WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Confederation Nationale Du Credit Mutuel v. Contact Privacy Inc. Customer 1245893653 / Zack Levy

Case No. D2020-0108

1. The Parties

The Complainant is Confederation Nationale Du Credit Mutuel, France, represented by MEYER & Partenaires, France.

The Respondent is Contact Privacy Inc. Customer 1245893653, Canada / Zack Levy, France.

2. The Domain Name and Registrar

The disputed domain name <creditmutuel-cyb.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 16, 2020. On January 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 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 24, 2020.

The Center sent an email communication in English and French to the parties on January 20, 2020 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is French. The Complainant submitted a request for English to be the language of the proceeding on January 24, 2020. The Respondent did not comment on the language of the proceeding.

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 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2020.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on February 26, 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 Confederation Nationale du Credit Mutuel, which is the political and central body for the banking group Credit Mutuel.

Credit Mutuel is the second French banking and insurance services group, providing its services to 12 million clients for more than a century.

The Complainant is the owner of numerous trademarks, in France and abroad, including:

- The French semi-figurative trademark CREDIT MUTUEL No. 1475940 registered on July 8, 1988, in classes 35 and 36, duly renewed;
- The French semi-figurative trademark CREDIT MUTUEL No. 1646012 registered on November 20, 1990, in classes 16, 35, 36, 38 and 41, duly renewed;
- The European word trademark CREDIT MUTUEL No. 009943135 registered on October 20, 2011 in classes 9, 16, 35, 36, 38, 41, 42 and 45;
- The international semi-figurative trademark CREDIT MUTUEL No. 570182 registered on May 17, 1991 in classes 16, 35, 36, 38 and 41, duly renewed.

The Complainant also owns multiple domain names, including:

- <creditmutuel.info>, registered on September 13, 2001 and duly renewed since then;
- <creditmutuel.org>, registered on June 3, 2002 and duly renewed since then;
- <creditmutuel.fr>, registered on August 10, 1995 and duly renewed since then;
- <creditmutuel.com>, registered on October 28, 1995 and duly renewed since then;
- <creditmutuel.net>, registered on October 3, 1996 and duly renewed since then.

Moreover, the IT subsidiary of the Complainant’s group, which is named Euro-Information, is the owner of the European word trademark CYBERMUT No. 004114765, registered on February 3, 2011, in classes 9, 35, 36, 38 and 42, duly renewed.

The disputed domain name <creditmutuel-cyb.com> has been registered using a privacy service on November 16, 2019, and, at the time of the Complaint and of the decision, it does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First of all, the Complainant asserts that the disputed domain name is confusingly similar to its prior trademarks, since it wholly incorporates the CREDIT MUTUEL trademark, with addition of the term “CYB”.

The Complainant considers that this addition does not avoid the likelihood of confusion between the disputed domain name and the CREDIT MUTUEL trademark, and on the contrary contributes to emphasize this likelihood of confusion since the term “CYB” could refer to the Complainant’s clients’ web portal named Cybermut.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Complainant has never granted any license, nor any authorization to the Respondent to use the CREDIT MUTUEL trademark, including as a domain name.

The Complainant also considers that the fact that the disputed domain name does not resolve to any active website does not constitute a bona fide offer of goods and services.

Finally, the Complainant claims that the disputed domain name was registered and is used in bad faith.

The Complainant argues that the Respondent could not have ignored the reputation of the CREDIT MUTUEL trademarks when registering the disputed domain name, and that the addition of the “CYB” term, for potentially referring to the CYBERMUT portal of the Complainant, demonstrates that the Respondent was aware of the Complainant’s activities.

The Complainant also believes that the fact that the disputed domain name does not resolve to any active website constitutes bad faith use as “passive holding” and establishes the Respondent has no serious intent to use it for offering goods and services or promoting a non-commercial cause.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the proceeding

Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the Parties, the language of the proceeding is the language of the registration agreement, subject to the authority of the Panel to determine otherwise. The Registrar confirmed that the language of the registration agreement is French.

The Complainant has requested English to be the language of the proceeding based on the following:
- The Registrar, Google LLC is an American company, located in Mountain View in California,
- English language is thus logically the “native” language of the Registrar and is proposed on its website,
- English is a common language in international business,
- No material element does ensure that the Respondent has no knowledge of English,
- The contact details of the Respondent are inaccurate (the postal code is notably false; the postal code from
Paris is 75 000 and not 56 000): he is thus probably not located in France.

The Respondent did not comment on the language of the proceeding.

UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Therefore, taking into consideration the Complainant’s arguments and the fact that the Respondent did not make any objection, the Panel decides that the language of the proceeding is English.

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the 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;

(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.

B. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights in the CREDIT MUTUEL trademark.

Then, the Panel notices that the disputed domain name is composed of (i) the whole CREDIT MUTUEL trademark, to which have been added an hyphen and the term “CYB”, and (ii) the generic Top-Level Domain (“gTLD”) “.com”.

The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the domain name. This test typically involves a side‑by‑side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

Moreover, the Panel concurs with the opinion of several prior UDRP panels which have considered that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive or meaningless, would not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0).

Regarding the disputed domain name, the Panel finds that the addition of the term “CYB”, which can be considered as the diminutive of Cybermut, that is the name of the Complainant’s clients web portal, to the CREDIT MUTUEL trademark does not exclude confusing similarity, and on the contrary emphasizes this likelihood of confusion.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; 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 or service mark at issue.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Moreover, the disputed domain name does not resolve to an active website, which does not represent a bona fide offering of goods or services.

The Respondent did not reply to the Complainant’s contentions.

Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s 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 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 domain name; or

(ii) the respondent has 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 the respondent’s website or location or of a product or service on the respondent’s website or location.”

Section 3.3 of the WIPO Overview 3.0 provides that different factors are relevant in determining a finding of bad faith under the doctrine of passive holding, including:

(i) the degree of distinctiveness or reputation of the complainant’s mark,

(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use,

(iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and

(iv) the implausibility of any good faith use to which the domain name may be put.

First of all, the Panel finds that it is established that the Complainant’s trademarks were registered before the registration of the disputed domain name.

Moreover, the Panel finds that the Respondent knew, or should have known, that its registration would be confusingly similar to the Complainant’s trademark, given the reputation of the Complainant’s trademark and the fact that the disputed domain name reproduces the CREDIT MUTUEL trademark in its entirety.

Furthermore, the Panel notes that the Respondent has not submitted a Response to the Complaint and that the Respondent has registered the disputed domain name using a privacy service, constituting factors relevant to the bad faith passive holding of the disputed domain name, according to prior UDRP panel decisions (see Section 3.3 of the WIPO Overview 3.0).

Indeed, doing so, the Panel finds that the Respondent intentionally attempted to passively hold the disputed domain name, by creating a likelihood of confusion with the CREDIT MUTUEL trademark, all the more so as the Respondent added the “CYB” term to the CREDIT MUTUEL trademark in the disputed domain name, which can be considered as referring to the Complainant’s clients’ web portal named Cybermut, thus emphasizing this likelihood of confusion.

Consequently, in view of all the circumstances of this case, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to Policy, paragraph 4(a)(iii).

7. Decision

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-cyb.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: March 11, 2020