WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Confédération Nationale du Crédit Mutuel v. David J. Perkins / Worldwide Domains
Case No. DPH2016-0001
1. The Parties
The Complainant is Confédération Nationale du Crédit Mutuel of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is David J. Perkins / Worldwide Domains of Concord, California, United States of America.
2. The Domain Name and Registry
The disputed domain name <creditmutuel.org.ph> is registered with DotPH (the “Registry”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2016. On November 24, 2016, the Center transmitted by email to DotPH a request for registrar verification in connection with the disputed domain name. On November 25, 2016, DotPH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .PH Uniform Domain Name Dispute Resolution Policy (“phDRP” or the “Policy”), the Rules for .PH Uniform Dispute Resolution Implementation Rules (the “Rules”), and the WIPO Supplemental Rules (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2016.
The Center appointed Antony Gold as the sole panelist in this matter on January 18, 2017. 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 Confédération Nationale du Crédit Mutuel, part of the second largest banking group in France, Crédit Mutuel. The group has its headquarters in Strasbourg, France and provides services to over 12 million customers. Credit Mutuel has been in existence for over a century and operates a network in France of over 3,178 offices, across 18 regional federations. The Complainant also provides online banking services through its websites at “www.creditmutuel.com” and “www.creditmutuel.fr” and owns many other domain names including the term “creditmutuel” which point to its websites.
The Complainant is the owner of a number of trade marks for CREDIT MUTUEL, including the following:
1) French trade mark number 1475940 for CREDIT MUTUEL (in stylized form) registered on July 8, 1988 in classes 35 and 36;
2) French trade mark number 1646012 for CREDIT MUTUEL (in stylized form) registered on November 20, 1990 in classes 16, 35, 36, 38 and 41;
3) European Union trade mark number 9943135 for CRÉDIT MUTUEL (word only) registered on May 5, 2011 in classes 9, 16, 35, 36, 38, 41, 42 and 45;
4) International trade mark number 570182 for CRÉDIT MUTUEL (in stylized form) registered on May 17, 1991 in classes 16, 35, 36, 38 and 41, designating Benelux, Italy and Portugal.
The Complainant and the Credit Mutuel group use the trade marks in connection with the provision of financial and insurance services.
The disputed domain name <creditmutuel.org.ph> was registered by the Respondent on July 15, 2016. It presently points to a parking page which purports to contain links to various companies, most or all of whom are competitors of the Complainant. The holding page contains a notice stating: “This domain may be for sale. Click here for more info”.
5. Parties’ Contentions
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trade marks
The Complainant provides details of its ownership of a number of its registered trade marks for CREDIT MUTUEL, as set out above.
The Complainant says that the disputed domain name is identical to its trade marks. It points out that the sole difference is the addition to its trade marks of the second-level domain and country-code Top-Level Domain (“ccTLD”) suffixes, that is, “org.ph”. It says that this is of no legal significance as it has no distinguishing effect and can be ignored for the purposes of comparing similarity. In support of this assertion, the Complainant refers to a number of previous panel decisions, including Accor v. dotPH PrivateRegistration/SANGHO HEO, WIPO Case No. DPH2014-0001, which held that where a domain name reproduces a trade mark in its entirety, with only the addition of a generic term and the ccTLD, this will be insufficient to avoid a finding that the domain name in dispute is identical to the trade mark in which the complainant has rights.
The Complainant states that Crédit Mutuel was one of the first French banking groups to offer online banking services to its clients, including individuals as well as companies. As a consequence, the Complainant says, the renown of the CREDIT MUTUEL trade marks heightens the likelihood that Internet users will perceive a link between the disputed domain name and the activities of the Complainant. As “.ph” is the ccTLD for the Philippines, this is said to be particularly the case in respect of Internet users located within, or from, the Philippines.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It says that the Respondent is not related in any way to the Complainant’s business, nor is it authorised or licensed to carry out business for it. Additionally, the Complainant states that, so far as it is aware, the Respondent is not presently known and has never been known by the name “Crédit Mutuel”. Further, the Respondent was not granted any license or authorization by the Complainant to register or use the disputed domain name or indeed any domain name incorporating the Complainant’s trade marks. Moreover, the Complainant says, the Respondent has not used the disputed domain name for a bona fide offering of goods or services.
Lastly, the Complainant refers the Panel to a number of panel decisions, in which the panel concluded, in what the Complainant says are similar circumstances, that a respondent lacks rights or legitimate interests in a domain name.
