WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banque Travelex SA v. Clive Mitchell, Digital Change Partners Limited

Case No. D2018-1345

1. The Parties

The Complainant is Banque Travelex SA of Boulogne - Billancourt, France, represented by Dechert LLP, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

The Respondent is Clive Mitchell, Digital Change Partners Limited of Kimpton, Herts, United Kingdom, self-represented.

2. The Domain Name and Registrar

The disputed domain name <dittobank.net> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2018. On June 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 19, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2018. The Respondent did not submit any Response prior to the Response due date. Accordingly, the Center notified the Respondent’s default on July 16, 2018.

On July 21, 2018, the Center received a communication from the Respondent, indicating its willingness to transfer the Disputed Domain Name. On July 23, 2018, the Center sent the Parties a communication regarding possible settlement. On July 30, 2018, the Complainant sent a communication to the Center requesting that the proceeding continue without suspension.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 3, 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, Banque Travelex SA, is the French subsidiary of the international foreign exchange company, Travelex Group. Travelex Group is one of the world’s largest foreign exchange bureaus with more than 30 million customers in 28 countries. The Complainant is the operator of the French bank license holder “Ditto Bank”, which provides multi-currency financial services to its customers. The Complainant’s client base primarily consists of travelers, expats and corporations who regularly so business in different currencies.

The Complainant is the holder of a multitude of trade and service mark registrations across various jurisdictions throughout the world for the mark DITTO, which it uses in connection with its banking services and financial business. The Complainant’s trademark portfolio includes, inter alia, the following trade and service mark registrations:

- DITTO, word mark registered with the European Union Intellectual Property Office (“EUIPO”) under No. 014903348 on April 5, 2016 in class 36; and

- DITTO, international word mark registered with the World Intellectual Property Organization (“WIPO”) under No. 1323147 on October 17, 2016 in class 36 in numerous jurisdictions.

The Disputed Domain Name <dittobank.net> was registered by the Respondent on December 20, 2017. The Disputed Domain Name resolves to a standard parking page offered by the Registrar, GoDaddy.com, LLC. The parking page advertises domain name registration services offered by the Registrar and displays sponsored links primarily related to Pokémon and to banking.

On January 19, 2018, the Complainant sent a notice letter to the Respondent via registered mail and via email, notifying the Respondent of the Complainant’s rights in the DITTO mark and demanding the transfer of the Disputed Domain Name and the cease and desist of any further potential trademark infringements.

On January 21, 2018, the Respondent sent an email to the Complainant’s counsel in which the Respondent expressed that he had purchased the Disputed Domain Name by accident after he had noticed that the Complainant had forgotten to register the Disputed Domain Name and that he was delighted to transfer the Disputed Domain Name to the Complainant. In its email, the Respondent also indicated that he knows the team at Ditto Bank and was therefore pleased to help out.

The Complainant’s counsel responded to the Respondent’s email on January 23, 2018 with instructions on how to transfer the Disputed Domain Name to the Complainant. Because the Respondent had not yet responded or ensured the transfer of the Disputed Domain Name, the Complainant’s counsel sent a reminder on January 28, 2018. On February 10, 2018, the Respondent communicated to the Complainant’s counsel that he had unlocked the Disputed Domain Name but that he first required details from the Complainant to be able to transfer the Disputed Domain Name to another registrar. On February 19, 2018, the Complainant’s counsel sent an email to the Respondent requesting the Registrar authorization code from the Respondent to finalize the transfer of the Disputed Domain Name. After having received no response, the Complainant’s counsel sent a reminder on February 28, 2018.

Finally, on March 14, 2018, after still not having received a response from the Respondent, the Complainant’s counsel sent a last email to the Respondent indicating the Respondent’s failure to comply with the Complainant’s repeated requests to provide the authorization code for the transfer of the Disputed Domain Name. The Complainant’s counsel once more demanded that the Respondent urgently provided the authorization code and indicated that the Complainant reserved its right to initiate formal proceedings with regard to the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent knew, or at least should have known, of the existence of the Complainant’s trademark. The Complainant further claims that the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the Complainant’s business and that the use of the Disputed Domain Name is likely to dilute the reputation of the Complainant and its mark.

