The Complainant is Crédit Agricole SA of Montrouge Cedex, France, represented by Nameshield, France.
The Respondent is Felise Suarez, Felise Market of Novi, Michigan, United States of America (“United States”).
The disputed domain names <e-service-creditagricole.com> and <e-service-creditagricole.info> are registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2017. On September 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 28, 2017, the Registrar 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 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 October 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2017.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on November 1, 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.
The Complainant is a leading European bank, with an international presence. Its business extends to include retail banking, insurance management, asset leasing and factoring, consumer credit, corporate banking and investment. The Complainant currently operates on behalf of millions of customers in over 52 countries with approximately 138,000 employees in more than 11,000 banking agencies worldwide.
The Complainant owns a multitude of trademark registrations containing the element “credit agricole”, among them:
- European Union Trade Mark Registration No. 006456974 CREDIT AGRICOLE (word) filed on November 13, 2007, registered on October 23, 2008, for goods and services in Classes 9, 16, 35, 36, 38, 42.
- European Union Trade Mark Registration No. 005505995 CA CRÉDIT AGRICOLE (fig.) filed on November 20, 2006, registered on December 20, 2007, for goods and services in Classes 9, 36, 38.
- International Trademark Registration No. 1064647 CREDIT AGRICOLE (word), registered on January 4, 2011, for goods and services in Classes 9, 16, 35, 36, 38, 42.
- International Trademark Registration No. 525634 CA CRÉDIT AGRICOLE (word and figurative), registered on July 13, 1988, for goods and services in classes 16, 35, 36.
- International Trademark Registration No. 441714 CA CRÉDIT AGRICOLE (word and figurative), registered on October 25, 1978, for goods and services in classes 16, 35, 36, 42.
The Complainant also owns domain names incorporating the trademark CREDIT AGRICOLE including <credit-agricole.com> (since 1999), <credit-agricole.fr> (since 1995), <creditagricole.com> (since 2001), <creditagricole.net> (since 2002) and <credit-agricole.net> (since 1999).
In addition to its registered trademarks and domain names, the Complainant has acquired goodwill and a significant reputation in the areas in which it specializes, through the use of the trademarks CREDIT AGRICOLE and CA CRÉDIT AGRICOLE. As such, CREDIT AGRICOLE has become a distinctive identifier associated with the Complainant and the services it provides.
The disputed domain names <e-service-creditagricole.com> and <e-service-creditagricole.info> were both initially registered on September 24, 2017. The disputed domain names resolve to inactive webpages displaying an error page.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is established in the present case:
(1) The Complainant is of the opinion that the disputed domain names are confusingly similar to the CREDIT AGRICOLE and CA CRÉDIT AGRICOLE trademarks in which it enjoys rights, in particular since these trademarks are contained in the disputed domain names in their entirety.
In this respect, the addition of the generic term “e-service” does not dispel the confusion. In similar circumstances, numerous panels have recognized that the addition of a generic term, such as “e-service”, is not able to diminish confusion.
The same applies for the generic top-level Domains (“gTLDs”) “.com” and “.info” which are not sufficient to avoid a finding of confusing similarity. They are typically disregarded when comparing domain names and trademarks.
Thus, the disputed domain names may evoke the impression that the website is operated by or linked to the Complainant.
(2) Further, the Complainant is of the opinion that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
In this regard, the Complainant contends that the Respondent is not affiliated with nor authorized or licensed by the Complainant in any way and the Complainant has no business or other relationship with the Respondent.
Furthermore, the Respondent has no demonstrable plan to use the disputed domain names. The disputed domain names resolve into inactive websites. This inactivity is not a bona fide use of the disputed domain names.
Apart from this the Complainant submits that the Respondent failed to prove a legitimate use of the disputed domain names.
(3) The Complainant finally contends that the disputed domain names were registered and are being used in bad faith.
Given the widespread use of the famous CREDIT AGRICOLE and CA CRÉDIT AGRICOLE trademarks, particularly in countries where the primary language is not French, the Respondent must have been aware that in registering the disputed domain names it was misappropriating the valuable intellectual property of the owner of the CREDIT AGRICOLE and CA CRÉDIT AGRICOLE trademarks.
When considering the reputation, notoriety and distinctiveness of the CREDIT AGRICOLE and CA CRÉDIT AGRICOLE trademarks throughout the world and the nature of the Respondent’s website, the only reason why the Respondent could have wanted to register and use the disputed domain names was that it had actual knowledge of this mark at the time of registration, and wanted to use it to profit from the Complainant’s mark in the disputed domain names by creating a likelihood of confusion with the Complainant’s marks.
The Complainant further argues that it is inconceivable that the Respondent can use the disputed domain names without infringing the Complainant’s intellectual property rights, because of the confusing similarity outlined above.
Additionally the passive holding of the disputed domain names constitutes bad faith use.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain names are identical or confusingly similar to the complainant’s trademarks; and
(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.
