WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Credit Industriel Et Commercial S.A. and Confederation Nationale Du Credit Mutuel v. Yassine Ahmed, Yassine Soumi, Yassine Helaloaa, and InMotion Hosting, C/O InMotion Hosting, Inc / Yassine Helaloaa
Case No. D2020-0549
1. The Parties
The Complainants are Credit Industriel Et Commercial S.A. and Confederation Nationale Du Credit Mutuel, France, represented by Mayer and Partners, France.
The Respondents are Yassine Ahmed, United States of America (“United States”); Yassine Soumi, France; Yassine Helaloaa, United States; and, InMotion Hosting, C/O InMotion Hosting, Inc, United States / Yassine Helaloaa, France.
2. The Domain Names and Registrar
The disputed domain names <credit-mutuel-espace-client-mobile-activation.com>, <credit-mutuel-espace-client-mobile-activation.net>, <credit-mutuel-online-bank-mobile-confirmation-securite.com>, <credit-mutuel-online-bank-mobile-confirmation-securite.net>, <credit-mutuel-online-bank-mobile-confirmation-securite.org>, <credit-mutuel-service-confirmation-mobile.com>, <credit-mutuel-service-validation-mobile.com>, <espace-client-cic-service-confirmation-mobile.info>, <espace-client-cic-service-confirmation-mobile.org>, <espace-client-cic-service-mobile-confirmation.biz>, <espace-client-cic-service-mobile-confirmation.com>, <espace-client-cic-service-mobile-confirmation.info>, and <espace-client-cic-service-mobile-confirmation.org> are registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2020. On March 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 6, 2020, the Registrar transmitted by email to the Center its verification response:
(a) it is the Registrar for the disputed domain names;
(b) disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint (the Registrar’s privacy service);
(c) the registration agreements are in English;
(d) the disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”);
(e) and the UDRP applies to the disputed domain names.
The Center sent an email communication to the Complainant on March 6, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On March 12, 2020, the Complainant requested an extension of time for purposes of filing the amended Complaint.
On March 12, 2020, the Respondent, InMotion Hosting, C/O InMotion Hosting, Inc, contacted the Center stating that it provided privacy services for registrants and disclosed Yassine Helaloaa of France as the underlying registrant. The Complainant filed an amended Complaint on March 16, 2020. On March 17, 2020, the Center contacted the Complainant, notifying the Complainant of the additional underlying registrant that was disclosed by the Respondent, InMotion Hosting, C/O InMotion Hosting, Inc. On March 19, 2020, the Complainant filed a second amended Complaint.
The Center verified that the Complaint, together with the two amended Complaints, satisfied the formal requirements of the Policy, 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 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2020.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 23, 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 Complainants are members of the same corporate group.
The First Complainant is the oldest French deposit bank having been established in 1859 by an imperial decree signed by Napoleon III. It was nationalized in 1982 and privatized in 1997. It currently has more than 4.7 million clients with more than 2,000 agencies throughout France and 38 abroad. It operates a website providing information about, and access to, its services located at “www.cic.fr”.
Amongst other things, the First Complainant is the owner of European Union (EU) Registered Trademark No. 005891411, CIC, which was registered on May 10, 2007, in respect of a range of goods and services in International Classes 9, 16, 35, and 36. The First Complainant is also the owner of French Registered Trademark No. 1358524, C.I.C., which has been registered since 1986 in respect of relevant services in International Classes 35 and 36.
The Second Complainant describes itself as the second French banking and insurance services group. It has some 12 million customers and a network of 3,178 offices throughout France. It provides services and information via web portals accessible at “www.creditmutuel.com” and “www.creditmutuel.fr”. According to the Complaint, customer access to their accounts is through the latter URL.
Amongst other things, the Second Complainant is the owner of EU Registered Trademark No. 009943135, CRÉDIT MUTUEL, in respect of a range of goods and services in International Classes 9, 16, 35, 36, 38, 41, 42, and 45. This trademark has been registered since October 20, 2011. It is also worth noting that the Second Complainant is the owner of registered trademarks for a coloured representation of CRÉDIT MUTUEL and a figurative device, which have been registered in France, Trademark No. 1475940, in International Classes 35 and 36 since 1988 and an International Registration No. 570182 designating Benelux, Italy, and Portugal, which has been registered since 1991.
