WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Confédération Nationale du Crédit Mutuel v. WhoisGuard, Inc. / Robert Amandin
Case No. D2019-0529
1. The Parties
The Complainant is Confédération Nationale du Crédit Mutuel, France, represented by MEYER & Partenaires, France.
The Respondent is WhoisGuard, Inc., Panama / Robert Amandin, Italy.
2. The Domain Name and Registrar
The disputed domain name <creditmutuel.fun> (the “Disputed Domain Name”) 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 8, 2019. On March 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 8, 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 12, 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 12, 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 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2019.
The Center appointed Mariya Koval as the sole panelist in this matter on May 6, 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 Complaint is the political and central body of the banking group Credit Mutuel and is the second French banking and insurance services group, which provides its services to 12 million clients for more than a century. Credit Mutuel is a network of 3,178 offices in France, congregated in 18 regional federations. The group, being presented in all fields of finance, is a major actor on the market of banking services for both individuals and businesses.
The Complainant is the owner of a large number of CREDIT MUTUEL trademark registrations (the “CREDIT MUTUEL Trademark”) all over the world, including, but not limited to:
- French trademark No. 1475940, application date July 8, 1988, in respect of services in classes 35 and 36;
- French trademark No. 1646012, application date November 20, 1990 in respect of goods and services in classes 16, 35, 36, 38, and 41;
- International registration No. 570182, registration date May 17, 1991, in respect of goods and services in classes 16, 35, 36, 38, and 41;
- European Union Trademark No. 009943135, registration date October 20, 2011, in respect of goods and services in classes 9, 16, 35, 36, 38, 41, 42, and 45.
The Complainant, having a significant online presence, operates a large number of domain names with incorporation of the CREDIT MUTUEL Trademark for promotion of its financial services, namely (not limited to):
- <creditmutuel.fr> (registered on August 10, 1995);
- <creditmutuel.com> (registered on October 28, 1995);
- <creditmutuel.net> (registered on October 3, 1996);
- <creditmutuel.info> registered on September 13, 2001);
- <creditmutuel.org> (registered on June 3, 2002).
The Disputed Domain Name <creditmutuel.fun> was registered on February 18, 2019. At the date of this decision, the Disputed Domain Name resolves to an inactive website. However, according to the screenshots of the website associated with the Disputed Domain Name, presented by the Complainant (Annex F to the Complaint), on the date of the Complaint’s filing the Disputed Domain Name resolved to a general parking webpage.
5. Parties’ Contentions
The Complainant contends that, being the second French banking and insurance services group, which providing its services to 12 million clients for more than a century, the Complainant was one of the first banking groups in France to offer online banking services to its clients, individuals as well as companies.
The Complainant points out that, according to the French ministry Order of October 16, 1958, the use of the wording Credit Mutuel is reserved to Confederation National Du Credit Mutuel and to its related branches.
The Complainant notes that the CREDIT MUTUEL Trademark is undoubtedly well known in view of its recognition as well-known in UDRP cases, see e.g., Confédération Nationale du Crédit Mutuel v. Philippe Marie, WIPO Case No. D2010-1513; Confederation National Du Credit Mutuel v. Adrienne Bonnet, WIPO Case No. DFR2010-0008; Confederation National Du Credit Mutuel v. Georges Kershner, WIPO Case No. D2006-0248.
The Complainant further contends that the Disputed Domain Name is identical to the CREDIT MUTUEL Trademark in view of the fact that the Disputed Domain Name reproduces the Complainant’s trademark in its entirety and that addition of the generic Top-Level Domain (“gTLD”) “fun” is not sufficient for distinguishing the Disputed Domain Name from the Complainant’s trademark.
The Complainant also asserts that that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name in view of the fact that there is no evidence that the Respondent has been commonly known by the CREDIT MUTUEL Trademark, there was no license or authorization which has been granted to the Respondent and the Respondent is not related in any way to the Complainant’s business.
The Complainant further alleges that that the Respondent registered and has used the Disputed Domain Name in bad faith because, taking into consideration the well-known character of the CREDIT MUTUEL Trademark, it is unlikely that the Respondent has chosen the Disputed Domain Name otherwise than for creating an association with the Complainant’s fame and reputation.
The Complainant also contends that at the date of the Complaint’s filing the Disputed Domain Name resolved to a general parking webpage, which provided notably links to the Complainant’s competitors, but previously it resolved to a phishing website and has been shut down after being reported to the competent authorities and to the hosting company.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must demonstrate to the Panel 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.
A. Identical or Confusingly Similar
The Complainant has a protection for its CREDIT MUTUEL Trademark in a large number of jurisdictions and, following on from the evidence, provided by the Complainant, the Panel finds that the CREDIT MUTUEL Trademark is well known.
