2012-2235, it was held that “It is clearly proven beyond doubt that Complainant has rights in the trademark CREDIT MUTUEL for purposes of paragraph 4(a)(i) of the Policy”. This is also accepted by the present Panel, which also recognizes the notoriety of the trademark CREDIT MUTUEL.
The Complainant’s trademark is incorporated in the disputed domain names in its entirety with the adjunction of the expressions “la”, “banque”, and hyphens, be it in a linguistically coherent (“creditmutuel-la-banque”) or incoherent (“la-credit-mutuel-banque”) way.
As for the adjunction of the generic Top-Level Domain (“gTLD”) “.com”, it is now well established, according to previous UDRP decisions, that the gTLD “.com” should usually be excluded from consideration when determining whether a domain name is identical or confusingly similar to the trademark held by a complainant. It is indeed a functional or generic component of a domain name (see Gerling Beteiligungs-GmbH (GBG) v. World Space Corp, WIPO Case No. D2006-0223 and Crédit Industriel et Commercial, Confédération Nationale du Credit Mutuel v. Whoisguard Protected / Plaisant Patrice, supra).
Therefore, the Panel finds that the Complainant has succeeded in demonstrating that the disputed domain names are confusingly similar to the Complainant’s trademark CREDIT MUTUEL and therefore has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the disputed domain names by showing any of the following circumstances, in particular but without limitation:
(i) the Respondent’s use or demonstrable preparations to use, the disputed domain names corresponding to disputed domain name in connection with a bona fide offering of goods or services before any notice to them of the dispute; or
(ii) the Respondent (as individual, a business, or other organizations) has been commonly known by the disputed domain names, even if it acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert internet users or to tarnish the trademark or service mark at issue.
The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such a prima facie case is made, the Respondent carries the burden of rebuttal. If the Respondent fails to rebut the Complainant’s prima facie case, it may be concluded that the Respondent lacks rights or legitimate interests in the disputed domain names, under paragraph 4(a)(ii) of the Policy.
In the view of the panel, the Complainant has made out such prima facie case by stating that the Respondent is not related in any manner with the Complainant and its business and that it has not been granted any licence to use the Complainant’s trademark.
Besides, there is no evidence that the Respondent holds registered trademarks in any countries consisting of or comprising the elements “credit mutuel”. There is also no evidence that the Respondent has ever filed applications for the registration of such trademarks.
In any event, as previously observed, the Respondent has not made any attempt to rebut the prima facie case made by the Complainant. Therefore, the Panel may decide this dispute on the basis of the Complainant’s undisputed contentions of fact. Although the Respondent’s default does not automatically result in a decision in favour of the Complainant, the Panel may draw negative inferences from the same (see Unilever N.V. v. Kentech, Inc, WIPO Case No. D2005-1021).
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain names, thus the requirements of paragraph 4(a)(ii) of the Policy are also satisfied
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of bad faith registration and use, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain namesregistrations to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainants, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the website or location.
Circumstances of bad faith are not limited to the above.
Registration in Bad Faith
The Complainant’s trademark is incorporated in the disputed domain names in its entirety with the adjunction of the expressions “la”, “banque”, and hyphens.
Besides, the Complainant’s trademark CREDIT MUTUEL is well known (Confederation Nationale du Crédit Mutuel v. Domains by Proxy, Inc / Gomes Paulo, WIPO Case No. DWS2008-0001). Accordingly, the Panel believes that the Respondent knew of the existence of the Complainant and its trademark at the time the disputed domain names were registered (See Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556).
It is more than likely that the fame of the Complainant’s trademark CREDIT MUTUEL was the reason why the Respondent decided to register the disputed domain names. Had said mark been unknown, such registration would have been far less appealing. It is unlikely that the Respondent registered a domain name containing the Complainant’s trademark CREDIT MUTUEL just by chance.
These findings lead the Panel to conclude that the disputed domain names have been registered in bad faith by the Respondent.
Use in Bad Faith
The disputed domain names were inactive at the time the Panel rendered its Decision and when the Complaint was filed.
However, the Panel believes the disputed domain names are being used in bad faith for the following two reasons:
First, according to Complainant’s substantiated allegation, the disputed domain names were registered to engage in a phishing activity (see Annex F to the Complaint), which seems prima facie plausible.
Second, it has now long been accepted in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. Indeed, the concept of a domain name “being used in bad faith” is not limited to positive action. Inaction may be included within that concept. The failure to make an active use of the disputed domain names also demonstrate bad faith use under certain circumstances (see Confédération Nationale du Crédit Mutuel v. Bryna Cytrynbaum, WIPO Case No. D2010-0165).
In the present case, the circumstances are the following:
Firstly, the Complainant’s trademark has a strong reputation and is widely known.
Secondly, the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names. On the contrary, it seems it has used the disputed domain names for a phishing attack against the Complainant.
Thirdly, the Respondent has taken active steps to conceal its true identity, by operating under names that are not real names.
Fourthly, the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement (the postal addresses communicated in the WhoIs details do not correspond to real postal addresses in Paris).
The Panel therefore concludes that the Respondent registered and is using the disputed domain names in bad faith according to paragraph 4(a)(iii) of the Policy.
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 names, <creditmutuel-la-banque.com> and <la-credit-mutuel-banque.com>, be transferred to the Complainant.
Date: August 7, 2013
1 On June 10, 2013, the Center requested the Registrar Tucows Inc. to clarify an inconsistency between the Respondent as named in the Complaint (i.e., Skazi Slawi and Slawi a/k/a Slawi Skizokama) and the registrant of the disputed domain name as confirmed by the Registrar (i.e., slawi). The Registrar, Tucows Inc., on the same date, confirmed that registrant of the disputed domain names was slawi.