WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Credit Agricole Leasing & Factoring S.A v. Inert Productions LLC

Case No. DCO2019-0045

1. The Parties

The Complainant is Credit Agricole Leasing & Factoring S.A, France, represented by Nameshield, France.

The Respondent is Inert Productions LLC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <eurofactor-es.co> is registered with Key-Systems GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2019. On November 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2019, 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 November 11, 2019, 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 November 12, 2019.

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 November 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2019.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on December 10, 2019. 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 Credit Agricol Leasing & Factoring S.A. is involved in leasing contracts, factoring and financing of renewable energies in France and Europe.

The Complainant is the owner of several trademarks EUROFACTOR, including trademark registration No 005133327 EUROFACTOR dated June 13, 2006 and registered September 6, 2007, in classes 35 and 36 of Nice Classification.

The disputed domain name <eurofactor-es.co> was registered on October 15, 2019 and leads to a page with a warning in Spanish which reads as follows: “Peligroso. El sitio web a que vas a acceder es engañoso. La función Navegación Segura de Google ha detectado phishing en <eurofatoctor-es.co>. Los sitios de web fishing suplantan la identidad de otros sitios web para engañarte. Te recomendamos que no sigas este sitio web. Microsoft recibió información que contiene amenazas para tu PC que pueden divulgar información personal o financiera”. SmartScreen de Windows Defender.

In essence, the warning indicates that the site is dangerous and that Google has detected fishing activity to mislead Internet users, therefore it is recommended not to be used.

5. Parties’ Contentions

A. Complainant

The Complainant is a leading player in leasing contracts, factoring and financing of renewable energies in France and in Europe. It employs 2,434 people and has around 200,000 customers.

The Complainant claims that the disputed domain name <eurofactor-es.co> is confusingly similar to the trademark EUROFACTOR in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which has been registered and is used by the Respondent in bad faith.

More specifically, the Complainant asserts that the Respondent is not generally known by the disputed domain name and, nor is the Respondent affiliated to the Complainant who has not authorized the Respondent to use the trademark EUROFACTOR, or to apply for registration of the disputed domain name.

Also the Complainant asserts that the Respondent has used the disputed domain name to pass itself off as Ms. […], one of Complainant’s employees in Spain and has used it as part of a phishing scheme.

Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has proved that it has rights in the trademark EUROFACTOR.

The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar to the trademark. The test 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 this case, the disputed domain name <eurofactor-es.co> contains the Complainant’s trademark, EUROFACTOR in its entirety. The Panel considers that the addition of “es” preceded by a hyphen does not avoid a finding of confusing similarity. The “es” is an abbreviation for “Spain”.

As set forth in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “in cases where the domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark.”

For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test of confusing similarity of this first prong the Panel shall disregard the TLD “.co” included in the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar to the trademark EUROFACTOR in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no trade mark 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.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations and evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent does come forward with some allegations and evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant asserts that the Respondent is not known as the disputed domain name and submits that it has never granted the Respondent the authority to use or register the disputed domain name.

The Panel notes that the disputed domain name was registered on October 15, 2019, whereas the Complainant’s trademark was first registered on June 13, 2006, i.e., thirteen years before, and that the Complainant claims that the Respondent uses the disputed domain name to pass itself off as Ms. […], one of the Complainant’s employees in Spain. Such use is neither a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, nor a noncommercial or fair use pursuant to section 4(c)(iii) of the Policy.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy therefore are fulfilled.

C. Registered and Used in Bad Faith

The disputed domain name <eurofactor-es.co> is confusingly similar to the Complainant’s distinctive trademark EUROFACTOR.

The Complainant has proved that the Respondent has used the disputed domain name in a phishing scheme, attempting to pass off as Ms. Gema Diaz, one of the Complainant’s employees. Therefore, necessarily the Respondent knew about the Complainant and its affiliates.

Consequently, the Panel agrees with the Complainant that it is inconceivable that the Respondent could have registered the disputed domain name without actual knowledge of the Complainant’s rights in the trademark EUROFACTOR.

Finally, it is well established that the use of a domain name as part of a phishing scheme is sufficient evidence of bad faith registration and use under section 4(a)(iii) of the Policy (Accor v. Sangho Heo / Contact Privacy Inc., WIPO Case No. D2014-1471).

In light of the foregoing, the Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under the Policy.

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 <eurofactor-es.co> be transferred to the Complainant.

Miguel B. O'Farrell
Sole Panelist
Date: December 24, 2019