WIPO Domain Name Decision: D2006-0557

The Complainant is Banque Transatlantique S.A., Paris, France, represented by MEYER & Partenaires, France.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2006. On May 3, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 4, 2006, eNom confirmed by email to the Center that the Respondent is listed as the registrant and provided the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on May 10, 2006. In accordance with the Rules, paragraph 5(a), the deadline for Response was May 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2006.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on June 7, 2006. 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.

Complainant is a subsidiary of the Credit Mutuel CIC Banking group. It is one of the oldest French private banks (founded in 1881). It has renowned international expertise in expatriate banking and personal wealth management services with 45000 clients spread over more than 170 countries. Complainant has also special links with 230 banking correspondents in 170 countries that enable its commercial presence on five continents. Its worldwide activities have developed through the setting up of several subsidiaries abroad (Singapore, London, Jersey, Luxemburg and Washington DC).

Complainant is the registrant of two domain names corresponding to its official websites <transat.tm.fr> since 1997 and <banquetransatlantique.com> since 2003.

The trade name Banque Transatlantique is used since 1881 and the company name is registered since 1954.

Respondent registered the disputed domain name <bt-atlantic.com> on September 7, 2005 under the name “Banque Transatlantique”. The Complainant never registered the disputed domain name and contacted the Registrar in order to request the suspension of said domain name on the basis of the lack of respect of the registration agreement (whois details incomplete and inaccurate).

The Complainant is the owner of several French trademarks that are well established and known in the field of selective upper-class banking and financial products and services.

The Complainant claims that the disputed domain name is confusingly similar to its trademarks as far as it entirely reproduces the trademark B.T. which refers to the initials of the Company name of the Complainant. The mere adjunction of a dash followed by the word “atlantic” does not prevent the risk of confusion.

The Respondent is not related in any way to the Complainant’s business. The Complainant alleges that the Respondent is using its corporate name in order to gain Complainant’s clients trust. The Complainant suspects that the disputed domain name was registered by the Respondent with a view to misrepresent itself as the Complainant in order to obtain valuable information from the Complainant’s clients, a practice known as “phishing”. The disputed domain name has been suspended on October 26, 2005 by request of the Complainant in order to prevent a fraud related to that kind of attacks.

The Complainant further contends that the Respondent registered the disputed domain name in bad faith as far as it used Complainant’s company name and address by the registration. Respondent could not have made the association between the words “BT” and “atlantic” randomly and undoubtedly referred to Complainant’s trademarks. The Complainant presumes that the Respondent registered the domain name precisely with the intention to divert Internet users and to gain access to user names and passwords of Complainant’s clients.

The Complainant finally asserts that the Respondent did not intend to make any fair or non-commercial use of the disputed domain name and that it registered it for the sole purpose of creating a website use for the purpose of “phishing”. The passive-holding of the disputed domain name is harmful to Complainant’s image as its clients may believe that their bank has not activated the website under the domain name.

The Respondent did not reply to the Complainant’s contentions and is in default.

The Panel is satisfied that the Center notified the Respondent of the filing of the Complaint and of the commencement of this administrative proceeding in accordance with paragraph 2(a) of the Rules.

According to paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following:

(i) that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that Respondent has no right or legitimate interest in respect of the domain name; and

The Panel has considered the Complainant’s allegation about the identity of the domain name at issue with the Complainant’s trademarks. As a result of Respondent’s default, these allegations have not been contested.

According to the annexes submitted with the Complaint the Complainant holds the following national registrations:

- French trademark BT No 1330014 registered on March 21, 1966 renewed 1976, 1985 and 1995;

- French trademark BANQUE TRANSATLANTIQUE No 1330015 registered on March 21, 1966 renewed in 1976, 1985 and 1995.

The Panel notes that the documents submitted as evidence of the trademark registrations appear to indicate that the latter are currently the object of a renewal proceeding. The Panel would have appreciated to find in the Complaint the renewal certificates of 2005 corresponding to said trademarks.

In the absence of the latter, the Panel has searched the French trademark registry and is satisfied that said trademarks have been renewed. It appears that the French trademarks BT No 1330014 and BANQUE TRANSATLANTIQUE No 1330015 have been effectively renewed in 2005.

The components of the disputed domain name are confusingly similar to the trademarks BT and BT TRANSATLANTIC of the Complainant in that it simply reproduces Complainant’s trademarks.

