WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caceis Bank v. Tivon Marcus
Case No. D2020-0075
1. The Parties
The Complainant is Caceis Bank, France, represented by Gevers Legal NV, Belgium.
The Respondent is Tivon Marcus, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <cacceis.com> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2020. On January 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2020, 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 January 20, 2020 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 January 21, 2020.
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 January 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2020.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on March 6, 2020. 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 an asset servicing bank dedicated to asset managers, banks, institutional and corporate clients, a subsidiary branch of group Crédit Agricole S.A.
The Complainant owns numerous CACEIS trademark registrations in different countries and regions, such as the European Union registration No. 004643573, filed on September 21, 2005, and registered on February 26, 2008, and the International trademark No. 879274, registered on September 21, 2005, designating among others the United States.
The Complainant is also the owner of the trade name CACEIS, derived from its company name Caceis Bank S.A., which is commonly used in its communications and on its official website at “www.caceis.com”.
The Respondent registered the disputed domain name <cacceis.com> on November 22, 2019.
The Panel accessed the disputed domain name on March 18, 2020, at which time it did not resolve to any active website.
5. Parties’ Contentions
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Disregarding the generic Top-Level Domain (“gTLD”) “.com”, the only distinction between the Complainant’s CACEIS trademark and the disputed domain name is the mere addition of the consonant “c” in the disputed domain name. It is well established that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element. This practice is commonly referred to as “typosquatting” and creates a virtually identical and/or confusingly similar domain name to the Complainant’s trademark. Moreover, the alterations made by the Respondent are insufficient to distinguish the disputed domain name from the Complainant’s trademark since the term “cacceis” may necessarily lead Internet users to believe that the disputed domain name is linked to the Complainant. Finally, the gTLD “.com” does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar. Moreover, the trademark CACEIS fulfills all criteria for obtaining trademark protection, including the required distinctive character and availability/uniqueness. Therefore, the disputed domain name could easily confuse the internet user as being the domain name of the Complainant, or could wrongly convince Internet users that the disputed domain name has some association with the Complainant’s trademark, or is endorsed by the Complainant, when in fact it does/is not.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no connection or affiliation with the Complainant. The Respondent did not receive any license nor was permitted in any way by the Complainant to register or use the Complainant’s trademark, or to apply for or use any domain name incorporating the CACEIS trademark or a similar sign. The Respondent does not own any valid trademark or trade name rights over “caceis” or “cacceis”. Also, the use of the disputed domain name cannot be considered a bona fide offering of goods or services. Furthermore, one of the Complainant’s client received a notice that the disputed domain name is being used for phishing and that they have detected a phishing email. It is therefore clear that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name and cannot support a claim of rights or legitimate interests in the disputed domain name. The use of a domain name for illegal activity (e.g., phishing or other types of fraud) can never confer rights or legitimate interests on a respondent. Finally, previous UDRP panels have consistently held that it is sufficient for the Complainant to provide a prima facie case that the Respondent does not hold rights or legitimate interests in the domain name. Once a prima facie case is shown, the burden of proof shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. The disputed domain name is highly similar to the CACEIS trademark. The CACEIS mark is distinctive, and this distinctiveness is reinforced by the use that has been made since its registration in 2005. The Complainant’s trademark is moreover a fanciful and invented sign which makes it impossible that the Respondent would have come up with a nearly identical domain name. The disputed domain name has no specific meaning apart from the complete mention of the Complainant’s mark CACEIS. The Respondent intends to appear affiliated with the Complainant and trade off the reputation of the CACEIS trademark, and to use the domain name for phishing activities. Where an email address connected to a disputed domain name is used to mislead customers of the Complainant, such use cannot be considered a legitimate noncommercial or fair use of a domain name. The Respondent used minor permutations of the CACEIS trademark in an attempt to deliberately mislead the Complainant’s clients. That confusion is even more problematic and risky given the banking and finance sector wherein the Complainant is active. Indeed, the confusion may result in reputational harm for the Complainant and serious financial consequences for the Complainant’s clients. In the backdrop of CACEIS’ extensive use and advertising, widespread business activities worldwide, overseas office locations, and numerous trademark registrations (dating back to 2005 and predating the Respondent’s registration of the disputed domain name), coupled with the Complainant’s presence in the United States, where apparently the Respondent is domiciled, the Complainant believes that the Respondent must have been aware of the rights of the Complainant in its registered and reputed CACEIS trademark at the time of registration of the disputed domain name. The disputed domain name gives a false impression that the Respondent is authorized, licensed, affiliated or connected to the Complainant. Internet users are likely unaware that they are visiting a website not controlled by the Complainant. Furthermore, the Respondent has control of the disputed domain name and may alter its use at any point, disruptive to the Complainant. The disputed domain name currently directs to an inactive page. Panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Previous panels also held that bad faith can be found where the Respondent makes no use of the disputed domain name, if there are no indications that the Respondent could have registered and used the disputed domain name for any non-infringing purpose.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(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 Panel has no doubt that “caceis” is a term directly connected with the Complainant.
Annex 5 to the Complaint shows trademark registrations for CACEIS in the European Union since 2008, among others.
The disputed domain name differs from the Complainant’s trademark CACEIS by the mere addition of an extra “c” to the trademark CACEIS (“cacceis” instead of “caceis”), as well as of the gTLD “.com”.
Concerning the misspelling of the Complainant’s trademark, this practice is commonly called typosquatting, a kind of cybersquatting in which a respondent registers a domain name in order to take advantage of typing errors eventually made by Internet users seeking a complainant’s commercial website (see CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201).
It is also already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed or authorized the use of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any reason to justify why it has chosen the specific term “cacceis” to compose the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant showed that the disputed domain name was recently used in connection with a phishing scheme.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in late 2019), the trademark CACEIS was already directly connected to the Complainant’s financial services for more than a decade.
Besides the gTLD “.com”, the disputed domain name differs from the Complainant’s mark by the mere addition of an extra letter “c”.
The terms “caceis” or “cacceis” have no dictionary meaning.
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent, at the time of the registration of the disputed domain name, could not have been aware of the Complainant’s trademark, and that the adoption of word “cacceis” could be a mere coincidence.
Currently no active website is linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith.
In the Panel’s view, the circumstances that the Respondent has recently used the disputed domain name in connection with a phishing scheme (as demonstrated by the Complainant), and has not provided any justifications for the registration of a domain name containing a minor variation of a third-party trademark, support a finding of bad faith registration and use of the disputed domain name by the Respondent in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 <cacceis.com> be transferred to the Complainant.
Date: April 3, 2020