The Complainants are Confédération Nationale du Crédit Mutuel and Crédit Industriel et Commercial of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Cameron Jackson of Norfolk Island, New South Wales, Australia / PrivacyDotLink Customer 2443222, Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain names <cic-conseiller.xyz>, <creditmutuelfr.xyz> and <particuliers-creditmutuel-france.xyz> are registered with Uniregistrar Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2016. On November 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 4, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 7, 2016 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 15, 2016.
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 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2016.
The Center appointed Evan D. Brown as the sole panelist in this matter on December 27, 2016. 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.
The Complainants are well-known and longstanding entities providing banking and insurance services to millions of people in France and other countries in Europe. They own several trademark registrations for their marks, including CREDIT MUTUEL, Community Trademark No. 9943135, registered on May 5, 2011, and CIC, Community Trademark No. 005891411, registered on March 5, 2008.
The disputed domain names were all registered after the Complainants acquired rights in the relevant trademarks: <creditmutuelfr.xyz> was registered on August 30, 2016, <particuliers-creditmutuel-france.xyz> was registered on June 22, 2016, and <cic-conseiller.xyz> was registered on June 21, 2016. The disputed domain names point to an inactive holding page. The Respondent has been an unsuccessful party to numerous previous UDRP actions in which the disputed domain names therein were ordered transferred. In response to correspondence sent by the Complainants herein, the Respondent offered to sell the disputed domain names for amounts in excess of the Respondent’s out-of-pocket costs.
The Complainants contend that the disputed domain names are identical or confusingly similar to the Complainants’ registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Respondent did not reply to the Complainants’ contentions.
To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel finds that all three elements have been met in this case.
The Complainants request the Panel hear the present dispute – brought by two Complainants against one Respondent – as a consolidated, “unitary” complaint. The Panel grants the request.
Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition.”
Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple complainants as follows:
UDRP panels have articulated principles governing the question of whether a complaint filed with the Center by multiple complainants may be brought against one or more respondents. These criteria encompass situations in which; (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation. In order for the filing of a single complaint brought by multiple complainants which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.
The Complainants assert they are related entities and have a common legal interest sufficient to justify consolidation. The Complainants also assert that the Respondent has engaged in common conduct that has affected their rights in similar way.
The Panel accepts these arguments in favor of consolidation and grants the request to consolidate.
The Complainants have provided evidence of registrations of its marks in several jurisdictions, including registrations which predate the registration of the disputed domain names. On the basis of these registrations, the Panel is satisfied that the Complainants have rights in its marks.
The Panel also finds that the disputed domain names are confusingly similar to the Complainants’ marks. “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainants’ registered mark.” See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain names incorporate the Complainants’ trademarks CREDIT MUTUEL and/or CIC in their entireties. The inclusion of “fr” (presumably meaning “France”) in the disputed domain name <creditmutuelfr.xyz> does not reduce the confusing similarity. The addition of the generic or descriptive words “particuliers” (which means “individuals” in French) and “France” to make <particuliers-creditmutuel-france.xyz>, and “conseiller” (“advisor” in French) to make <cic-conseiller.xyz> does nothing to reduce the likelihood of confusion between the disputed domain names and the Complainants’ trademarks.
Accordingly, the Panel finds that the Complainants have shown that the disputed domain names are identical or confusingly similar to a trademark in which the Complainants have rights.
The Panel evaluates this element of the Policy by first looking to see whether the Complainants have made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainants make that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. See Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2014-0948, citing WIPO Overview 2.0, paragraph 2.1 (after the complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
In this case, the Panel credits the Complainants’ assertions that the Respondent is not related in any way to the Complainants’ business, that no license or authorization has been granted to the Respondent to make any use or apply for registration of the disputed domain names, and that the use of the disputed domain names in connection with holding pages constitutes neither a bona fide offering of goods or services under the Policy nor a legitimate noncommercial or fair use.
The Complainants have made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent’s favor. Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain names, and the Complainants have prevailed on this element of the UDRP.
The Policy requires a complainant to establish that the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. In this case, the disputed domain names resolve to an inactive holding page. Such “passive holding” of the disputed domain names may constitute bad faith registration and use.
In this case, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith. The Respondent could not have ignored its awareness of the Complainants’ trademark rights when it registered the disputed domain names. Moreover, the Respondent has been party to several previous disputes under the UDRP. In these cases, the disputed domain names were held to be identical or confusingly similar to a well-known trademark and in each case the UDRP panel ordered the domain name concerned to be transferred to the respective complainant. The Panel finds that the Respondent’s established pattern of registering domain names in bad faith means that it is more likely than not that the disputed domain names have also been registered and used in bad faith. Further, the Respondent’s offer to sell two of the disputed domain names for an amount in excess of out-of-pocket costs presents a classic indicia of bad faith registration and use. Accordingly, the Complainants have prevailed on this element of the UDRP.
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 <cic-conseiller.xyz>, <creditmutuelfr.xyz> and <particuliers-creditmutuel-france.xyz> be transferred to the Complainant.
Evan D. Brown
Sole Panelist
Date: January 10, 2017