WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banque Fédérale du Crédit Mutuel (BFCM) v. Henry J Wegmann, Deutchgriffin

Case No. D2019-0947

1. The Parties

1.1 The Complainant is Banque Fédérale du Crédit Mutuel (BFCM), France, represented by MEYER & Partenaires, France (the “Complainant”).

1.2 The Respondent is Henry J Wegmann, Deutchgriffin, United States of America (“United States”)

(the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed domain name <targobamkdeutsch.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2019. On April 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 25, 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 April 26, 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 April 30, 2019.

3.2 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”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2019.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on June 4, 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. The panel has had to extend the Decision due date to at least June 28, 2019.

4. Factual Background

4.1 The Complainant in this administrative proceeding is known as Banque Fédérative du Crédit Mutuel (BFCM), a public limited company with its registered office in Strasbourg, France. It is made up of 11 federations of Crédit Mutuel, their affiliated banks and its subsidiaries, in particular Assurances du Crédit Mutuel (ACM), Crédit Industriel et Commercial (CIC), and IT and technology subsidiaries. The Complainant is described as the holding company of the group, acting as the central treasury and undertakes capital and money market activities on behalf of the group. It is also said that as of December 5, 2008, Citibank Privatkunden AG & Co. KGaA operated as a subsidiary of Group Crédit Mutuel — CIC, being the second French banking Group which has about 18 million clients and more than 65,000 employees with a network of 519 branches in France. Initially, it is said that Citibank Privatkunden AG & Co. KGaA commercial bank was established in 1926 in Dusseldorf, Germany, and has to date 3.4 million clients with 6,600 employees. It is said further that on February 22, 2010, Citibank Privatkunden AG & Co KGaA changed its trade name into Targo Bank AG & Co KGaA, and in June 2017 the Crédit Mutuel group through the Complainant became the sole shareholder of TARGOBANK to further develop its banking and insurance services practices with individuals and companies within the Spanish market. The Complainant is currently operating a web portal under the URL “https://www.targobank.de” (in German language only) dedicated to its products and services and providing a lot of information to the public about financial information.

4.2 The Respondent is Henry J Wegmann, an individual said to be based in the United States and according to the WhoIs database who registered the Disputed Domain Name <targobamdeutsch.com> on February 28, 2019.

5. Parties’ Contentions

A. Complainant

5.1 It is the Complainant’s contention that the Disputed Domain Name <targobamdeutsch.com> is identical or confusingly similar to the Complainant’s trademark TARGOBANK. The Complainant is said to own a large number of trademarks consisting in or including the mark TARGOBANK in France and abroad as follows:

(1) TARGO Bank, International trademark No. 1013173 registered on July 22, 2009 in classes 16, 35, 36, and 38 of the 1957 Nice Agreement.

(2) TARGO X BANK, European Union semi-figurative trademark No. 8285579 registered on February 1, 2010 in classes 16, 35, 36, and 38 (Internet services) of Nice Agreement.

Furthermore, it is said that the mark TARGO BANK is also protected in various generic Top-Level Domain (“gTLD”) and country-code Top-Level Domain (“ccTLD”) domain names. The Complainant in this regard further asserts that it is well established that the gTLD “.com” is not taken into account when conducting a confusing similarity test and alludes to the fact that the Complainant’s TARGO BANK trademark is entirely reproduced in the Disputed Domain Name together with the descriptive word “deutsch”. The Complainant also contends that the sole difference between the Disputed Domain Name and the Complainant’s trademark is the substitution of the letter “n” in “bank “ with the letter “m” in the word “bamk”, this slight difference in spelling it is said is very similar and visually confusing with the Complainant’s TARGO BANK trademark and is characteristic of typo-squatting. The Complainant further contends that the addition of the word “deutsch”, which means “German” in German, cannot be coincidental since the Complainant is located in and conducts its main business in Germany. Moreover, it is said that the Disputed Domain Name <targobamkdeutsch.com> is confusingly similar with <targobank.de>, which is the domain name of the Complainant’s most important website amongst other domain names owned by the Complainant and registered between January and March 2009. In support of these contentions above, the Complainant relies on previous UDRP decisions which have found similar names to be confusingly similar to the Complainant’s trademarks. See first, the decision in Citibank Privatkunden AG & Co KGa A v. Janice Liburd, / Moniker Privacy Services, WIPO Case No. D2011-0559 with respect to the domain name <targobank-de.com> and second, the decision in Comerica Bank v Host Master, Transure Enterprise Ltd / Above.com Domain Privacy, WIPO Case No. D2014-0735, with regards to the domain name <comericabamk.com>.