(iii) The disputed domain name was registered and is being used in bad faith
The Complainant says that the disputed domain name was registered and it is being used in bad faith. It points to its strong reputation and the fame of its CREDIT MUTUEL trade marks worldwide and contends that the Respondent must have been aware of the repute of the CREDIT MUTUEL trade marks at the time it registered the disputed domain name. The Complainant says the Respondent deliberately selected a domain name identical to its trade marks for CREDIT MUTUEL in order to point it to a website which would attract Internet users to it for commercial gain. Accordingly it says it is to be presumed that the registration was in bad faith.
In terms of bad faith use, the Complainant says that, it is not possible to conceive of any plausible actual or contemplated good faith use by the Respondent of the disputed domain name and that it should be presumed that any use by the Respondent is bad faith use. In support of this contention, the Complainant refers to previous panel decisions, including Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020, which held that the registration by the respondent of a domain name comprising a well-known trade mark owned by the complainant created a “prima facie presumption that the respondent registered the domain name for the purpose of selling it to the complainant or one of its competitors, or that it was intended 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”.
Further, the Complainant claims that the decision by the Respondent to reproduce entirely its CREDIT MUTUEL trade mark in the disputed domain name, coupled with the use of the disputed domain name to redirect to a parking page containing links to its competitors, is evidence of bad faith registration and use. The Complainant refers to previous panel decisions which have considered such practices as indicators of bad faith including Scania CV AB (Publ) v. Whois Agent, YourJungle Privacy Protection Service/Gustavo Winchester, WIPO Case No. D2014-0998, which held that that the creation by the respondent of a parking website featuring links to the complainant’s competitors constituted bad faith use of the domain name.
Finally, the Complainant asserts that email servers are activated on the disputed domain name and that this would enable the Respondent to send possible fraudulent emails or conduct phishing attacks on the Complainant’s customers.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(1) – (3) of the Policy require that the Complainant must demonstrate to the Panel that:
(1) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has rights, arising from its trade mark registrations for CREDIT MUTUEL. The Panel accepts the Complainant’s assertion that its CREDIT MUTUEL trade mark is very well known, certainly in France.
The disputed domain name incorporates in its entirety the Complainant’s CREDIT MUTUEL trade mark and only differs from it through the addition of the second-level domain and ccTLD, that is, “.org.ph”. The Panel agrees with the Complainant that, in accordance with the approach generally adopted by panels, the top-level and second-level suffixes should be disregarded for the purpose of any test of identicality or confusing similarity. Save for the lack of a space between “credit” and “mutuel”, which it is not possible to incorporate as a consequence of the technical limitations of the Domain Name System, the disputed domain name is identical to the Complainant’s trade mark CREDIT MUTUEL.
Accordingly, the Panel finds that the disputed domain name is identical to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides non-exhaustive circumstances of how a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
The Respondent is using the disputed domain name to redirect to a parking webpage which contains links to a number of commercial entities, comprising mainly or entirely competitors of the Complainant. Previous panels have found that, where a respondent uses a domain name in order to direct Internet users to a parking page, such use does not of itself confer rights or a comprise a bona fide offering of goods and services, particularly where the parking page contains links to goods or services which compete with those of the complainant. See for example Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-02671 , in which the panel held that use of the domain name solely to point to a parking page did not provide the respondent with of any rights or legitimate interests in the domain name.
The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trade mark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the name “Credit Mutuel” or by any similar name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has not taken the opportunity afforded to him to respond to the Complaint in order to assert that he has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
Whilst the Complainant has put forward evidence of the repute of its trade mark CREDIT MUTUEL, that evidence is primarily related to the Complainant’s repute in France. It is not informative of the Complainant’s reputation in either the United States of America, where the Respondent is located, or the Philippines, to which the “.ph” ccTLD element of the disputed domain name relates.
However, the fact that the parking page established by the Respondent was established fairly soon after the date of registration of the disputed domain name and contains links to competitors of the Complainant suggests strongly that the Respondent knew of the Complainant and its sphere of commercial activity when it registered the disputed domain name. Moreover, the fact that the only known use which has been made of the disputed domain name has been to point to the parking page indicates that this was the reason why the disputed domain name was registered. For the reasons set out below, such a motive amounts to a bad faith registration.
The Respondent’s use of the disputed domain name simply to point to a parking page containing links to various companies, including the Complainant’s competitors, from which the Respondent is likely to derive income falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy. Specifically, it comprises registration and use of the disputed domain name by the Respondent in order intentionally to attempt to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location. A similar finding was made by the panel in the Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, referred to above.
The Panel accordingly finds that the disputed domain name was both registered and is being used in bad faith.
For all 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 <creditmutuel.org.ph> be transferred to the Complainant.
Date: February 1, 2017
1 Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) the Panel refers to UDRP decisions where appropriate.