WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caisse Nationale des Allocations Familiales v. Domain Administrator, Fundacion Private Whois
Case No. D2014-1269
1. The Parties
The Complainant is Caisse Nationale des Allocations Familiales of Paris, France, represented by SELARL du Manoir de Juaye, France.
The Respondent is Domain Administrator, Fundacion Private Whois of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <la-caf.com> (the “Domain Name”) is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2014. On July 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 29, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended to the Complaint on August 6, 2014.
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 August 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2014.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on September 2, 2014. 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, Caisse Nationale des Allocations Familiales (“CNAF”) is a national public authority and together with the family benefits offices (Caisse d’allocation Familiales – “CF”) forms the family branch of the social security system in France.
The Complainant has registered the trademark CAF since October 1989 in France and also the domain name <caf.fr> since April 1998.
The Domain Name <la-caf.com> was registered on September 1, 2012 and it contains hypertext links directly associated with the services offered by the Complainant.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the Domain Name.
The Complainant contends the following:
- the Domain Name is confusingly similar to the Complainant’s trademark;
- the addition of the article “la” does not lessen the confusing similarity between the Domain Name and the Complainant’s trademark;
- the Respondent has no rights or legitimate interests in the Domain Name, has not received any license or consent to use the CAF trademark in a domain name or in any other manner;
- the Respondent has not been commonly known by the Domain Name and the Respondent has no right or legitimate interest in the “CAF” name;
- at the time of the registration of the Domain Name, the Respondent was surely aware of the trademarks of the Complainant and this circumstance is confirmed by the fact that in the Domain Name there are several hypertext links directly associated with the services offered by the Complainant, which allows the website to be remunerated;
- the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Identical or Confusingly Similar
The Complainant is the owner of the trademark CAF in France since 1989. Therefore, it has been proven that the Complainant has rights in the CAF trademark.
The Domain Name <la-caf.com> incorporates the expression “caf” which constitutes the Complainant’s trademark.
The only difference between the Domain Name and the trademark of the Complainant is the addition of the generic term, in this case also an article, “la” in French language. The addition of the mentioned word does not add a distinctive element to the Domain Name and does not render it dissimilar to the trademark of the Complainant. It is well established that the addition of generic words to a trademark does not prevent confusingly similarity (see e.g. Swarovski Aktiengesellschaft v. Ming Robot, WIPO Case No. D2012-1200; Swarovski Aktiengesellschaft v. flushy, flushy kitty, WIPO Case No. D2012-0898; Carlsberg A/S v. Personal / decohouse, decohouse, WIPO Case No. D2011-0972; BP p.l.c. v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097; Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 and The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493).
Additionally, the Panel may disregard, when analyzing the identity or similarity, the generic Top-Level Domain (“gTLD”) suffix, in this case “.com”, because it is a necessary component of the Domain Name and typically does not give any distinctiveness (see i.e., Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457).
There are numerous UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established, inter alia, when a domain name wholly incorporates a complainant’s mark and only adds a generic word along with it (see i.e., F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694; Deceininck nvand Thyssen Polymer GmbH v. Dimitriy Beloussov, WIPO Case No. D2007-0347; Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC., WIPO Case No. D2005-0526).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
As indicated above, it has been proven that the Complainant has rights in the CAF trademark since at least 1989.
The Respondent has not filed any response in this case. There is a prima facie case made by the Complainant with the evidence provided to the Panel that the Respondent has no rights or legitimate interests in the Domain Name (Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media, WIPO Case No. D2007-0840; and UPIB, Inc. v. Texas Internet, WIPO Case No. D2004-0073).
The website at the Domain Name contains hypertext links directly associated with the services offered by the Complainant. The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark CAF, nor has the Respondent been authorized by the Complainant to register and use the Domain Name that contains its mark.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Based on the evidence presented by the Complainant, the Panel considers that the Respondent registered and is using the Domain Name in bad faith.
As sufficient evidence of registration in bad faith, the Panel finds that the Respondent registered the Domain Name most probably with knowledge of the Complainant’s rights. This circumstance is confirmed by the fact that in the Respondent’s website there are hypertext links directly associated with the services offered by the Complainant and the language of the website is French. Therefore, in the opinion of the Panel, only someone who was familiar with the Complainant’s marks and its activity would have registered the confusingly similar Domain Name with such content (see Aventis, Aventis Pharma S.A. v. John Smith, WIPO Case No. D2004-0850; AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd., WIPO Case No. DCC2004-0001; British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A, WIPO Case No. D2004-0131; Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487).
There is no information as to the business activity of the Respondent that would justify the registration and the use of the Domain Name; nor is there evidence of any rights or legitimate interests in said Domain Name by the Respondent. The Panel believes that, in the absence of any rights or legitimate interests and in the absence of any contrary evidence from the Respondent, the Respondent’s registration of the Domain Name confusingly similar to the Complainant’s trademark was done in bad faith (see Accor v. Howell Edwin, WIPO Case No. D2005-0980; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395; Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Taking into account the content of the website at the Domain Name, the Panel finds that there is sufficient evidence that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site 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 its website.
Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has demonstrated that the Domain Name has been 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 <la-caf.com> be transferred to the Complainant.
Date: September 16, 2014