WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Confederation Nationale du Credit Mutuel v. Contact Privacy Inc. Customer 1249192723 / Amorette Chartre

Case No. D2021-0554

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 1249192723, Canada / Amorette Chartre, France.

2. The Domain Name and Registrar

The disputed domain name (<xn--credimutuel-xic.com>) is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2021. On February 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2021, 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 February 25, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In addition, the Center sent an email communication in both French and English regarding the language of the proceeding on February 25, 2021. The Complainant replied on February 25, 2021 requesting English to be the language of the proceeding and the Respondent did not submit any comments. The Complainant filed an amendment to the Complaint on February 25, 2021.

The Center verified that the Complaint together with the amendment to 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in English and in French, and the proceedings commenced on March 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2021.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on April 1, 2021. 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 European Union word Trade mark CREDIT MUTUEL No. 18130616 filed on September 30, 2019, and registered on September 2, 2020 in classes 7, 9, 16, 35, 36, 38, 41 and 45;
- The European Union semi-figurative Trade mark CREDIT MUTUEL No. 16130403 filed on December 5, 2016, and registered on June 1st, 2017 in classes 7, 9, 16, 35, 36, 38, 41 and 45;
- The European Union semi-figurative Trade mark CREDIT MUTUEL No. 18130619 filed on September 30, 2019, and registered on May 22, 2020 in classes 7, 9, 16, 35, 36, 38, 41 and 45;
- The European Union semi-figurative Trade mark CREDIT MUTUEL LA BANQUE A QUI PARLER No. 5146162 filed on June 19, 2006, and registered on August 23, 2007 in classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45;
- The French semi-figurative Trade mark CREDIT MUTUEL No. 1475940 registered on July 8, 1988, in classes 35 and 36, duly renewed;
- The French semi-figurative Trade mark CREDIT MUTUEL No. 1646012 registered on November 20, 1990, 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.

The disputed domain name <crediťmutuel.com> was registered on January 21, 2021. At the time of the filing of the Complaint as well as at the time of the decision, the disputed domain name does not resolve to an active webpage.

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 highly confusingly similar to its prior trademarks, since the CREDIT MUTUEL trademark is identically reproduced in the disputed domain name, the non-ACSII characters presenting a visual image of the CREDIT MUTUEL trademark that is likely to cause confusion and, converted to IDN, corresponding to the disputed domain name <crediťmutuel.com>.

The Complainant adds that the addition of the generic Top-Level Domain (“gTLD”) “.com” should not be taken into account when considering the similarity of the disputed domain name with the trademark, and that only the radical of the disputed domain name should thus be analysed.

The Complainant underlines that the radical of the disputed domain name is composed of the “CREDIT MUTUEL” term, which is the exact reproduction of the CREDIT MUTUEL trademark, to which has simply been added an apostrophe, between “credit” and “mutuel”, which does not eliminate the confusion.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since no license or authorization was given in order to register the disputed domain name, no relationship of any kind between the Complainant and the Respondent could justify such registration and use, and the Respondent is not commonly known by the disputed domain name or any combination of the term “credit mutuel”.

The Complainant underlines that the fact the disputed domain name does not resolve to any active website does not constitute any bona fide offering of goods or services, nor any legitimate non-commercial or fair use of the disputed domain name.

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 Respondent has registered the disputed domain name precisely because of the well-known character of the CREDIT MUTUEL trademarks.

The Complainant also points out that the fact the disputed domain name does not resolve to an active website, such use constituting “passive holding”, establishes that the Respondent has no serious intent to use it for offering goods and services or promoting a non-commercial cause.

The Complainant finally underlines that, as a banking group, it has continually to face phishing attempts and thus has to prevent fake of its website and to protect its clients from counterfeiting and fraud.

B. Respondent

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;

(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. Language of Proceedings

Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

The Registrar confirmed that the language of the Registration Agreement of the disputed domain name is French. The Complainant claimed inter alia that the Respondent chose language anonymity services in English, the Complainant argues that there is no evidence showing that the Respondent does not understand English.

The Complainant’s last argument is that translating the Complaint into French would require a significant translation cost, and formally requested that the language of the proceeding be English, to which the Respondent failed to comment or to object.

In view of the specific circumstances of this case, the Panel will render this decision in English.

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 <crediťmutuel.com> is composed of (i) the CREDIT MUTUEL trademark, (ii) the use of the letter “ť” from the Czech and Slovak alphabets, and (iii) the 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 disputed 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 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 (see section 1.9 of the WIPO Overview 3.0).

Regarding the disputed domain name, the Panel finds that it entirely and identically reproduces the CREDIT MUTUEL trademark, the use of the letter “ť” from the Czech and Slovak alphabets constituting intentional misspelling of the CREDIT MUTUEL trademark, which does eliminate confusing similarity between the disputed domain name and the Complainant’s trademarks.

In this regard, the Panel finds that, as underlined by the Complainant, the non-ASCII characters “t’” used in place of the letter “ť” from the Czech and Slovak alphabets are easily confused with the Latin characters in the CREDIT MUTUEL trademark and present an almost imperceptible difference, so that such use is not in itself likely to avoid finding of confusing similarity.

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 trademarks.

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.

Additionally, at the time of the Complaint as well as at the time of the decision, the disputed domain name does not resolve to an active website, which does not represent a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name.

Moreover, the Respondent is not commonly known by the Complainant’s trademarks, nor by any combination of the term “credit mutuel”.

However, the Respondent did not reply to the Complainant’s contentions.

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

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

The addition of the letter “ ť ” from the Czech and Slovak alphabets constitutes an intentional misspelling of the CREDIT MUTUEL trademark which actually concurs to highlight the bad faith registration of the disputed domain name, since misspelling a trademark implies knowing that trademark first.

Moreover, the fact that, at the time of the complaint as well as at the time of the decision, the disputed domain name does not resolve to an active page does not exclude bad faith use.

Indeed, added to the strong reputation of the Complainant’s trademarks, the failure of the Respondent to submit a response to the Complainant’s contentions and the implausibility of any good faith use to which the disputed domain name may be put, the Panel further notes that the Respondent has registered the disputed domain name using a privacy service, that constitutes a factor 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).

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 <crediťmutuel.com> (<xn--credimutuel-xic.com>) be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: April 15, 2021