WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CL Eurofactor Services S.A. v. Serge Turquin
Case No. D2015-0949
1. The Parties
The Complainant is CLEurofactor Services S.A., of Issy-Les-Moulineaux, France, represented by Nameshield, France.
The Respondent is Serge Turquin, of Warnecourt, France.
2. The Domain Name and Registrar
The disputed domain name <eurofactor-ca.com> is registered with Register.it SpA (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2015. On June 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2015, 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 June 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2015.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on July 20, 2015. 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 the factoring subsidiary, created in 2001, of Crédit Agricole Leasing & Factoring, itself part of the Crédit Agricole group, one of the largest banking and financial services companies in France. It is headquartered in Issy-les-Moulineaux, France.
In addition to France, where it is the market leader, the Complainant has developed its activity in Germany, Belgium, Luxembourg, The Netherlands, Spain, Portugal, as well as in other European countries and in North Africa.
The Complainant is the owner of several trademarks (together “the Marks”), including:
- EUROFACTOR, Registration No. 746789, registered on October 13, 2000;
- EUROFACTOR, a Community Trademark, Registration No. 5133327, registered on June 13, 2006.
The Complainant is also the registrant of, among others, the domain names <eurofactor.com>, <eurofactor.fr>, <ca-eurofactor.com> and <ca-eurofactor.fr>.
The disputed domain name <eurofactor-ca.com> was created on April 30, 2015 and resolves to an inactive website.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name reproduces the Marks in which the Complainant has rights, and is confusingly similar to the Marks insofar as the disputed domain name, <eurofactor-ca.com>, contains the distinctive element “eurofactor” in its entirety. The Complainant also asserts that the addition of the non-distinctive suffix “-ca” does not serve to distinguish the disputed domain name <eurofactor-ca.com> from the Marks and only adds to the confusion.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never authorized the Respondent to use the Marks in any manner. The Complainant also asserts that the Respondent does not appear to be known by the disputed domain name, has never done any business with the Complainant and is not related in any way to the Complainant’s business.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Marks being well known in France, and the Respondent being French, the Respondent had full knowledge of the Marks when registering disputed domain name.
(iv) The Complainant submits that by passively holding the disputed domain name since its registration, the Respondent is using it in bad faith.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Aspects
(i) Language of the Proceeding
Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Registrar confirmed that the language of the Registration Agreement of the disputed domain name is English. The Panel determines that pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English.
(ii) Failure to respond
No Response was received from the Respondent.
Under the Rules, paragraphs 5(e)1 and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
B. Requirements of Paragraph 4(a) of the Policy
(i) Identical or Confusingly Similar
In comparing the Marks with the disputed domain name <eurofactor-ca.com>, it is evident that the latter consists solely of the Marks, followed by a dash and the descriptive letters “ca”, which may refer to Credit Agricole (or to Canada), and the generic Top-Level Domain (gTLD) “.com”.
The addition of generic or descriptive terms does not serve to distinguish a domain name from a registered mark. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
It is also well established that the gTLD “.com” does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.
The Panel finds that the disputed domain name <eurofactor-ca.com> is confusingly similar to the Marks, which it incorporates in their entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or uses the disputed domain name in a business.
The website associated with the disputed domain name is inactive.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no rights or legitimate interests in the disputed domain name, (ii) has no connection with or authorization from the Complainant and (iii) is not known by the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
(iii) Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Marks.
It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In this case, the Panel finds that it is highly unlikely that the Respondent chose to register the disputed domain name randomly with no knowledge of the Marks. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Moreover, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; and Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.
Finally, some UDRP panels have held that in certain circumstances, persons who are registering domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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, <eurofactor-ca.com>, be transferred to the Complainant.
Date: August 3, 2015
1 The Panel notes that the new Rules governing UDRP disputes are in effect for complaints filed on or after July 31, 2015. In these Rules this reference would be to paragraph 5(f).