WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caisse d’épargne et de prévoyance Ile-de-France v. Perfect Privacy, LLC / Milen Radumilo
Case No. D2021-4399
1. The Parties
The Complainant is Caisse d’épargne et de prévoyance Ile-de-France, France, represented by DBK – Société d’avocats, France.
The Respondent is Perfect Privacy, LLC, United States of America / Milen Radumilo, Romania.
2. The Domain Name and Registrar
The disputed domain name <ceceidf.com> (the “Disputed Domain Name”) is registered with SicherRegister, Incorporated (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2021. On December 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 14, 2022, 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 17, 2022 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 19, 2022.
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 24, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2022.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 25, 2022. 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.
On March 15, 2022 the Panel issued a procedural order (the “Procedural Order”) in the following terms:-
“The Panel …. notes that the Complainant relies upon a French ‘semi-figurative’ trademark no. 3604467 registered on October 13, 2008 (the “Trademark”) for the following image:
The accompanying text in the formal registration record says that the trademark (or “marque”) is “LE CLUB DES SOCIETAIRES WWW.SOCIETAIRES.CEIDF.FR CAISSE D'EPARGNE ILE-DE-FRANCE”. The Complainant is also the owner of the domain names <societaires-ceidf.fr> registered in 2007; <caisse-epargne-ile-de-france.fr> registered in 2016, and <cseceidf.fr>, registered in 2019, all of which are linked to active official websites of the Complainant.
The [Disputed Domain Name] and was registered on September 16, 2021. The evidence shows it has been linked via redirection to a website which if accessed attempts to download malicious content to a visitor’s computer. The Complainant avers that the Disputed Doman Name is confusingly similar to the Trademark. The Complainant also avers that Respondent has no rights or legitimate interests in the terms “ceidf” or “ceceidf” and that the Disputed Domain Name has been registered and is being used in bad faith.
The Panel notes that the term ‘ceidf’ appears within the textual elements of the Trademark as part of a website address. It is not however the dominant feature of those textual elements and if the Trademark is taken as a whole the Panel does not presently consider that the Disputed Domain Name is confusingly similar to the Trademark. There is however no evidence before the Panel of the Complainant having any other registered trademarks comprising or including the term ‘ceidf’ nor is there any evidence before the Panel sufficient to show the Complainant having any unregistered rights in the term ‘ceidf’.
In view of the above, the Panel requests the Complainant to provide further evidence of its rights in the term ‘ceidf’ and/or arguments as to why the Disputed Domain Name is confusingly similar to a trademark in which it has rights (including if relevant by reference to specific related website content).
The Complainant should submit such evidence and/or arguments to the Center by March 23, 2022.
The Respondent may reply to any submission by March 28, 2022.
All communications from the Parties are to be exclusively with the Center”.
On March 21, 2022, the Complainant submitted an amended Complaint containing additional details and evidence responsive to the above Procedural Order. The Panel will admit the amended Complaint.
The Respondent did not submit any reply.
4. Factual Background
The Complainant is part of BPCE, a French company that is the one of the largest banking groups in France and pursues a full range of banking, financing, and insurance activities, working through its two major Banque Populaire and Caisse d’Epargne cooperative banking networks and through its different subsidiaries.
The full name of the Complainant is Caisse d’épargne et de prévoyance Ile-de-France but it also uses as its name the acronym CEIDF. This acronym is recorded on the official French Company registry entry for the Complainant and is used by the Complainant in particular on social media and websites that the Complainant maintains. The filed evidence shows that third parties refer to the Complainant as “CEIDF” or “la CEIDF”.
The Complainant owns a French “semi-figurative” trademark no. 3604467 registered on October 13, 2008. The registration details for this trademark show the image which is shown in the Procedural Order (above).
The accompanying text in the formal registration record says that the trademark (or “marque”) is “LE CLUB DES SOCIETAIRES WWW.SOCIETAIRES.CEIDF.FR CAISSE D'EPARGNE ILE-DE-FRANCE”.
This trademark is referred to as the “Complainant’s registered trademark” in this decision.
