WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banque Hottinguer SA v. Hottinger and Cie Groupe Financiere Hottinguer SA / Jardinier Joel, Hottinger and Cie
Case No. D2014-1340
1. The Parties
The Complainant is Banque Hottinguer SA de Paris, France, represented by Office Freylinger S.A., Luxembourg.
The Respondent is Hottinger and Cie Groupe Financiere Hottinguer SA / Jardinier Joel, Hottinger and Cie de Luxembourg, Luxembourg, represented by Cabinet Santarelli, France.
2. The Domain Name and Registrar
The disputed domain name< banquehottinguer.com> is registered with EuroDNS S.A. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2014. On August 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 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 amendment to the Complaint on august 14, 2014.
The Center verified that the Complaint together with the amendment to 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 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2014. The Response was filed with the Center on September 5, 2014.
The Center appointed Luca Barbero as the sole panelist in this matter on September 22, 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.
On September 29, 2014, the Complainant submitted an unsolicited Supplemental Filing.
4. Factual Background
The Complainant is the owner of the French trademark No. 3562888 for BANQUE HOTTINGUER, filed on March 13, 2008, in classes 35 and 36, and of several additional French trademarks comprising the terms “banque” and/or “hottinguer” filed between September and November 2006, in classes 35 and 36, such as the trademarks Nos. 3451482 for J.F.E HOTTINGUER BANQUE, 3451483 for BANQUE J.F.E. HOTTINGUER, 3451938 for J.F.E. HOTTINGUER GESTION, 3451979 for J.F.E. HOTTINGUER FINANCE, 3463682 for JEAN-CONRAD HOTTINGUER CORPORATE FINANCE, 3936491 for JEAN-CONRAD HOTTINGUER and 3463687 for JEAN-CONRAD HOTTINGUER BANQUE, 3463689 for J.C. HOTTINGUER Asset Management, 3463692 for J.C. HOTTINGUER Corporate Finance.
The Complainant is also the owner of the domain name <banque-hottinguer.com> and of other domain names registered on May 26, 2010, such as <banquejphottinguer.com>, <banquejphottinguer.eu>, <banquejphottinguer.fr>, <banquejphottinguer.co.uk>, <banquejphottinguer.lu>, <banquejphottinguer.net> and <banquejphottinguer.org>.
The disputed domain name <banquehottinguer.com> was registered on April 23, 2007.
5. Parties’ Contentions
The Complainant asserts that its trademarks containing the terms “Banque Hottinguer” are well-known, especially in the fields linked to asset management, private banking and corporate finance.
The Complainant highlights that it has used the trademark BANQUE HOTTINGUER in connection with a wide variety of services linked to the financial and banking fields and alleges that, consequently, the public has come to perceive the services offered under the mark as being those of the Complainant.
The Complainant contends that the disputed domain name is identical to the Complainant’s trademarks and domain names and that users would reasonably assume that the disputed domain name is owned by the Complainant.
The Complainant states that the Respondent has no rights or legitimate interest in the disputed domain name since the Respondent is not affiliated with the Complainant in any way, nor has it been authorized to register and use the Complainant’s trademark BANQUE HOTTINGUER or to seek registration of any domain name incorporating said mark.
The Complainant also asserts that the Respondent has no prior rights or legitimate interests in the disputed domain name as the numerous trademark registrations owned by the Complainant including BANQUE HOTTINGUER preceded the registration of the disputed domain name. The Complainant also indicates that the Respondent is using the name Hottinger and Cie Groupe Financiere Hottinguer SA but, according to a search on the Internet, the Complainant has only been able to find a web site linked to the domain name <hottinger.lu> on which the Respondent’s activities are explained. The Complainant therefore concludes that the Respondent seems to be known under the name Hottinger and not Hottinguer.
The Complainant also states that the integration of the term “Hottinguer” in the Respondent’s company name has been recorded only on April 26, 2012, after a decision issued by the French Court of First Instance in 2010 which denied the Respondent’s rights on the name HOTTINGUER. The Complainant further asserts that the Respondent is not authorized to use the term “banque” as the Respondent is not included in the list provided by CSSF (Commission de Surveillance du Secteur Financier) including the authorized banks established in Luxembourg.
