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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Confédération Nationale du Crédit Mutuel v. Alain Myszka, Raphael Gabri, Guillaume Legrand, Remi Gaillard, Remi Yadari

Case No. D2014-0102

1. The Parties

The Complainant is Confédération Nationale du Crédit Mutuel of Paris, France, represented by MEYER & Partenaires, France.

The Respondents are Alain Myszka of Damprich, Italy; Raphael Gabri of Lorient, Italy; Guillaume Legrand of Baud, Italy; Remi Gaillard of Montpellier, Italy; Remi Yadari of Toulon, France.

2. The Domain Names and Registrars

The disputed domain names <acces-creditmutuel.com>, <credit-mutuelbq.com>, <session-creditmutuel.com>, <user-creditmutuel.com> are registered with Tucows Inc.

The disputed domain name <creditmutuelb.com> is registered with Domain.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2014. On January 23, 2014, the Center transmitted by email to the concerned registrars a request for registrar verification in connection with the disputed domain names. On January 23, Tucows Inc. and Domain.com, LLC transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details for the following domain names: <acces-creditmutuel.com>, <creditmutuelb.com>, <session-creditmutuel.com> and <user-creditmutuel.com>. On February 6, 2014 Tucows Inc. provided the contact details for the domain name <credit-mutuelbq.com>.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on February 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2014.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on March 5, 2014. 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 banking group. The Complainant is the holder of various registered trademarks consisting of or containing the CREDIT MUTUEL mark, which it uses in relation to its business, including the international semi-figurative CREDIT MUTUEL trademark, registered under Number 570 182 on May 17, 1991, and duly renewed.

The disputed domain names <acces-creditmutuel.com>, <credit-mutuelbq.com>, <session-creditmutuel.com>, <user-creditmutuel.com> and <creditmutuelb.com> were registered on July 28, 2013, August 3, 2013, August 2, 2013, August 7, 2013 and May 27, 2013 respectively. The Respondents have registered these disputed domain names using the same email address and different names and fictitious physical addresses. All the disputed domain names, apart from <creditmutuelb.com>, resolve to web pages that are said to be under maintenance. The disputed domain name <creditmutelb.com> resolves to a parking page offering links to third-party providers of financial services.

5. Parties’ Contentions

A. Complainant

The Complainant considers the disputed domain names to be under the common control of a single registrant. The Complainant claims that the disputed domain names are confusingly similar to trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondents have no rights or legitimate interests in respect of the disputed domain names. According to the Complainant, the Respondents have not constructed active websites associated with the disputed domain names. Finally, the Complainant considers that the disputed domain names have been registered and are being used in bad faith.

B. Respondents

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

6. Preliminary Procedural Issue: Consolidation of Multiple Domain Names and Respondents

The disputed domain names have been registered under different names and different addresses, but all of the registrations list the same email address and all but one of the disputed domain names use the same domain name servers.

Paragraph 10(e) of the Rules generally empowers panels to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name only when the domain names are registered by the same domain-name holder. Previous panels have considered that multiple domain name registrants controlled by a single person or entity may be treated as a single respondent for purposes of the Policy and Rules. See Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729. Common control has been found where the respondents were related businesses. Asset Marketing Systems, LLC v. SmartBuy Corporation, Chan Organization, Mitchell de la Cruz, Gongju Jung et. al., WIPO Case No. D2004-0492. Common control or ownership also has been found in circumstances indicating that a single person or entity has registered multiple domain names using fictitious names. See Yahoo!, Inc v. Somsak Sooksripanich and Others, WIPO Case No. D2000-1461; Yahoo! Inc. v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou, WIPO Case No. D2001-1188; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070. See also General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834. Similarly, decisions have been rendered against multiple respondents in single proceedings based on the presence of a common administrative or technical contact, or other instances of commonality in the registration information, such as the same postal address or email address. See, e.g., ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034; Caesars World, Inc. v. Starnet Communications and Atlantic West Gaming Entertainment, Ltd., WIPO Case No. D2002-0066; Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587. See also General Electric Company v. Marketing Total S.A, supra. Panels have found multiple respondents to be commonly controlled where the content of their websites were substantially identical and referred Internet visitors to a common “homepage”. CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071. See also Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659 (consolidation of multiple respondents and multiple domain names appropriate where domain names were registered with same registrar and resolved to essentially identical websites).

The Panel considers that the consolidation of multiple registrants as respondents in a single administrative proceeding may be appropriate under paragraph 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties (see Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).

In this instance, the Panel finds that the Complainant has established that, more likely than not, the disputed domain names are subject to the common ownership or control of the same entity or person. Although different names and fictitious physical addresses are used for the registrations of the disputed domain names, the same email address is used in the registrations of all the disputed domain names. The Panel finds that consolidation of the multiple domain name disputes involving the multiple Respondents listed on the first page of this Decision pursuant to paragraph 10(e) of the Rules would be procedurally efficient. Consolidation will permit multiple domain name disputes arising from a common nucleus of facts and involving common legal issues to be heard and resolved in a single administrative proceeding.

