WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Confédération Nationale du Crédit Mutuel v. Alexandr Novikov
Case No. D2018-0028
1. The Parties
The Complainant is Confédération Nationale du Crédit Mutuel of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Alexandr Novikov of Saint Petersburg, the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <creditmutuelfactor.com> is registered with NeoNIC OY (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2018. On January 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 11, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 15, 2018.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2018.
The Center appointed David Stone as the sole panelist in this matter on February 19, 2018. 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 political and central body of the banking group Crédit Mutuel, which has been providing banking and insurance services to its many millions of customers for more than a century. Crédit Mutuel has a network of 3,178 offices in France, congregated in 18 regional federations. Present in all fields of finance, the group is a major actor in the banking services market for both individuals and businesses.
The Complainant is the registered owner of a large number of active trade marks comprising or including the wording “Crédit Mutuel”, in France and elsewhere. These include the following (the “CRÉDIT MUTUEL Trade Marks”):
- CRÉDIT MUTUEL: French semi-figurative trade mark number 1475940, registered on July 8, 1988 in Nice classes 35 and 36;
- CRÉDIT MUTUEL: French semi-figurative trade mark number 1646012, registered on November 20, 1990 in Nice classes 16, 35, 36, 38 and 41;
- CRÉDIT MUTUEL: EU trade mark number 9943135, registered on May 5, 2011 in Nice classes 9, 16, 35, 36, 38, 41, 42 and 45;
- CRÉDIT MUTUEL: semi-figurative international trade mark number 570182, registered on May 17, 1991 in Nice classes 16, 35, 36, 38 and 41 and designating Benelux, Italy and Portugal; and
- CRÉDIT MUTUEL FACTOR: French trade mark number 99800537, registered on June 28, 1999 in Nice classes 35 and 36.
Also, the Complainant and its IT-dedicated subsidiary Euro Information are between them the holders of many active domain names containing the words “Crédit Mutuel” or otherwise related to the disputed domain name. These include the following:
- <creditmutuel.info>: registered on September 13, 2001;
- <creditmutuel.org>: registered on June 3, 2002;
- <creditmutuel.fr>: registered on August 10, 1995;
- <creditmutuel.com>: registered on October 28, 1995;
- <creditmutuel.net>: registered on October 3, 1996; and
- <cmcic-factor.com>: registered on August 9, 2011.
In particular, the Complainant operates Internet portals at the websites associated with “www.creditmutuel.com” and “www.creditmutuel.fr”. These are dedicated to its conventional and online services, and provide information to the public about banking services. Specifically, “www.creditmutuel.fr” offers online banking services to Crédit Mutuel’s clients, who can, once connected through personal access, manage their accounts online through this website.
According to the French ministry order No. 58-966 of October 16, 1958, the use of the wording Crédit Mutuel in Franceis reserved to the Complainant and its related branches.
The disputed domain name was registered on February 27, 2017. The disputed domain name is inactive as it appears to resolve to a parking page.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is either identical or confusingly similar to the CRÉDIT MUTUEL Trade Marks, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
First, the disputed domain name is identical to the trade mark CRÉDIT MUTUEL FACTOR and confusingly similar to the trade mark CRÉDIT MUTUEL. The presence of the generic Top-LevelDdomain “.com” has no distinguishing effect and has to be ignored in comparing a domain name with a trade mark. Furthermore, in the comparison with CRÉDIT MUTUEL and <creditmutuelfactor.com>, the additional word “factor” in the disputed domain name also does not serve to distinguish it from either the trade mark or the domain name. Because factoring is a type of financial transaction, the inclusion of “factor” in fact increases the risk of confusion with the Complainant’s business, in particular that operated by its subsidiary CM-CIC Factor, which uses the website associated with the domain name <cmcic-factor.com>.
Second, the Complainant maintains that the Respondent is not related in any way to the Complainant's business. The Respondent is not one of the Complainant’s agents and does not carry out any activity for it or have any business with it, and no license or authorization has been granted to the Respondent to make any use of or apply for registration of the disputed domain name. To the best of the Complainant’s knowledge, the Respondent is not currently, and has never been, known by the disputed domain name. For these reasons the Respondent has no rights or legitimate interests in the disputed domain name.