B. Respondent

The Respondent failed to comply with the deadline for the submission of its Response and is subsequently in default.

However, on July 21, 2018, the Respondent sent an informal communication to the Center in the form of an email in which the Respondent expressed that the Complainant’s counsel is wasting everyone’s time and that he had completed all the required steps for the transfer of the Disputed Domain Name months ago. The Respondent further contended that the Panel should consider that (i) the Complainant was careless when it failed to register the Disputed Domain Name and other relevant names in time; (ii) the Respondent offered to transfer the Disputed Domain Name months ago; (iii) the Complainant failed to give comprehensive instructions which could be understood by a layman; (iv) the Complainant should be required to pay a reasonable compensation for any expenses and loss of time incurred in transferring the Disputed Domain Name; (v) the Respondent had done everything necessary to transfer the Disputed Domain Name and that he would follow further understandable instructions to finalize the transfer.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The Complainant’s DITTO mark has been registered and used in connection to its banking and financial services.

The Disputed Domain Name incorporates the Complainant’s DITTO trademark in its entirety, merely adding the non-distinctive suffix “bank”.

The Panel is of the opinion that the mere addition of non-distinctive text to a complainant’s trademark does not avoid confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395, where the domain name <karenmillenoutlet-australia.com> was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783, where the domain name <belstaffjacken-outlet.info> was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168, where the domain name <downloadlimewirenow.com> was held to be confusingly similar to the LIME WIRE trademark. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, and cases cited therein.

Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.net” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.

Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Respondent is not making any real use of the Disputed Domain Name which simply resolves to an undeveloped parking page provided by the Registrar. The passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; American Home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244).

The Respondent expressly indicated in his communication with the Complainant that he had registered the Disputed Domain Name “by accident” after he became aware that the Complainant had not registered the Disputed Domain Name. Accordingly, the Respondent does not provide any indication of having rights or legitimate interests in respect of the Disputed Domain Name. The prima facie case established by the Complainant has not been rebutted.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant’s trademark in its entirety with the addition of the non-distinctive word “bank”, which relates to the Complainant’s business, trade name and domain name. Considering the prior communication between the Complainant and the Respondent, it is undisputable that Respondent must have had knowledge of the Complainant’s rights at the time of registering the Disputed Domain Name.

In his communication with the Complainant, the Respondent admitted to registering the Disputed Domain Name after having noticed that the Complainant had failed to register it itself. The Respondent indicated that he was aware of the Complainant and even agreed to transfer the Disputed Domain Name. However, after numerous requests and reminders by the Complainant, the Respondent failed to provide an authorization code and finalize the transfer of the Disputed Domain Name.

The Panel finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith. (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, supra; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the disputed domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).

The Respondent is not presently using the Disputed Domain Name other than in connection with a parking page provided by the Registrar. The passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use of a domain name by the respondent that would be legitimate and would not interfere with the complainant’s well-known mark (see Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). The fact that there is an absence of evidence of any actual or contemplated good faith use is a further circumstance that may evidence bad faith registration and use in the event of passive use of domain names (Telstra Corporation Limited v. Nuclear Marshmallows, supra).

In the present case, the Panel is of the opinion that the Complainant’s trademark is distinctive and widely used, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent. In view of the Complainant’s activity in the financial and banking sector, misleading use of the Disputed Domain Name poses a real threat to the Complainant and its clients.

Although the Respondent agreed to transfer the Disputed Domain Name to the Complainant, no such transfer has currently been performed. After numerous requests by the Complainant, the Respondent failed to provide any authorization code and finalize the transfer. Although the Respondent contends that he thought to have performed all the necessary steps for the transfer of the Disputed Domain Name and that the instructions provided by the Complainant were not intelligible, the Panel is of the opinion that if the Respondent was truly committed to transfer the Disputed Domain Name, he would have been able to in the months preceding the proceedings.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.

7. Decision

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 <dittobank.net> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: August 13, 2018