WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

SAS Carte Bleue v. Business Affiliation Ltd

Case No. D2006-1583

 

1. The Parties

The Complainant is SAS Carte Bleue, Paris, France, represented by Inlex Conseil, France.

The Respondent is Business Affiliation Ltd, Mahe Seychelles, Seychelles.

 

2. The Domain Names and Registrar

The disputed domain names <cartebleue-anonyme.com> and <cartebleue-suisse.com> are registered with pair Networks, Inc. d/b/a pairNIC pair Networks, Inc. d/b/a pairNIC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2006. On December 15, 2006, the Center transmitted by email to pair Networks, Inc. d/b/a pairNIC pair Networks, Inc. d/b/a pairNIC a request for registrar verification in connection with the domain names at issue. On December 19, 2006, pair Networks, Inc. d/b/a pairNIC pair Networks, Inc. d/b/a pairNIC transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 29, 2007. The Center verified that the Complaint together with the amendment to 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 January 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2007.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on March 5, 2007. 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 company whose predecessor in title has been issuing credit and debit cards since 1967 and, since 1973, has done so in association with and under the name “Visa”. As a result, Carte Bleue Cards have become very well known, to the extent that some 30 million of them are on issue through over 200 banks.

The Complainant is the registered owner of the following trademarks which are used for the purpose of conducting its business:

(a) Community Trademark No. 000 710 467, registered on March 24, 1999 for CARTE BLEUE;

(b) Community Trademark No. 000 707 067, registered on June 18, 1999, for CARTE BLEUE;

(c) Registered Trademark No. 053389090, registered in France on October 25, 2005 for CARTE BLEUE with device;

(d) Registered Trademark No. 053389086, registered in France on October 28, 2005, for CARTE BLEUE with device;

(e) Registered Trademark No. 053389094, registered in France on October 28, 2005, for CARTE BLEUE with device; and

(f) Registered Trademark No. 053389087, registered in France on October 28, 2005 for CARTE BLEUE with device.

The Complainant has also registered a series of the domain names including <cartebleue.com>, <cartebleue.fr>, < cartebleue.net>, <cartebleue.biz>, <cartebleue.info> and <cartebleue.org> and these are also used in its business.

The Respondent registered the domain name <cartebleue-suisse.com> on February 16, 2006 and the domain name <cartebleue-anonyme.com> on February 18, 2006.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the domain names <cartebleue-anonyme.com> and <cartebleue-suisse.com> should no longer be registered with the Respondent but that they should be transferred to the Complainant. It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain names are confusingly similar to the Complainant’s registered trademarks CARTE BLEUE, that the Respondent has no rights or legitimate interests in the domain names and that they have been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain names to the Complainant.

In support of its case on the first of these three elements, the Complainant relies on the registered CARTE BLEUE trademarks to which reference has already been made and says that the domain names <cartebleue-anonyme.com> and <cartebleue-suisse.com> are confusingly similar to those marks because the only differences are that the words ‘anonyme’ and ‘suisse’ respectively and a hyphen have been added, none of which detracts from the dominant message of the domain names which is that of “Carte Bleue”. The confusion comes, it contends, from the fact that Internet users seeing the domain names would believe on good grounds that they were by some means associated with the Complainant, which they are not.

The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain names because the facts show an obvious intention by the Respondent to trade on the Complainant’s marks and mislead consumers into believing that, because the domain names using those marks are not linked to websites, the Complainant does not have active websites in those names, which is not true. Nor, it is argued, can the Respondent bring itself within any of the provisions of paragraph 4(c) of the Policy.

Finally, the Complainant contends that the domain names were registered and are being used in bad faith. It contends that this is so because the Respondent must have known of the Complainant’s famous name and yet reproduced its trademarks without authority. Moreover, the Respondent has in effect prevented the Complainant from using its trademarks in the disputed domain names. In particular, in view of the known nature of the Complainant’s business, namely extending credit and performing other banking functions, it is bad faith to use its name for any but legitimate purposes, for doing so can only cause public confusion. Accordingly, the Complainant contends, it must be inferred that the Respondent registered and has used the domain name in bad faith.

B. Respondent

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

 

6. 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 and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past WIPO UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

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

B. The Respondent has no rights or legitimate interests in respect of the domain names; and

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

It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Panel finds that the domain names are confusingly similar to all of the CARTE BLEUE trademarks, details of which appear above and which have been verified in the Complaint.

First, they are confusingly similar to the trademarks because the dominant feature of the domain names that compels the attention of the reasonable bystander is the word “cartebleue”, which instantly invokes the name of the Carte Bleue card, which is famous throughout Europe. The belief engendered by the domain names, that they are associated with that famous Carte Bleue bank card is not dispelled in the slightest by adding the word “anonyme”, as this would be taken to strengthen the notion that what is being referred to is the Carte Bleue company, for the word ‘ anonyme’ is part of the description of a limited company in France, as in ‘societe anonyme’. Nor would that belief be dispelled by adding the word ‘suisse’, as this would simply convey the notion that what is being referred to is the Swiss branch or subsidiary of Carte Bleue. In each case the domain name would still be assumed to be linked with the brand Carte Bleue and hence the trademark CARTE BLEUE.

The views just expressed are consistent with UDRP cases where these principles have been applied.

