WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banque Federale du Credit Mutuel (BFCM) v. Cedric Bauvias
Case No. D2019-0952
1. The Parties
1.1 The Complainant is Banque Federale du Credit Mutuel (BFCM), France, represented by MEYER & Partenaires, France (the “Complainant”).
1.2 The Respondent is Cedric Bauvias, Mexico (the “Respondent”).
2. The Domain Name and Registrar
2.1 The disputed domain name <e-targobank-identification.net> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2019. On April 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 27, 2019, 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.
3.2 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”).
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 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2019.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on May 29, 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
4.1 The Complainant in this administrative proceeding is Banque Federale du Credit Mutuel (BFCM), a public limited liability company registered in France. The Crédit Mutuel group is said to be the main banking group within Crédit Mutuel and is made up of 11 federations of Crédit Mutuel and their affiliated banks, subsidiaries. The Complainant is also 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 said that in June 2017, the Crédit Mutuel group became the sole shareholder of Targobank AG & Co. KGAa, a commercial bank established in the year 1926 and based in Dusseldorf in Germany and formally known as Citibank Privatkunden AG & Co. KGaA. This was with a view to developing its banking and insurance services 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 providing financial information to the public. The Complainant owns a large number of trademarks consisting of or including the mark TARGO BANK in France and abroad. For instance, TARGO BANK international trademark No. 1013173, registered on July 22, 2009, in classes 16, 35, 36, and 38 of Nice Classification and TARGO X BANK, European Union semi-figurative trademark No. 8285579, registered on April 14, 2009 in classes 16, 35, 36, 38 of Nice Classification. Furthermore, it is stated on behalf of the Complainant that the mark TARGO BANK is also protected as gTLD and ccTLD domain names.
4.2 The Respondent according to the WhoIs database is Cedric Bauvais, Mexico.
4.3 The Respondent registered the Disputed Domain Name <e-targobank-identification.net> on February 14, 2019.
5. Parties’ Contentions
5.1 The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainant’s marks because the trademark TARGO BANK is identically reproduced in the Disputed Domain Name and that the sole difference between the Disputed Domain Name and the trademarks is the addition of the letter “e” and the generic word “identification”. The Complainant observes that the generic extension “.net” and the hyphen are not taken into account when conducting a confusing similarity test following, InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075. It is further asserted on behalf of the Complainant that these differences cannot prevent the likelihood of confusion with the Complainant’s trademark, on the contrary, it strengthens the likelihood of confusion by reminding Internet visitors of the Complainant’s services and the possibility that they (the Respondents) have access to their banking accounts online. In this regard reference is made to a number of previous WIPO UDRP decisions where similar names have been found to be confusingly similar to the complainants’ trademarks such as in Credit Industriel et Commercial v WhoisGuard, Inc./Thierry Alexis, WIPO Case No. D2018-1811 with respect to the disputed domain name <cic-mon-compte.review> and BforBank SA v. Dipika Sharma, WIPO Case No. D2016-0378 with respect to the disputed domain name <bforbanking.com>.
5.2 The Complainant also asserts 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 Complainant’s business nor is it one of the its agents nor has it been granted any licence or authorization by the Complainant to register the Disputed Domain Name. It is further argued that the Respondent has never been known by the mark TARGOBANK and has no trademark rights on this mark. The Complainant contends that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering because this Disputed Domain Name had firstly activated a phishing website and is now inactive following the Complainant’s Complaint and the subsequent action. The Complainant refers to a number of previous UDRP decisions where the lack of rights or legitimate interests in the disputed domain name have been recognized including the decision in Citibank Privatkunden Ag & Co. KGaA v Janice Liburd /Moniker Privacy Services, WIPO Case No. D2011-0559 with respect to the disputed domain name <targobank-de.com>.
