WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Confédération Nationale du Crédit Mutuel v. WhoisGuard Protected, WhoisGuard, Inc. / Margaret Robinson
Case No. D2020-0879
1. The Parties
The Complainant is Confédération Nationale du Crédit Mutuel, France, represented by MEYER & Partenaires, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Margaret Robinson, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <credit-mutuel.pro> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2020. On April 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 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 April 24, 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 April 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2020.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on May 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 the French cooperative bank Crédit Mutuel.
The Complainant obtained registrations for the trademark CREDIT MUTUEL in numerous regions of the world, including the French Trademark Registrations Number 1475940 and 1646012, respectively registered on July 8, 1988 and on November 20, 1990; the European Union Trade Mark Registration Number 9943135, registered on October 20, 2011; and the International Trademark Registration Number 570182, registered on May 17, 1991.
The Complainant’s corporate group is also the holder of many domain names incorporating the trademark CREDIT MUTUEL such as <creditmutuel.com>, registered on October 28, 1995, and <creditmutuel.fr>, registered on August 10, 1995.
The Respondent registered the disputed domain name <credit-mutuel.pro> on January 14, 2020.
The Panel accessed the disputed domain name on June 6, 2020, at which time the disputed domain name did not resolve to any active website. According to evidence submitted by the Complainant, the disputed domain name used to resolve to a default parked page.
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. The trademark CREDIT MUTUEL has been recognized as well known by UDRP panels and is undoubtedly well known in the sense of article 6bis of the Paris Union Convention. According to the French ministry order No. 58-966 of October 16, 1958, the use of the wording “Crédit Mutuel” is reserved to Confédération Nationale du Crédit Mutuel and to its related branches. Furthermore, Crédit Mutuel was one of the first French banking groups to offer online banking services to their clients, individuals as well as companies. All the above-mentioned trademark and intellectual property rights are prior to the registration of the disputed domain name. The disputed domain name is identical to the trademark CREDIT MUTUEL. Several prior UDRP panels have held that, when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish identity or confusing similarity for purposes of the Policy. Secondly, the mere addition of the new generic Top-Level Domain (“gTLD) “.pro” is not sufficient to distinguish the disputed domain name from the Complainant’s trademarks. The gTLD designation may be indeed disregarded for the purpose of this proceeding. Internet users could therefore be confused, thinking that the disputed domain name is linked to the Crédit Mutuel group and to its activities on the Internet, dedicated to its business customers. Given the above, it leads the public to believe that the Complainant is the owner of the disputed domain name or at least that the disputed domain name has been registered with its consent.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not related in any way to the Complainant’s business: he is not one of its agents and does not carry out any activity for, or has any business with it. The Respondent is not currently and has never been known under the wording “crédit mutuel”. No license or authorization has been granted to the Respondent to make any use or apply for registration of the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. In similar cases where the prior trademark was well known, UDRP panels have decided that the notoriety of a complainant’s trademark creates a prima facie presumption that the respondent registered the domain name for the purpose of selling it to the complainant or to one of its competitors, or that it was indented to be used in some way to attract for commercial gain users to the website by creating a likelihood of confusion with the complainant’s mark. The Complainant argues that it is unlikely that the Respondent has chosen the disputed domain name, unless seeking to create an impression of association with the Complainant’s fame and reputation. The Respondent has registered the disputed domain name precisely because he knew the well-known character of the trademark CREDIT MUTUEL. The act of reproducing the trademark CREDIT MUTUEL is an evidence of bad faith registration per se. The disputed domain name resolves to a default page which could be assimilated as a passive holding. Such use of the disputed domain name constitutes bad faith use, as it reveals that the Respondent has no serious intent to use it for offering goods and services or promoting a noncommercial cause. UDRP panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of a domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. As a consequence, the Complainant claims that the Respondent is undoubtedly not making any good faith use of the disputed domain name. At last, the Complainant would like to point out the fact that, as a banking group, it has continually to face counterfeiting/phishing attempts. Therefore, the Complainant has to prevent a new fake of its website and to protect in the meantime its clients from counterfeiting and fraud. In conclusion, the Complainant claims that the Respondent is undoubtedly not making any good faith use of the disputed domain name and also that the Respondent has used or is intending to use the disputed domain name again in a phishing scam.
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, 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; 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
Annex D1 to D4 to the Complaint shows French, European Union and International trademark registrations for CREDIT MUTUEL obtained by the Complainant as early as in 1988, 2011, and 1991, respectively.
The trademark CREDIT MUTUEL is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark CREDIT MUTUEL merely by the addition of an hyphen separating the word “credit” and “mutuel”, as well as the gTLD “.pro”.
Previous UDRP decisions have found that the mere addition of symbols such as a hyphen to a trademark in a domain name do not avoid a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437).
It is also already well established that the addition of a gTLD such as “.pro” 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 trademarks, 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 a right or legitimate interest 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 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.
The Complainant has not licensed nor authorized the usage 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 the specific term “credit-mutuel” was chosen to compose the disputed domain name. In addition, the nature of the disputed domain name carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
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 January 2020, the trademark CREDIT MUTUEL was already widely known and directly connected to the Complainant’s banking services.
The disputed domain name encompasses the trademark CREDIT MUTUEL.
According to the WIPO Overview 3.0, section 3.1.4, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
Therefore, the Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademarks and that the adoption of the disputed domain name <credit-mutuel.pro> was 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 is
(a) not presently using the disputed domain name;
(b) not indicating any intention to use it; and
(c) not at least providing justifications for the registration of a domain name containing a third-party famous trademark together, certainly cannot be used in benefit of the Respondent in the present case.
Such circumstances, associated with
(d) the use of a privacy service; and
(e) the lack of any plausible interpretation for the adoption of the term “credit-mutuel” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use 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 <credit-mutuel.pro> be transferred to the Complainant.
Date: June 9, 2020