As to the bad faith requirement, the Complainant contends that the registration of the disputed domain name by the Respondent cannot be ascribed to a coincidence and that the Respondent could not ignore the Complainant’s trademark HOTTINGUER and the Respondent’s absence of rights in said mark due to the involvement of the Respondent in prior Court proceedings, in which the Respondent voluntarily appeared. The Complainant describes as follows the various instances of said proceedings:
“By a decision rendered on July 9, 2010, the Court of First Instance of Paris declared and pronounced the forfeiture of the trademark rights of the company Financière Hottinguer regarding the trademarks “Messieurs Hottinguer & Cie” and “Hottinger”. The Court of Appeal, in its decision rendered on Ma[y] 30, 2012 confirmed the decision of first instance. Based on said decisions, the Bank of France authorized the Banque Jean Philippe Hottinguer & Cie to change its name and to become Banque Hottinguer. Finally, the French supreme court confirmed on September 24, 2013 the decision of the Court of appeal and the tribunal”.
The Complainant contends that, since the Respondent is active under the name Hottinger and not Hottinguer, the Respondent “registered the name HOTTINGUER just to prevent the Complainant from registering it”. The Complainant additionally states that the fact that the disputed domain name is maintained on an inactive status shows that the Respondent has no real interest in the disputed domain name and is only maintaining it to disturb the Complainant’s activities.
The Respondent states that the Complainant has no trademark rights on BANQUE HOTTINGUER and was not using the name Banque Hottinguer before the registration of the disputed domain name. The Respondent underlines that the Complainant’s French trademark BANQUE HOTTINGUER was registered after the registration of the disputed domain name and that the other trademarks owned by the Complainant contain other elements such as “J.F.E.”, “Jean-Conrad” or “J.C.”, all making reference to first names of members of the Hottinguer/Hottinger family, thus distinguishing the Complainant’s marks from the disputed domain name.
The Respondent explains that “Hottinguer” and “Hottinger” are the Swiss and French versions, respectively, of the same family name, the “Hotting(u)er” family being well-known in the banking and investment sector, and the consumers knowing that several members of the family carry out financial activities in this regard.
The Respondent also notes that the Complainant’s name at the time of the registration of the disputed domain name was Hr Banque and that said name was amended in “Banque Jean-Philippe Hottinguer” on October 26, 2007, becoming Banque Hottinguer SA only as from July 2012.
The Respondent contends that, when the disputed domain name was registered, on April 24, 2007, the Respondent, through the French company Financière Hottinguer SA, belonging to the same group of companies as the Respondent, the EMBA Group, and parent company of the Respondent, owned trademark rights on the French trademark registration No. 1536875 for Messieurs Hottinguer Cie, filed on June 16, 1989.
The Respondent also states that several entities of the EMBA Group use the denomination Hottinguer, such as the parent company of the Respondent, and that two members of the Hottinguer family, whose surname is Hottinguer, are important shareholders of the Group.
The Respondent also states that it owns the Benelux trademark registration No. 0774259 for Hottinguer & Cie, filed on March 30, 2005.
The Respondent points out that it registered the disputed domain name in good faith since, at the time registration, it was already called Hottinger and Cie, which is the Swiss version of Hottinguer, and was therefore naturally induced to register a domain name covering the French version of its company name. At that time, the Respondent also owned valid trademark rights on the word Hottinguer and Hottinger in France and Benelux based on the above-mentioned trademark registrations.
The Respondent further states that the Complainant has not demonstrated that the Respondent has been using the disputed domain name in bad faith since it has not generated any traffic and, therefore, no confusion has been caused.
C. Complainant’s Supplemental Filing
The Complainant submitted an unsolicited Supplemental Filing, on September 29, 2014.
The Complainant informs the Panel that a request against the disputed domain name was filed also with the Surveillance Commission of the Financial Sector but such Commission considered that it was not competent for issuing a decision on the Complainant’s request.