The Complainant is also the owner of the domain names <societaires-ceidf.fr> registered in 2007; <caisse-epargne-ile-de-france.fr> registered in 2016 and <cseceidf.fr>, registered in 2019, all of which are linked to actives official websites of the Complainant,
The Disputed Domain Name was registered on September 16, 2021. It resolves to a website which is further discussed below.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is confusingly similar to the Complainant’s registered trademark. It says “The [Disputed] Domain Name reproduces almost identically the Corporate Name, the Trademark and the Domain Names which creates likelihood of confusion between the [Disputed] Domain Name and CEIDF”. It also says it has unregistered trademark rights in the acronym “ceidf” and the same principles apply in relation to this acronym.
The Respondent has no rights or legitimate interests in the terms “ceidf” or “ceceidf”.
The Disputed Domain Name was registered and is being used in bad faith. The Complainant says the use of the Disputed Domain Name in connection with a website which may be associated with phishing activity and which also may attempt to download malicious content to a visitor’s computer is clear evidence of bad faith. It says the Respondent is attempting to obtain private confidential information from the Complainant’s customers.
No Response has been filed.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Panel also notes this is a case where one Respondent (“Perfect Privacy, LLC”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case, the Panel considers the substantive Respondent to be Milen Radumilo, and references to the Respondent are to that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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. Identical or Confusingly Similar
The Panel does not necessarily consider the question of whether the Disputed Domain Name is confusingly similar to the Complainant’s registered trademark to be straightforward. The Complainant’s registered trademark is a French “semi figurative” trademark (see image above) which comprises a mixture of a stylised image and words. The words in question are “le club des SOCIETAIRES www.societaires.ceidf.fr CAISSE D'EPARGNE ILE-DE-FRANCE”. The term “ceidf” appears as part of a URL which appears as part of the overall image. It is not the case that the Disputed Domain Name incorporates the entirety of the Complainant’s registered trademark, and it is an open question whether a dominant feature of the Complainant’s registered trademark is recognizable in the Disputed Domain Name.
However the Panel finds that the Complainant has unregistered trademark rights in the term “ceidf”. The filed evidence establishes it is a very substantial organisation and uses the term “ceidf” as, in effect, its name. WIPO Overview 3.0 addresses this issue as follows:
“1.3 What does a complainant need to show to successfully assert unregistered or common law trademark rights?
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
In the present case given the term “ceidf” is not in any way descriptive, the Panel concludes the Complainant has established that the acronym is used as, in effect, its name and has acquired the distinctiveness necessary to satisfy this requirement and amounts to a trademark in which it has rights. It is referred to below as the “CEIDF mark”.
The Panel concludes the Disputed Domain Name is confusingly similar to the CEIDF mark. It comprises the term “ceidf” in its entirety with addition of the letters “ce” a second time which produces a term which can easily be mistaken for the term “ceidf”. The Panel agrees in this regard with the approach set out in WIPO Overview 3.0, section 1.9, namely
“1.9 Is a domain name consisting of a misspelling of the complainant’s trademark (i.e. typosquatting) confusingly similar to the complainant’s mark?
A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Under the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant.
Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers”.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s CEIDF mark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the term “ceidf” or “ceceidf”. The Complainant has prior rights in the CEIDF emark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In the present circumstances the Panel accepts the Complainant’s evidence that the Disputed Domain Name has been used in connection with phishing activity which is intended to obtain data which can then in all probability be used in further fraudulent activity directed against the Complainant or its customers. See Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031, and the cases therein referred to, for further analysis of why “phishing” activities amount to use in bad faith. See also Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa, WIPO Case No. D2006-0614 to similar effect.
It also appears that the Disputed Domain Name resolves to a website which attempts to download some form of malicious software to a visitor’s computer. The list under paragraph 4(b) is non exhaustive and the Panel agrees that this type of activity is a further indicator of bad faith registration and use. See in this respect Electronic Frontier Foundation v. Shawanda Kirlin WIPO Case No. D2015-1628 and the cases therein referred to.
The Panel also notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <ceceidf.com> be transferred to the Complainant.
Nick J. Gardner
Date: April 4, 2022