Third, the CRÉDIT MUTUEL trade mark has been recognised as well-known in previous UDRP decisions (see, for example, Confederation Nationale du Credit Mutuel v. Philippe Marie, WIPO Case No. D2010-1513) and, as mentioned above, is accorded special status in France. Previous UDRP panels have held that, where a trade mark is well-known, there is a prima facie presumption that the registration of an identical or confusingly similar domain name is in bad faith because the registrant must have known or been aware of the prior rights in the trade mark and therefore registered the domain name with the intention of commercial gain. See Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020. Given the renown of the CRÉDIT MUTUEL trade mark, its similarity to the disputed domain name, and the exact identity between the disputed domain name and the related trade mark CRÉDIT MUTUEL FACTOR, the Complainant contends that the disputed domain name must have been registered in bad faith, with the intent to attract Internet users confused by the similarity. Although the disputed domain name is inactive at present, such passive holding can also constitute bad faith. See Credit Industriel et Commercial S.A. v. Zabor Mok, WIPO Case No. D2015-1432.
The Complainant also notes that, at the time this Complaint was first drafted, the Respondent was using a proxy service to remain anonymous as the registrant of the disputed domain name. The Complainant points out that the concealment of identity and contact information in relation to the registration of a domain name where there is the likelihood of confusion with banking services, and the attendant risk of phishing activities, is also an indication of registration in bad faith. See Confederation Nationale du Credit Mutuel v. Fernand Macia / Registration Private / Domains By Proxy, LLC / DomainsByProxy.com, WIPO Case No. D2015-1699. As a banking group, the Complainant continually faces phishing attempts and must be especially vigilant in protecting its clients from fraud.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As pointed out by the Complainant, the presence of a top-level domain in a domain name is a requirement of registration and does not serve to distinguish a trade mark from a domain name. Therefore the existence of the Complainant’s registered trade mark CRÉDIT MUTUEL FACTOR suffices to satisfy the condition in paragraph 4(a)(i) of the Policy. The disputed domain name is also confusingly similar to the trade marks CRÉDIT MUTUEL because the addition of the word “factor”, rather than being a distinguishing feature, creates a specific link to services offered by the Complainant. See Confederation Nationale du Credit Mutuel v. Claitre Bonnat, WIPO Case No. D2016-0204; Facebook Inc. v. Puneet Agarwal, WIPO Case No. D2017-1491. The Panel therefore finds that the condition in paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:
(i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) as an individual, business or other organisation, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent is making no use of the domain name, has offered no evidence that it is preparing to do so, and is not commonly known by the domain name. The Complainant’s contention that it has not authorized the Respondent to make any use of the disputed domain name, which is confusingly similar to trade marks in which the Complainant has prior rights, is therefore prima facie evidence that the Respondent has no rights in the disputed domain name. By failing to submit a response to this complaint, the Respondent has failed to rebut this prima facie case. See Vorwerk International AG v. Whoisguard Protected, Whoisguard, Inc. / Sonja Kaiserauer / Martin Mueller / Andrea Goldberg, WIPO Case No. 2016-0524. The Panel therefore finds that the Complainant has satisfied the condition in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes the intention to register and use a domain name in order to:
(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;
(ii) prevent the trade mark owner from registering its trade mark in a domain name;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
Given the inactivity of the website to which the disputed domain name resolves, there is no clear evidence that the Respondent intends to divert Internet traffic for commercial gain or disrupt the Complainant’s business. Neither has there been an offer from the Respondent to sell the disputed domain name to the Complainant. Registration of the disputed domain name clearly prevents the Complainant from registering CRÉDIT MUTUEL FACTOR as an identical domain name, and so could indicate registration in bad faith, but this would not prevent registration by the Complainant of a non-identical domain name containing the trade mark.
However, given the degree of similarity or exact identity between the disputed domain name and the CRÉDIT MUTUEL Trade Marks, the use of the additional word “factor” as a potential lure for Internet users seeking financial services, and the acknowledged fame of CRÉDIT MUTUEL, in the absence of bona fide use of the disputed domain name or any explanation of its intent from the Respondent it is difficult to see how the registration and use of the disputed domain name can have been in anything other than bad faith. This is especially so in the banking context, where, as the Complainant points out, phishing scams are rife and it is essential that the Complainant’s customers have confidence that they are using authentic websites. The Panel agrees with the Complainant that the Respondent must, or ought to, have been aware of the Complainant’s prior rights in CRÉDIT MUTUEL, if not all of the CRÉDIT MUTUEL Trade Marks, and that registration and passive holding of a domain name including such a well-known trade mark must have been in bad faith. See Confederation Nationale du Credit Mutuel v. Claitre Bonnat, supra; Vorwerk International AG v. Whoisguard Protected, Whoisguard, Inc. / Sonja Kaiserauer / Martin Mueller / Andrea Goldberg, supra; Credit Industriel et Commercial S.A. v. Zabor Mok, supra.
The Panel therefore concludes that the Complainant has satisfied the condition in 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 name, <creditmutuelfactor.com>, be transferred to the Complainant.
Date: March 5, 2018