The Complainant also reiterates the likelihood of confusion between the Complainant’s trademarks and the disputed domain name, that the Respondent is not authorized to use the term “bank” and is preventing the Complainant to use the disputed domain name.
It also states that the Respondent’s French trademark No. 1536875 Messieurs Hottinguer & Cie was invalidated by the French Supreme Court with an effect starting on July 24, 2003 and that, therefore, such trademark must be considered as inexistent starting from this date and the Respondent thus did not have any trademark right at the time of the registration of the disputed domain name.
6. Discussion and Findings
A. Preliminary issue: Complainant’s Supplemental Filing
The Panel notes that, also according to the consensus view of the UDRP panelists as summarized in the WIPO Overview 2.0, paragraph 4.2, it is in its discretion whether to accept it, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting the supplemental filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. In addition, most UDRP panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances.
While the Panel notes that there is no “exceptional circumstances”, this Panel has reviewed the unsolicited supplemental filing as noted above under section 5.C of this decision.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has provided evidence of ownership of a trademark registration for BANQUE HOTTINGUER, filed in 2008, and of several other trademark registrations containing the term “Hottinguer”, as detailed in the factual section, all filed in 2006.
As highlighted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights, the location of the trademark, its date of registration and the goods and/or services for which it is registered being irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
In addition, the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion.
The Panel finds that, according to a straightforward visual or aural comparison of the Complainant’s trademarks with the alphanumeric string in the disputed domain name, the Complainant’s trademark BANQUE HOTTINGUER is recognizable as such within the disputed domain name as it is incorporated in its entirety, with the mere addition of a dash between the two terms, which is not sufficient to exclude the likelihood of confusion. Furthermore, the Panel notes that the disputed domain name is also confusingly similar to the additional trademarks owned by the Complainant, since the core of all the signs subjects of the comparison is the term HOTTINGUER.
In view of the above, the Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s trademark according to paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (WIPO Overview 2.0, paragraph 2.1).
The Panel notes that there is no affiliation between the Complainant and the Respondent and that the Complainant has not authorized the Respondent to use the Complainant’s trademarks.
There is no evidence before the Panel that the disputed domain name was used in connection with a bona fide offering of goods or services before the present dispute, as both parties state that the disputed domain name has not been actively used.
However, according to the documents and statements submitted by the parties, the Respondent - at the time of the registration of the disputed domain name - owned two registered trademarks, i.e. the French trademark registration No. 1536875 for Messieurs Hottinguer Cie, filed on June 16, 1989, and the Benelux trademark registration No. 0774259 for Hottinguer & Cie.
In this respect WIPO Overview 2.0 (paragraph 2.7) states that “Panels have tended to recognize that a respondent's registration of a trademark which corresponds to a disputed domain name normally will, but does not necessarily, establish respondent rights or legitimate interests in that domain name for the purpose of the second element of the UDRP”.
Previous panels have declined to find respondent’s rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP.
In the case at hand, the Panel does not find that the Respondent’s trademarks were obtained to circumvent the Policy, as said trademark registrations predate the Respondent’s registration of the disputed domain name and even the Complainant’s trademark by some years.
Furthermore, the evidence on records shows that Hottinguer, which is the core of the disputed domain name, is the surname of Respondent’s shareholders and is used as well in the name of companies of the Group to which the Respondent belongs, including the Respondent and its parent company.
The Panel observes that the scope of the Policy is to provide a remedy against abusive domain names and not to resolve disputes between trademark owners or to determine which of the parties has rights in a name. The Panel also notes that a national court could be a more appropriate venue to deal with this dispute.
Therefore, in view of the circumstances of the case and based on the documents submitted to its attention, the Panel finds, on balance, that the Complainant has not satisfied the burden of proving the Respondent’s lack of any rights or legitimate interest according to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
In light of the Panel’s finding under section 6.C, the Panel finds it not necessary to make a determination under this element of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: October 14, 2014