WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cofidis Participations, SA v. WhoisGuard Protected, WhoisGuard, Inc. / Phillipe Beaussier
Case No. D2019-0497
1. The Parties
The Complainant is Cofidis Participations, SA of Villeneuve d’Ascq, France, represented by Meyer & Partenaires, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Phillipe Beaussier of Mons, Belgium.
2. The Domain Name and Registrar
The disputed domain name <cofidis-groupe.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2019. On March 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2019, 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 March 11, 2019 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 March 13, 2019.
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 March 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2019.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on April 10, 2019. 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 holding company of Cofidis S.A., a French company specialized in selling financial products and services. Cofidis was created in 1982 as the first French credit institution to deliver credit services exclusively by telephone and, since 1997, through the Internet. Actually, Cofidis has more than 2 million clients and is active in France and in seven other European countries.
Cofidis operates through its websites at “www.cofidis.com”, and “www.cofidis.fr”, and owns several other “cofidis” domain names, all redirecting to these websites.
The Complainant is the owner, inter alia, of the following trademarks:
- COFIDIS (word mark), French registration No. 1483171 of April 22, 1988, for services in classes 35, 36 and 41;
- COFIDIS (figurative mark), European Union registration No. 1212786, registered on September 20, 2000, for goods and services in classes 16, 35 and 36;
- COFIDIS (figurative mark), International registration No. 1094682, of June 22, 2011, designating several European Union countries, for goods and services in classes 9, 16, 35, 36, 38 and 41.
The Complainant’s trademark has been the subject of many promotional campaigns for more than 30 years, on major French TV channels, magazines and newspapers. Cofidis is also the sponsor of a leading professional cycling team named “Cofidis”, which takes part of the yearly international event “Tour de France”. Therefore the trademark COFIDIS enjoys reputation.
The disputed domain name was registered on January 28, 2019 through a WhoIs proxy and privacy service provider located in Panama. The disputed domain name used to resolve to a page displaying pay-per-click links and is currently inactive.
5. Parties’ Contentions
The Complainant’s assertions may be summarized as follows:
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademarks
The Complainant asserts that the disputed domain name is identical or at least confusingly similar to the Complainant’s trademark, since it contains the Complainant’s trademark followed by the generic word “groupe”. The term “groupe” is spelled according to the French language and is a word frequently used in the field of banking activities. On its website, the Complainant identifies itself as “Groupe Cofidis Participations”. Thus, the word “groupe” is linked to the Complainant and to its activities, and reinforces the confusing similarity of the disputed domain name with the Complainant’s trademark.
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name
The Respondent is not related to the Complainant’s business, he is not one of the Complainant’s agents and does not carry out any activity for, or has any business with, the Complainant. Moreover, the Respondent is not commonly known by the disputed domain name, and has never been authorized to make use of the Complainant’s trademark in the disputed domain name.
According to the Complainant, the disputed domain name has been registered to take advantage of the confusion with the Complainant’s domain names for fraudulent purposes.
(iii) The registration and use of the disputed domain name in bad faith
In view of the fact that the Complainant’s trademark is well-known, it is clear that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademark in order to take advantage of the confusing similarity with the Complainant’s trademark.
As far as registration in bad faith is concerned, the Complainant points out that the disputed domain name leads to a parking page containing pay-per-click links. The Respondent uses the disputed domain name to redirect Internet users to a webpage on which several hyperlinks are displayed, most of them in the field of banking and credit services. For example, there is a link named “Credit Cofidis”, which leads to a webpage offering competitor’s services. Moreover, another link, named “cetelem credit” leads to some other sponsored links, one of which is about the Complainant.
Therefore, in the Complainant’s view, the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to his pay-per-click webpage, and to disrupt the Complainant’s business by redirecting those users to websites belonging to the Complainant’s competitors.
According to the Complainant, not only the disputed domain name is capable of misleading Internet users looking for the Complainant’s website and activities, but it may also tarnish the reputation of the Complainant’s trademark as Internet users are expecting to find the Complainant’s website or at least a website related to the Complainant, and not a pay-per-click parking page.