The Complainant’s well-known CREDIT MUTUEL Trademark is entirely reproduced in the Disputed Domain Name combining with the gTLD “.fun”. In accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1, “the applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. In accordance with section 1.11.2 of the WIPO Overview 3.0 “the practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to ‘new gTLDs’)”. Thus, addition of gTLD “.fun” to the Disputed Domain Name does not eliminate the identity or confusing similarity between the Complainant’s Trademark and the Disputed Domain Name.
Also it is well accepted that a domain name that wholly incorporates a trademark in a recognizable manner will be deemed confusingly similar to that trademark, see e.g., Revlon Consumer Products Corporation v. IONE Inc., WIPO Case No. D2010-1000; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Accordingly, the Panel concludes that the Disputed Domain Name, disregarding the gTLD “.fun”, is identical to the Complainant’s CREDIT MUTUEL Trademark in which the Complainant has the established rights in accordance with paragraph 4(a)(i) of the Policy.
Therefore paragraph 4(a)(i) of the Policy has been satisfied by the Complainant.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
The Panel concludes that the Complainant has made a prima facie case. The Respondent registered the Disputed Domain Name more than one hundred years after the first use of the CREDIT MUTUEL Trademark by the Complainant and more than thirty years after the CREDIT MUTUEL Trademark had been registered. Moreover, the Panel finds that the Respondent is not commonly known by the Disputed Domain Name and it has not received a license, authorization or consent from the Complainant to register or to make use of the CREDIT MUTUEL Trademark.
According to the screenshots of the website associated with the Disputed Domain Name, presented by the Complainant (Annex F to the Complaint), on the date of the Complaint’s filing the Disputed Domain Name resolved to a general parking webpage. In pursuance of section 2.9 of the WIPO Overview 3.0 “applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. With respect to the circumstances of this case, the Panel considers that it is more likely that the Respondent registered the Disputed Domain Name with the sole intention of commercial gain by attracting the consumers to its website.
Furthermore, the Panel concludes that in view of the fame of the CREDIT MUTUEL Trademark it is highly unlikely that anybody, could legitimately adopt the Disputed Domain Name for commercial use other than to create of confusion with the Complainant.
The Respondent did not respond to the Complaint and did not participate in this proceeding, accordingly, the Respondent has failed to present any evidence to support any rights or legitimate interests in the Disputed Domain Name.
In light of the above, the Panel concludes that the second element has been met by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a nonexhaustive list of circumstances that indicate to bad faith conduct on the part of the respondent, namely:
“(i) circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.”
The Panel finds that the Disputed Domain Name completely incorporates not only the Complainant’s CREDIT MUTUEL Trademark, but also the Complainant’s company name. The Disputed Domain Name is confusingly similar with the Complainant’s CREDIT MUTUEL Trademark and the said Trademark has been used for a long time prior to the registration of the Disputed Domain Name which indicates the Respondent registered the Disputed Domain Name for the purpose of misleading Internet users into thinking it is in some way connected, sponsored, endorsed by or affiliated with the Complainant.
Moreover, as the Complainant has used its CREDIT MUTUEL Trademark in commerce for more than century prior to the registration of the Disputed Domain Name, it is more than unlikely that the Respondent was unaware of the Complainant’s Trademarks when it registered the Disputed Domain Name. See e.g.,Comerica Bank v. WhoisGuard Protected, WhoisGuard, Inc. / Ryan Murray, WIPO Case No. D2016-0062.
Therefore, the evidence in this case leads the Panel to conclude that the Respondent’s choice of the Disputed Domain Name was with the only intention to benefit from the reputation and goodwill of the Complainant’s Trademark, which constitutes bad faith registration.
The fact that the Disputed Domain Name used to resolve to a parking website with links to the Complainant’s competitors for commercial gain evidences bad faith use of the Disputed Domain Name. The fact that the disputed domain name currently resolves to an inactive website dos not prevent a finding of bad faith.
According to section 3.6 of WIPO Overview 3.0, where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference. Also, numerous past UDRP panels have held that hiding of the respondent’s identity serves as further evidence of bad faith registration and use, see e.g., Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC / David Grandpierre, WIPO Case No. D2017-0456; Pearson Education, Inc. v. William M. Dees, WIPO Case No. D2011-1088. In this case the Respondent did not file any response and did not take any attempts to justify its actions in respect of the Disputed Domain Name’s registration and use.
In view of the above, the Panel finds that the Complainant has satisfied 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 <creditmutuel.fun> be transferred to the Complainant.
Date: May 20, 2019