Thus, the addition of a geographic location to a trademark, such as a country name, has been held not to absolve a disputed domain name registrant from liability; see Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150 and Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032.

UDRP panels have also found that the addition and omission of hyphens does not sufficiently differentiate domain names from the trademarks contained therein so as to avoid a finding of confusing similarity: Teradyne, Inc. Teradyne, Inc. v. 4Tel Technology, WIPO Case No. D2000-0026 and The Ritz-Carlton Hotel Company, LLC v. Club Car Executive Transportation and Dennis Rooney, WIPO Case No. D2000-0611.

The Panel also draws the inference that the structure of the two domain names was effected deliberately to confuse Internet users who are looking for websites devoted to the Carte Bleue limited company and its branch in Switzerland and with the intention of using them subsequently for an illegitimate purpose. Accordingly, not only are the domain names confusingly similar to the trademarks, but they are intentionally so.

Finally, it has been consistently held that confusing similarity is not negated by the presence in the domain name of suffixes such as the gTLD suffix “.com”.

As the Complainant clearly has rights in the registered trademarks as their registered owner, the Panel finds that the domain names are confusingly similar to the trademarks and that the Complainant has accordingly established the first of the three elements that it must prove.

B. Rights or Legitimate Interests

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

But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.

The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that it had until February 20, 2007, to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.

It is also well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.

The Panel, after considering all of the evidence in the Complaint, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain names. That is so because the Complainant has shown that it has never authorised the Respondent to use its trademarks in a domain name, the Respondent has never put the domain names to any legitimate use, the Respondent is not known by the domain names and it has no trademark interest in them. Those facts are sufficient to make out a prima facie case.

The Respondent has not made any attempt to rebut this prima facie case and the Panel therefore concludes that the Respondent has no such rights or legitimate interests in the domain names.

The Respondent chose, without the Complainant’s authorization, the Complainant’s famous name as the major part of its domain names and simply added one word and a hyphen in each case. It has been held many times that, as it was put in Baudville, Inc. v. Henry Chan, WIPO Case No. D2004-0059, “…no rights or legitimate interest derive from this type of use of another’s trademark”. Accordingly, the conduct of the Respondent calls for an explanation, which the Respondent could have given but has not. In the absence of such an explanation by the Respondent, the Panel draws the inference that “any evidence of the Respondent would not have been in [its] favour”: Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273.

The Complainant has therefore established that the Respondent has no rights or legitimate interests in respect of the domain names and has thus made out the second of the three elements that it must establish.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the domain names were registered in bad faith and that they are being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

“(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 Respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 the respondent’s website or location or of a product or service on the site or location.”

In the present case, the facts are that the domain name <cartebleue-suisse.com> is directed to the website of the Respondent’s own registrar, where the various offerings of that party are on display. It offers the usual services of a registrar, sets out the cost of those services and openly solicits business from Internet users who find their way to the site. Those facts bring the case squarely within paragraph 4(b)(iv) of the Policy, for the Respondent has clearly registered and is using the domain name to attract internet users to its registrar’s site by creating confusion with the CARTE BLEUE marks as to whether the registrar’s site and the services offered on it are sponsored or endorsed by the Complainant itself.

Indeed, not only has the Respondent created this confusion as the result of what it has done, but it has apparently chosen the Complainant’s name because it is so well-known and has traded on it in the hope that some internet users will mistakenly use the domain name to find their way to an official Carte Bleue website.

Moreover, it is unlikely to conceive that the Respondent registered the domain name and used it in this manner for any reason other than a commercial one.

Accordingly, with respect to this domain name, the Complainant has made out its case.

The other domain name, <cartebleue-anonyme.com> does not lead anywhere and is apparently not being put to any use at all. It therefore raises the question, as it is put in paragraph 3.2 of the WIPO Overview, “Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder? (Passive holding)”.

The answer given in the Overview is as follows:

“Consensus view: The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”

Several UDRP decisions are cited to support this proposition, namely

Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 and Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131. In each of those cases, the result was that bad faith was made out and a transfer of the domain name was ordered. There have been many other decisions to the same effect, although as the Overview makes plain, they all depend on their own individual facts.

In the present case, the Panel finds that the facts bring the case within the principles set out in the Overview and thus within the provisions of the Policy. The Complainant has a well - known trademark, verified by the decision in SAS Carte Bleue contre Association des Amis des Malades de l’Hôpital Cochin, WIPO Case No. D2005-1147, there was no response to the Complaint or to a cease and desist letter and email and it is impossible to conceive of a good faith reason for using the trademark in the domain name. The last point is especially so, because as the Complainant says, its cards are used for banking transactions where security is paramount. As such transactions are increasingly being conducted on the internet, any party using the name of a credit card or its issuing company in a domain name, without permission, has a virtually impossible task to show that this was done for good motives or with any sense of responsibility.

Accordingly, whether or not the Respondent’s conduct brings it within any of the specific criteria set out in paragraph 4(b) of the Policy, its conduct in registering the domain name <cartebleue-anonyme.com> and passively holding it, constitutes bad faith conduct in the broadest sense.

The result is that with respect to both domain names, the Complainant has made out the third of the three elements that it must establish.

 

7. Decision

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 names <cartebleue-anonyme.com> and <cartebleue-suisse.com> be transferred to the Complainant.

The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: March 19, 2007