5.2 The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, as the Respondent is not in any way related to the Complainants business, nor is it one of the agents, nor has it been granted any licence or authorization by the Complainant to register the Disputed Domain Name. Furthermore, the Complainant has discovered though its IT Security Department that the Disputed Domain Name is associated with a German IP Address at 104.248.78.94 suspected to be involved in phishing activity. Lastly, the Complainant argues that the Respondent has not committed any action which indicates that the Respondent has rights or legitimate interests in the Disputed Domain Name; instead, the Disputed Domain Name currently resolves to a website currently under construction which is only displaying the standard page of an entity known as Joomla Content Management System.

5.3 On the question of bad faith registration and use, the Complainant argues as follows; firstly, that it is difficult to imagine that the Respondent could have ignored the existence of the Complainant’s TARGOBANK trademark at the time the Respondent applied to register the Disputed Domain Name as several previous WIPO panelists have found the Complainant’s trademark to be well-known. See for instance, Citibank Privatkunden AG & Co. KGaA v Tomislav Kvesic, WIPO Case No. D2010-2286 with reference to the domain names <stargobank.com>, <stargobank.net> and <stargobank.org>, and Citibank Privatkunden AG & Co. KGaA v. Janice Liburd/ Moniker Privacy Services, WIPO Case No. D2011-0559 regarding the domain name <targobank-de.com>. Secondly, the Complainant refers to the Respondent’s act of typo-squatting as further evidence of bad faith registration following Hummert International Inc. v. Manila industries Inc., WIPO Case No. D2006-0777 with regards to the domain name <hummerts.com>. Thirdly, it is asserted that bad faith registration is reinforced by the addition of the geographical word “deutsch” considering that the Complainant’s trademarks have a great reputation in Germany. Fourthly, since the Respondent’s details were first concealed for privacy and since the newly mentioned email address corresponds to a webmail offered by a German company at “mail.de GmbH” at “www.mail.fr” aiming the French market; it is contended that this webmail offers a high level of identity protection and anonymity, while that in itself is not evidence of bad faith use, taken together with other factors highlighted above reinforces bad faith use. Fifthly, in addition to the passive holding feature mentioned above, the Complainant refers to the possibility that the Disputed Domain Name was registered for and intended to be used for emailing purposes as can be verified by the fact that email servers have been activated for the Disputed Domain Name. In this respect, the Complainant further asserts that the Respondent could send and receive emails through any address with the @targobamkdeutsch.com suffix for commercial emailing, phishing or spamming purposes which could all be detrimental to the Complainant’s activities. Further, in this regard, the Complainant relies on the decision in Credit Industriel et Commercial S.A. v. Zabor Mok, WIPO Case No. D2015-1432 in respect of the domain name <cic-espaceclient.com>.

B. Respondent

5.4 The Respondent did not reply to the Complainant’s contentions and, therefore, the Panel shall draw such adverse inferences from the failure of the Respondent to reply as it considers appropriate in the circumstances.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in the administrative proceeding the Complainant must prove that:

i) The Disputed Domain Name is identical and confusingly similar to the trademark or service mark of the Complainant;

ii) The Complainant 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.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding.