The mere adjunction of a dash between “bt” and “atlantic” is not sufficient to avoid confusion between the domain name at issue and the Complainant’s trademarks. Moreover the substitution at the end of the disputed domain name of “-tique” into “-tic” is just a misspelling phenomenon creating a likelihood of confusion in Internet users’ mind (Washington Mutual, Inc. v. Phayze Inc., Peter Carrington and Party Night, Inc., WIPO Case No. D2003-0283, OfficeMax, Inc. and OMX, Inc. v. Yong Li, WIPO Case No. D2003-0060).

This confusion is increased by the fact that the pronunciation is the same between “atlantique” and “atlantic” (Yahoo! Inc. v. David Murray, WIPO Case No. D2000-1013, Dunkin’ Donuts Inc. and Dunkin’ Donuts USA Inc. v. RandomThinkers and Patrick Huba, WIPO Case No. D2001-0104).

The Panel considers that the domain name <bt-atlantic.com> is confusingly similar to the Complainant’s trademarks.

The Policy, paragraph 4(c)(i) provides that a use of a domain name is legitimate if, before any notice of the dispute, Respondent used, 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.

As mentioned above, no Response has been filed and the Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name.

The Complainant has asserted that the Respondent has never been commonly known in any business matters under the name “BT-Atlantic”, “Banque Transatlantic”, “Banque Transatlantique” or “BT”..

The Panel is further convinced that the Respondent has not received any express or implied license or consent to use the BANQUE TRANSATLANTIQUE or BT trademark in the disputed domain name.

The Complainant has also provided evidence that the disputed domain name was once related to the website “www.b-transatlantic.com” which entirely reproduces the official website of the Complainant. The Panel is of the opinion that the Respondent was not making any legitimate non-commercial or fair use of the disputed domain name.

In accordance with the above, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the domain name in accordance with Paragraph 4(a)(ii) of the Policy.

Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

It should be noted that the circumstances of bad faith are not limited to the above.

Because of the Complainant’s fame and worldwide activities, it is the Panel’s conviction, that when registering the domain name at issue, the Respondent knew of the existence of the Complainant’s trademarks.

Moreover the Panel believes that the domain name was registered in bad faith because the domain name is highly similar to the Complainant’s trademark. Furthermore, Respondent registered the domain name with all the contact information of Complainant and usurped its identity. The consequence of this is that Respondent’s address is inaccurate and this goes against ICANN’s requirements regarding domain name registrations. Only a person who had researched about Complainant could have used this information.

These findings lead the Panel to conclude that the domain name in dispute has been registered in bad faith by the Respondent.

Complainant asserted in its Complaint that it identified another contact email address by reverse whois investigations, that is to say [user]@gmail.com, and that this address was associated with numerous domain name registrations, for some of them relating to banking and financial activities.

The Panel did not find in the Complaint any evidence of a reverse whois investigation but only a regular whois investigation indicating the contact [user]@gmail.com. The Panel did not either find any evidence of the investigations leading Complainant to associate this address to said domain name registrations related to banking and financial activities.

In light of the foregoing, the Panel will not take into account Complainant’s arguments regarding the phishing risks as far as Complainant didn’t sufficiently prove its allegations.

However, it is the Panel’s view that Respondent, by registering a domain corresponding to a trademark he was likely aware of, intentionally attempted to attract Internet users by creating a likelihood of confusion with the Complainant’s marks. This behavior constitutes evidence of bad faith use which may affect the Complainant’s reputation, by attracting Internet user’s to a webpage that does not correspond to what they were looking for. This finding is also supported by the fact that the Respondent registered the disputed domain name under the Complainant’s exact contact details, thereby wilfully misrepresenting himself as the Complainant.

Furthermore, even if the domain name is currently inactive, said “passive use” of the domain name is deemed to be indicative of bad faith behaviour. Many WIPO UDRP decisions have held such behaviour as bad faith. See Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon, WIPO Case No. D2004-0245 , Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232, eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633.

It appears that Respondent registered the disputed domain name in order to prevent Complainant from reflecting its trademarks in the corresponding domain name.

Consequently, in view of the above it is established that Respondent did both register and use the disputed domain name in bad faith in accordance with Paragraph 4(a)(iii) of the Policy.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bt-atlantic.com> be transferred to the Complainant.