In the following, the Panel will discuss in consecutive order whether each of these requirements are met.
The test for identical or confusing similarity under paragraph 4(a)(i) of the Policy is limited in scope to a direct comparison between the Complainant’s marks and the textual string which comprises the disputed domain names. In this case, the Complainant has demonstrated registered trademark rights in the marks CREDIT AGRICOLE and CA CRÉDIT AGRICOLE, which predate the registration of the disputed domain names. The disputed domain names consist of the term “e-service-creditagricole” and the top-level domains “.com” and “.info”, which are generally disregarded when assessing confusing similarity.
The disputed domain names contain the Complainant’s trademarks CREDIT AGRICOLE in its entirety and differ from the trademarks only by the addition of the term “e-service”.
The additional term “e-service” does not dispel confusion. “E-service” is the short term for “electronic service” and therefore a descriptive term which could be added to any trademark. It may easily be associated with services the Complainant provides, as they are a specific kind of financial service that the Complainant offers. Thus, the disputed domain names could easily be domain names of the Complainant itself.
As already found by numerous UDRP panels, the mere addition of generic or descriptive words is insufficient in itself to avoid a finding of confusing similarity (see Credit Lyonnais v. Jehovah Technologies Pte LTD, WIPO Case No. D2000-1425; Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314).
For this reasons, the Panel concludes that the addition of the term “e-service” does not change the overall impression of the disputed domain names as being dominated by the distinctive trademark CREDIT AGRICOLE and does not serve to distinguish the disputed domain names from the Complainant’s marks.
Hence, the disputed domain names are confusingly similar to the Complainant’s CREDIT AGRICOLE and CA CRÉDIT AGRICOLE trademarks. Moreover, the disputed domain names suggest that it resolves to a website operated or otherwise authorized by the Complainant offering electronic financial services. Therefore, in the Panel’s view, Internet users may assume that the disputed domain names refer to a website of or authorized by the Complainant.
In view of the above, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
It is a consensus view under the UDRP that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names in order to place the burden of production on the Respondent (see Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683; 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 with respect to paragraph 4(c)(i) of the Policy, there is no evidence in the record that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
Additionally, with respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain names or has acquired trademark rights in a name corresponding to it.
Furthermore, with respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain names and has not used the domain names, or names corresponding to it, in connection with a bona fide offering of goods and services.
Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights and/or legitimate interests in the disputed domain names.
Hence, the burden of production has been placed on the Respondent. In such case, the Respondent must, by substantial evidence, demonstrate its rights or legitimate interests in the disputed domain names in order to refute the prima facie case. The Respondent has made no such showing, since there has not been any response to the Complainant’s contentions.
Hence, the Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain names. Therefore, the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Under paragraph 4(a)(iii) of the Policy, a complainant has to establish that a respondent registered and used the disputed domain names in bad faith.
Whether a disputed domain name is used in bad faith for purposes of the Policy may be determined by evaluating the following criteria set forth in paragraph 4(b) of the Policy:
“circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name;
the registrant has 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 the registrant has engaged in a pattern of such conduct;
the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor;
by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.”
The Complainant has brought evidence that its trademarks are known to millions of customers and clients worldwide, which has not been contested by the Respondent. The Panel finds this evidence credible as it coincides with the Panel’s own perception and is corroborated by the case law cited by the Complainent. Furthermore the Complainant has registered its CREDIT AGRICOLE and CA CRÉDIT AGRICOLE marks internationally since 1978. Thus, the Panel accepts the Complainant’s contention that the trademarks CREDIT AGRICOLE and CA CRÉDIT AGRICOLE can be considered well known for the purposes of this proceeding, and were so before the registration of the disputed domain names. Therefore, the Panel concludes that it is inconceivable that the Respondent had not known of the Complainant’s trademarks upon registration of the disputed domain names.
Further, no positive use is made of the disputed domain names. The disputed domain names resolve to inactive webpages. The Respondent has registered the disputed domain names, but did not put them to any use.
It was held in prior UDRP decisions that passive holding of domain names can be considered bad faith use of a domain name, especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, the concealment of identity, etc. (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763).
“The relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith” (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).”
In the present case, taking into consideration the goodwill the Complainant achieved in its trademarks, the fact that the Complainant’s trademarks are neither a common noun, nor a common name and the fact that the disputed domain names incorporate the Complainant’s well-known trademarks in their entirety without any justification and have thereby factually been appropriated by the Respondent, the Panel holds that the passive holding of the disputed domain names by the Respondent is considered bad faith.
For all of the above, the Panel finds that the disputed domains have been registered and are being used in bad faith and that the Complainant has satisfied the requirement of paragraph 4(a)(iii) of the Policy.
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 <e-service-creditagricole.com> and <e-service-creditagricole.info> be transferred to the Complainant.
Dr. Andrea Jaeger-Lenz
Sole Panelist
Date: November 14, 2017