According to the Complaint, under French ministry order No. 58-966 of October 16, 1958, the exclusive use of the name CREDIT MUTUEL in France has been reserved to the Second Complainant.
The disputed domain names were registered between November 19, 2019, and January 7, 2020. If one attempts to browse to most of the disputed domain names, access is automatically blocked on the grounds that the site contains malicious content. In the case of the disputed domain names:
however, one simply lands on a parking page provided by the Fourth Respondent. There is no advertising on this page.
5. Discussion and Findings
A Response has been filed by the Fourth Respondent, but not by any of the other Respondents.
The Response provided by the Fourth Respondent states it is not the holder of any of the disputed domain names, but has provided domain privacy services for Yassine Helaloaa who, according to the Fourth Respondent, holds all the disputed domain names.
Effectively, therefore, no substantive response has been filed. The Complaint has been sent, however, to the Respondents at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that each Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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. Consolidation of Complaints
The Complainants have requested consolidation of their complaints as the disputed domain names have been registered in the names of a number of different entities.
Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, panels have frequently held that the Panel’s powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of the Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally and each is given a fair opportunity to present his, her, or its case.
In accordance with those requirements, panels have typically allowed joinder against multiple respondents who have registered different domain names where, amongst other things, the domain names in question, or the websites to which they resolve, appear to be under common control and consolidation would be fair and equitable to all parties. The onus of establishing that these requirements have been met falls on the party seeking consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.
In the present case, the Complainants are members of the same corporate group. It appears likely that the Respondents (apart from the Fourth Respondent) are the same person or acting together.
As noted above, the Fourth Respondent has stated that all the disputed domain names are held by Yassine Helaloaa. According to the Registrar, the Fourth Respondent is the holder only of the disputed domain names:
(a) <credit-mutuel-service-validation-mobile.com>; and
From the information provided by the Registrar, however, the addresses used by the First and Third Respondents are the Fourth Respondent’s address. According to the Registrar:
(c) the First Respondent is the holder of the disputed domain names which include the trademark CIC as the third element of the disputed domain name;
(d) the Fourth Respondent is the holder of the disputed domain names:
(e) the Second Respondent is the holder of the disputed domain names:
It appears therefore from the information supplied by the Fourth Respondent that the First and Third Respondents at least are the same person or acting together.
The Panel is also prepared in this case to draw the same inference in respect of the Second Respondent. The Second Respondent has the name “Yassine” in common with the First and Third Respondents, has used the same Registrar as them, and has registered disputed domain names which contain essentially the same structure and pattern as those held by the Third and Fourth Respondents and, also, the three respondents whose names include “Yassine” or “Yacin” in Crédit Industriel et Commercial S.A. and Confédération Nationale du Crédit Mutuel v. Whois Privacy Service / Yassine Ahmed / Yassine Cleoo / Yassinee Cleo / Yacin Helaloa / Robert Michel, WIPO Case No. D2020-0491.
In these circumstances, the Panel considers it is both sensible and conducive to efficiency for the complaints of both Complainants against the Respondents to be consolidated in the one proceeding. Given the matters set out above, it does not appear that any Respondent is likely to be prejudiced by consolidation. Having failed to provide a Response, none of the Respondents has objected to joinder or identified any prejudice he or she may suffer if consolidation were permitted.
For ease of reference, the Panel will refer just to the “Respondent” unless it becomes necessary in a particular case to distinguish between particular Respondents or disputed domain names.
B. Identical or Confusingly Similar
The first element that the Complainants must establish is that the disputed domain names are identical with, or confusingly similar to, the trademark rights of one or the other Complainant.
There are two parts to this inquiry: a Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.
As discussed in section 4 above:
(a) the First Complainant has proven ownership of the registered trademark CIC; and
(b) the Second Complainant has proven ownership of the registered trademark CRÉDIT MUTUEL.
The Complainants also contend that their respective trademarks are very well-known trademarks in the sense referred to in article 6bis of the Paris Convention. The evidence particularly of the number of customers each has in France supports that conclusion. The Panel notes that panels in other proceedings brought by the Complainants have reached similar conclusions too.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain names to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the Top-Level Domain (TLD) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview 3.0, sections 1.7 and 1.11.
It is convenient to address this issue in two groups.