The Complainant also suspects that the disputed domain name is intended to be used, or could have been used for emailing purposes. The Complainant points out that email servers were activated for the disputed domain name, as it appears from a search conducted on the “www.mxtoolbox.com” website. Therefore, the Respondent is able to send and receive emails through an “[...]@cofidis-groupe.com” email address. Any possible use of this kind would certainly not be a legitimate use of the disputed domain name: the aforementioned email address could very well be used for unauthorized emailing, spamming or phishing purposes and clearly does not amount to a good faith use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has provided sufficient evidence of ownership of the COFIDIS trademarks registered in several countries worldwide before the date of registration of the disputed domain name and claiming various goods and services, including insurance, financial and credit services in class 36.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark since the trademark COFIDIS is fully reproduced in the disputed domain name and is followed by the generic term, “groupe”, which is a French word (likewise the Complainant’s nationality), recalling the fact that the Complainant is organized in a group of companies. Thus, the addition of the generic term “groupe”, to the Complainant’s trademark, in the disputed domain name does not avoid a finding of confusing similarity.
Therefore, the Panel finds that the first condition under the Policy is met.
B. Rights or Legitimate Interests
The second condition to be proved in order to succeed in a UDRP proceeding is that the Respondent lacks rights or legitimate interests in the disputed domain names.
While the overall burden of proof rests with the complainant, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a complainant must make a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.
The Panel finds that the Respondent was not authorized to reflect the Complainant’s trademark in the disputed domain name, and that the Respondent does not appear to have been commonly known by the name “cofidis”.
Moreover, the disputed domain name is used to access pay-per-click links, advertising services in competition with those offered by the Complainant. The webpages associated to the disputed domain name are commercial webpages generating revenues from each click on the sponsored links. Thus, the Respondent is capitalizing on the reputation and goodwill of the Complainant’s mark.
Furthermore, the Respondent has established an “MX record” for the disputed domain name which reflects that the Respondent could use the name for email addresses handled by an email server, thus potentially presenting a risk that the disputed domain name be used to facilitate phishing or other illegitimate activities. This circumstance does not amount to a bona fide offering of goods or services, or a legitimate or fair use of the disputed domain name. The Respondent had the opportunity to rebut the Complainant’s arguments but failed to file any Response.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Thus, the Panel is satisfied that also the second requirement under the Policy is met.
C. Registered and Used in Bad Faith
The third and last requirement to be proved under the Policy to succeed in a UDRP proceeding is that the Respondent registered and used the disputed domain name in bad faith.
The Panel agrees that the Respondent was aware of the Complainant’s trademark and activity at the time he registered the disputed domain name. COFIDIS is an invented word that enjoys distinctive character. Moreover, in the disputed domain name, the Complainant’s trademark is followed by the generic French word “groupe”. This word is often associated to the Complainant’s trademark in its business communications and website. As such, the registration of the disputed domain name cannot have occurred by chance.
Upon visiting the Complainant’s website, the Panel noticed that the Complainant also operates in Belgium and promotes its services through the local website at “www.cofidis.be”. The Respondent resides in Belgium and this is additional evidence of the fact that the Respondent was aware of the disputed domain name at the time of its registration.
The disputed domain name provides access to a webpage containing pay-per-click links leading to webpages offering services in competition with those of the Complainant. Accordingly, the Respondent is speculating on the distinctive character of the COFIDIS trademark and is using the disputed domain name to attract Internet users to other on-line locations for commercial gain.
Furthermore, the Complainant has provided evidence of the fact that the Respondent has associated MX records to the disputed domain name, so as to send and receive emails from the address “[...]@cofidis‑groupe.com”. Accordingly, the Respondent could use the disputed domain name to realize fraudulent actions while pretending to be the Complainant (see Credit Industriel et Commercial S.A. v. Zabor Mok, WIPO Case No. D2015-1432).
All circumstances referred above are a clear indication of the fact that the Respondent registered and used the disputed domain name <cofidis-groupe.be> 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 <cofidis-groupe.com> be transferred to the Complainant.
Date: April 23, 2019