A. Identical or Confusingly Similar

6.3 This Panel accepts that the Complainant is a well-established financial institution and owns several trademark registrations of the TARGOBANK trademark in Germany, France, and Europe generally and is the registrant of several domain names incorporating the TARGO BANK trademark as supported by documents attached to these proceedings. The Panel therefore finds that upon a visual examination the Disputed Domain Name is clearly, confusingly similar, to the Complainant’s trademark. Undoubtedly, the Disputed Domain Name <targobamkdeutsch.com> incorporates entirely the Complainant’s TARGO BANK trademark, the fact that the Respondent has engaged in typo-squatting by replacing the letter “n” in bank with the letter “m” in the Disputed Domain Name on the one hand, and the addition of the gTLD “.com” on the other hand, does absolutely nothing to prevent a finding of confusing similarity when conducting a confusing similarity investigation. The Panel further accepts that the addition of the word “deutsch” which is the word for German was not accidental considering that the Complainant is located and conducts its main business in Germany. In this regard, the Panel refers to previous WIPO Panel decisions which have found similar domain names to be confusingly similar to the Complainant’s trademark, namely; Citibank Privatkunden AG & Co. KGa A v Janice Liburd/ Moniker Privacy Services, supra with respect to <targobankde.com> and Comerica Bank Host Master Transure Enterprise Ltd/Above.com Domain Privacy, supra with regards to the domain name<comericabamk.com>. Also relevant in this regard is the detailed discussion on the test for confusing similarity, when conducting a confusing similarity enquiry as contained in sections 1.7, 1.8, and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0).

6.4 Therefore the Panel is satisfied that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

6.5 The Panel is also satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Respondent has failed to adduce any evidence of engaging in any actual bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As contended by the Complainant the Panel finds that the Respondent has no affiliation whatsoever with the Complainant and has not been authorised or licensed by the Complainant to register the Disputed Domain Name and neither has the Respondent provided any evidence to establish that the Respondent has commonly been known by the Disputed Domain Name. On the contrary, the evidence adduced by the Complainant demonstrates that the Disputed Domain Name currently resolves to a website under construction supported by an entity named Joomla Content Management System. The Panel finds that such conduct by the Respondent does not indicate that the Respondent has any rights or legitimate interest in the Disputed Domain Name.

6.6 In the circumstances the Panel finds that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Name as specified in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.7 With regards to the question of bad faith registration and use, the Panel has taken into account quite a number of undisputed factors to conclude that the Respondent registered the Disputed Domain Name in bad faith.

6.8 First of all, the Panel finds that it is inconceivable that the Respondent was not aware of the Complainant’s extensive activity in the financial industry and related trademarks at the time of registering the Disputed Domain Name being on February 28, 2019. See in this regard, numerous previous WIPO decisions confirming the well-known status of the Complainant’s trademark including Citibank Privatkunden Ag & Co KGA v. Janice Liburd/Moniker Privacy Services, supra with respect to the domain name <targobank-de.com> Secondly, the Panel finds that the Respondent’s decision to engage in typo-squatting by replacing the letter “n” with the letter “m” in the Disputed Domain Name is further evidence of bad faith registration. See Hummert International Inc. v. Manila/ Industries, Inc. supra with regards to the domain name <hummerts.com>. Also thirdly, the Panel finds that the addition of the word “deutsch” (which is German for “German”) to the Disputed Domain Name, obviously a non-accidental act further confirms the Complainant’s intended bad faith use which the Respondent has engaged in considering the reputation of the Complainant’s trademarks in Germany. Fourthly, the Panel finds that the fact of the Respondent’s use of a privacy protection shield in the past taken together with all the other factors above goes further to confirm the Respondent’s bad faith registration and use of the Disputed Domain Name. Fifthly, the Panel has considered the apparent inactivity and the passive holding of the Disputed Domain Name as further evidence of bad faith use and registration considering that its email servers have been activated to send and receive emails through any email address with an @targobamkdeutsch.com suffix which could potentially be utilized for commercial emailing, spamming, and/or phishing purposes (noting here the IP address) all to the detriment of the Complainant’s business and online presence. See in this regard, Credit Industriel et Commercial S.A. v Zabor Mok, supra with reference to the <cic-espaceclient.com>. Sixthly, as indicated in paragraph 5.4 above, the Panel has drawn adverse inferences from the failure of the Respondent to reply to the contentions of the Complainant in this matter.

6.9 Accordingly, the Panel is satisfied that the Respondent registered the Disputed Domain Name in bad faith.

7. Decision

7.1 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 <targobamkdeutsch.com> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Date: July 8, 2019