Accordingly, the Panel concludes that the consolidation of the multiple domain name disputes asserted by the Complainant against the Respondents is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in this area. The Panel will proceed to a decision on the merits of these domain name disputes.

7. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are civil, the standard of proof is the balance of probabilities.

Thus for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

1. The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2. The Respondents have no rights or legitimate interests in respect of the disputed domain names; and

3. The disputed domain names have been registered and are being used in bad faith.

The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Complainant must first establish that there is a trademark or service mark in which it has rights. Since the Complainant is the holder of the CREDIT MUTUEL trademark that is used in connection with financial services, it is clearly established that there is a trademark in which the Complainant has rights.

The Panel considers the only difference between the disputed domain names <acces-creditmutuel.com>, <credit-mutuelbq.com>, <session-creditmutuel.com>, <user-creditmutuel.com> and <creditmutuelb.com> and the Complainant’s trademark to be the addition of a hyphen, a single letter and/or (an abbreviation of) a generic word. The Panel finds that the addition of a hyphen and/or one or two letters is insufficient to avoid confusing similarity, as such minor modifications to a trademark do not diminish in any significant way the likelihood of confusion between the disputed domain names and the Complainant’s trademark (see e.g., Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768; Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281; Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209).

The Panel is also of the opinion that the mere addition of non-distinctive text to a complainant’s trademark is insufficient to avoid a finding of confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see L'Oréal and Lancôme Parfums et Beauté et Compagnie v. Deco Trends & Art, K. Plooyer, WIPO Case No. D2011-0524, where the addition of the non-distinctive generic terms “online”, “shop” and/or “gifts” and the addition of the geographical term “paris” to a name that is confusingly similar to complainant’s trademark, were considered insufficient to reduce the identity or confusing similarity, as set out in paragraph 4(a)(i) of the Policy; Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253, where the addition of the non-distinctive generic term “shoes” to a name that is confusingly similar to complainant’s DR. MARTENS trademark does nothing to reduce the confusing similarity between the complainant’s trademark and the disputed domain name; Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275, where the addition of the generic word “machines” to complainant’s trademark CAT did not serve to distinguish the domain name <catmachines.com>; Nike, Inc. v. Farrukh Zia, WIPO Case No. D2000-0167, where the domain name <enike.com> was held to be confusingly similar to the trademark NIKE).

Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s CREDIT MUTUEL trademark.

Accordingly, the Complainant has made out the first of the three elements that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondents have no rights or legitimate interests in respect of the disputed domain names.

It is established UDRP precedent that it is sufficient for the Complainant to make a prima facie showing that the Respondents have no rights or legitimate interests in the disputed domain names in order to place the burden of production on the Respondents. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel notes that the Respondents have not been commonly known by the disputed domain names and that the Respondents have not acquired trademark or service mark rights in names corresponding to the disputed domain names. The Respondents’ use and registration of the disputed domain names was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondents exists.

Accordingly, the Complainant has made out the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith is the registration of a domain name in order to prevent the holder of a trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name holder has engaged in a pattern of such conduct.

1. Bad Faith Registration

In the instant case, the Respondents must have had knowledge of the Complainant's rights in the CREDIT MUTUEL trademark at the moment they registered the disputed domain names, since the Complainant's trademark is a known trademark. The Respondents’ awareness of the Complainant's trademark rights at the time of registration suggests bad faith at the moment of registration (see Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where the word POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix suggested knowledge of complainant's rights in the trademarks).

Since the Respondents must have had knowledge of the Complainant's rights in the CREDIT MUTUEL trademark at the moment they registered the disputed domain names, and since Respondents had no rights or legitimate interests in the disputed domain names, the Panel finds that the disputed domain names were registered in bad faith.

2. Bad Faith Use

In the instant case, the Respondents are passively holding the disputed domain names. The passive holding of a domain name can constitute bad faith use, especially when combined with other factors such as a respondent’s preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of a respondent to respond to a complaint, the concealment of identity, etc. (See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763).

In the instant case, the Respondents concealed their identities by only providing different names and non-existent and thus incorrect physical addresses to the Registrar. The Respondents registered not less than five domain names that are confusingly similar to the Complainant’s trademark. This is a clear indication that the Respondents have engaged in a pattern of preventing trademark or service mark holders from reflecting the mark in a corresponding domain name (see Deutsche Lufthansa AG v. Hank, WIPO Case No. D2010-0647). Moreover, the Respondents have not filed a response in this case.

These factors clearly show that the disputed domain names have not only been registered, but are also being used in bad faith.

8. 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 names <acces-creditmutuel.com>, <creditmutuelb.com>, <credit-mutuelbq.com>, <session-creditmutuel.com>, <user-creditmutuel.com> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: March 19, 2014

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