WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amundi Asset Management v. Domain Admin, Whoisprotection.cc / Pascale Buche
Case No. D2021-0556
1. The Parties
The Complainant is Amundi Asset Management, France, represented by Nameshield, France.
The Respondent is Domain Admin, Whoisprotection.cc, Malaysia / Pascale Buche, France.
2. The Domain Name and Registrar
The disputed domain name <amundi-sa.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
3. Procedural History
The Complaint was filed 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 24, 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 March 11, 2021 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 March 11, 2021.
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 March 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2021.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on May 26, 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 a French asset management company, working in 35 countries and having more than 100 million clients. It is the No. 1 European asset manager, managing over 1,700 billion euros with the assistance of nearly 5,000 employees.
The Complainant offers its services under the domain name <amundi.com>. In particular, it provides financial services, such as investing solutions and treasury management.
It is the owner of the International trademark registration No. 1024160 designating, among other, the European Union and which was registered on September 24, 2009.
The disputed domain name was registered on February 19, 2021. In the course of this proceeding the Registrar disclosed the identity of the Respondent, who appears to be an individual domiciled in France and with a phone number corresponding to the French territory.
The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
On the first element of the Policy, the Complainant claims that the disputed domain name is confusingly similar to its trademark AMUNDI. It adds that the abbreviation “sa” is not sufficient to avoid such confusion as “sa” refers to the corporate form “société anonyme”. Furthermore, the Complainant contends that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not change the overall impression of the designation as being connected to the Complainant’s trademark.
On the second element of the Policy, the Complainant indicates that the Respondent is not known under the disputed domain name as is clear from its identity, and has no business relationship whatsoever with the Complainant. The Respondent is not affiliated with, or authorized by, or a licensee of, the Complainant. The Complainant also argues that the absence of use of the disputed domain name cannot support a claim of fair use.
On the third element of the Policy, the Complainant contends on the one side, that “the disputed domain name is confusingly similar to the Complainant’s trademark”, which notoriety is confirmed by previous UDRP decisions. It further added that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trademark or a service mark in which it has rights.
The trademark AMUNDI of the Complainant is clearly perceivable in the disputed domain name. Indeed, it is reproduced identically in first position, and is separated from the other element “sa” with a hyphen. As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, “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 UDRP standing”.
Furthermore, it is settled case-law that the addition of the initials “sa” (an acronym for “société anonyme” a common type of corporate structure in France) does not prevent a finding of confusing similarity between a complainant’s trademark and a domain name (see Korian v. WhoisGuard Protected, WhoisGuard, Inc./ Chevarin Herve and Name Redacted, WIPO Case No. D2021-0091).
Therefore, the Panel finds that the first element of the Policy is satisfied.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In that sense, the Complainant has made a prima facie case against the Respondent, who is not been commonly known by the disputed domain name and is not affiliated with the Complainant nor has it been licensed or otherwise permitted to use any of the Complainant’s trademark or to register a domain name incorporating its trademark AMUNDI.
Accordingly, and absent specific allegations by the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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.
Indisputably, the disputed domain name was specifically designed to target the Complainant. Indeed, it combines the trademark AMUNDI, which is both inherently distinctive and well known in France, with the initials “sa” which in France indicate the legal form of a company. As a whole, the combination “amundi-sa” is highly likely to be perceived by the French public as a reference to the Complainant.
Therefore, the Panel finds that the disputed domain name was registered in bad faith.
Regarding the use of the disputed domain name, the Complainant relies indirectly on the doctrine of bad faith passive holding. In the opinion of this Panel, the conditions for a finding of bad faith passive holding are satisfied in this case. See WIPO Overview 3.0, section 3.3.
Indeed the Respondent, who is domiciled in France, can hardly ignore the existence and reputation of the trademark AMUNDI of the Complainant in the field of financial services. This presumption of knowledge is confirmed by the configuration of the disputed domain name, as explained above. Hence the Panel cannot foresee any possible legitimate use of the disputed domain name. The disputed domain name will be perceived by Internet users as hosting the official website of the Complainant.
This finding of bad faith passive holding is also confirmed by the behavior of the Respondent, who chose to not participate in this proceeding.
Accordingly, the Panel finds that the third criteria element set out in paragraph 4(a) of the Policy is also satisfied.
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 <amundi-sa.com> be transferred to the Complainant.
Date: June 9, 2021