The disputed domain names, which start with “credit-mutuel”, contain the whole of the Second Complainant’s trademark and a number of descriptive terms separate by hyphens. As the whole of the trademark is contained within each of these disputed domain names, the Panel finds they are confusingly similar to the Second Complainant’s trademark. The addition of the descriptive terms and the punctuation elements does not negate that conclusion. See e.g. WIPO Overview 3.0, section 1.8. It is true there are more descriptive terms in these disputed domain names than is often the case. Nonetheless, they do not obscure the fact that the whole of the Second Complainant’s trademark is incorporated “as is” within the disputed domain name. The inclusion of the hyphens as separators or punctuators does not affect the analysis. See e.g. Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046.
The second group of disputed domain names contain the whole of the First Complainant’s CIC trademark plus, once again, descriptive terms and hyphens. The same analysis applies as with the first group. The fact that the trademark CIC is the third element of these disputed domain names does not change matters. It appears that the expression “espace client” is a French term commonly used to designate a space reserved for a corporation’s clients. See e.g. Credit Industriel et Commercial S.A. v. Zabor Mok, WIPO Case No. D2015-1432. The element “CIC” is the distinguishing feature but, for present purposes, it is sufficient that it is reproduced in its entirety with the disputed domain names.
Accordingly, the Complainants have both established the first requirement under the Policy.
C. Rights or Legitimate Interests
The second requirement the Complainants must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
Each Complainant states that it has not authorised the Respondent (or Respondents) to use the Complainant’s trademark or the disputed domain names. Nor is the Respondent affiliated with either of them or their corporate group.
The disputed domain names are plainly not derived from the name of the Respondent (or Respondents). From the available record, the Respondent (or Respondents) does not appear to hold any trademarks for the disputed domain name.
There can be no question that those disputed domain names which resolve to websites to which access has been blocked on the grounds that they contain malicious content such as viruses, Trojans, or spyware can qualify as the offering of goods or services in good faith under the Policy. The remaining disputed domain names do not appear to have been in use at all.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent (or Respondents) has no rights or legitimate interests in the disputed domain names. The basis on which the Respondent (or Respondents) has adopted the disputed domain names, therefore, calls for explanation or justification. The Respondent (or Respondents), however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainants have established the second requirement under the Policy also.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In this connection, it is worth recalling the length and scale of the Complainants’ use of their respective trademarks. It is also significant that the Respondent (or Respondents) has apparently provided false contact details. In addition, the number of disputed domain names which the Respondent (or Respondents) has sought to register in a short period with additional descriptive elements suited to applications in the Complainants’ field of activity provides a reasonable basis to infer that the Respondent was indeed well aware of the Complainants and their respective trademarks when registering the disputed domain names.
The Panel notes that each Respondent appears to be the same person (or persons) who are respondents in another proceeding brought by the Complainants against some 24 other domain names based on the Complainants’ trademarks and using a similar naming pattern. See Crédit Industriel et Commercial S.A. and Confédération Nationale du Crédit Mutuel v. Whois Privacy Service / Yassine Ahmed / Yassine Cleoo / Yassinee Cleo / Yacin Helaloa / Robert Michel, WIPO Case No. D2020-0491. Thus, it appears that the Respondent has engaged in a pattern of conduct.
The use of those disputed domain names to which access is blocked on grounds of malicious content qualifies as use in bad faith. It is also well established since Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003, that the registration and “passive” holding of domain names, particularly where they embody well-known trademarks, qualifies as use in bad faith under the Policy.
The disputed domain names are not ordinary descriptive terms themselves, but strongly suggest a connection with the Complainants’ respective operations. It appears that the Respondent has adopted the disputed domain names because of their trademark significance. In circumstances where the Respondent has not sought to claim, let alone establish, that he or she has rights or legitimate interests in the disputed domain names, therefore, the Panel finds the Respondent (or Respondents) has registered and used it in bad faith.
Accordingly, the Complainants have established all three requirements under the Policy in respect of each disputed domain name.
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 names:
6. <credit-mutuel-service-confirmation-mobile.com>, and
be transferred to the Second Complainant and the disputed domain names:
12. <espace-client-cic-service-mobile-confirmation.info>, and
be transferred to the First Complainant.
Warwick A. Rothnie
Date: May 7, 2020