5.3 On the question of bad faith registration and use, the Complainant advances the following arguments; (1) That it is inconceivable that the Respondent could not have been aware of the Complainant’s trademarks at the time the Respondent decided to register the Disputed Domain Name considering the Complainant’s extensive reputation in the banking and financial services industry. The Complainant argues further that it is only someone who is familiar with the TARGO BANK trademark that is likely to have registered the Disputed Domain Name. Therefore, it is asserted that the Respondent’s awareness of the Complainant’s trademarks and business is evidence of registration of the Disputed Domain Name in bad faith. Secondly, on the question of bad faith use, the Complainant alludes to the fact that the website to which the Disputed Domain Name resolved was a phishing website even though it has been shut down following the Complainant’s action. In this regard the Complainant maintains that it regularly faces phishing attempts and has to protect its clients and customers from phishing attacks. Therefore, the Complainant contends that the former activation of the phishing website is in itself evidence of bad faith and the present use of the Disputed Domain Name constitutes bad faith use as it amounts to “Passive Holding”. In the circumstances therefore the Complainant concludes that the Respondent is not making any legitimate noncommercial or fair use of the Disputed Domain Name.
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.
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 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.
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 without any hesitation accepts that the Complainant is a well-known financial institution and owns several unique trademarks registrations of the TARGO BANK trademark in Europe and is the registrant of several domain names incorporating the said TARGO BANK mark as evidenced by the documents attached to this proceeding. The Panel therefore finds that upon a visual examination, the Disputed Domain Name is undoubtedly confusingly similar to the Complainant’s trademark. Clearly, the Disputed Domain Name incorporates the Complainant’s TARGO BANK trademark. The Panel finds that the mere addition of the letter “e”, the generic word “identification” and the suffix “.net” does absolutely nothing to prevent a finding of confusing similarity, when conducting a confusing similarity test. The Panel refers to the detailed discussion on the test for confusing similarity 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”). Furthermore, see also InfoSpace.com, Inc. v. Tenenbaum Ofer, supra with reference to the disputed domain name <info-space.com> where the panel found that the addition of a hyphen and “.com” are not distinguishing features such that could prevent a finding of confusing similarity.
6.4 Therefore this 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 equally 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. The Panel equally finds that the Respondent has no affiliation 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 demonstrate that the Respondent has commonly been known by the Disputed Domain Name. See in support of the Panel’s findings a similar previous UDRP decision in Citibank Privatkunden AG & Co. KGaA v. Janice Liburd/Moniker Privacy Services, supra, with reference to the disputed domain name <targobank-de.com>.
6.6 Therefore, 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, this Panel has taken into account a number of irrefutable factors to conclude that the Respondent registered the Disputed Domain Name in bad faith and continued to engage in bad faith use despite the cease and desist letters issued by the Complainant.
6.8 In the first instance, the Panel has taken into account the failure of the Respondent to respond to the Complainant’s cease and desist letter in order as to obtain the transfer of the Disputed Domain Name and concludes that this is clear evidence of bad faith registration and continued bad faith use. Secondly, the Panel finds it inconceivable that the Respondent was not aware or did not become aware of the Complainant’s extensive activity in the financial industry and trademark at the time of registering the Disputed Domain Name. Thirdly, the Panel finds that since the website to which the Disputed Domain Name resolved was a phishing website, the Respondent clearly engaged in conduct that is undoubtedly illegal activity, capable of disrupting the Complainant’s business. The Panel finds it does not matter that the website is no longer active as the continued retention of the Disputed Domain Name by the Respondent despite inactivity is tantamount to Passive Holding which also constitutes evidence of bad faith. See in support the detailed discussion under paragraph 3.2 of WIPO Overview 3.0. See also Credit Industriel et Commercial S.A. v. Registration Private, Domains by Proxy, LLC., WIPO Case No. D2016-2447 with respect to the disputed domain name <bank-cic.net> where the panel found passive holding of a disputed domain name constitutes bad faith use. Fourthly, as indicated in paragraph 5.5 above, the Panel has drawn adverse inferences from the failure of the Respondent to respond to the contentions of the Complainant in this proceeding.
6.9 Accordingly, the Panel is satisfied that the Respondent has registered and continued to use the Disputed Domain Name in bad faith.
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 <e-targobank-identification.net> be transferred to the Complainant.
Date: June 24, 2019