WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Credit Agricole S.A. v. Brand Austin / Contact Privacy Inc. Customer 0142661580 / Contact Privacy Inc. Customer 0142661581

Case No. D2016-0676

1. The Parties

The Complainant is Credit Agricole S.A. of Montrouge Cedex, France, represented by Nameshield, France.

The Respondent is Brand Austin of Toulouse, France / Contact Privacy Inc. Customer 0142661580 / Contact Privacy Inc. Customer 0142661581 of Toronto, Canada.

2. The Domain Name and Registrar

The disputed domain names <credit-agricole-epipe.com> and <credit-agricole-eppe.com> are registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2016 and the amended Complaint was filed with the Center on April 7, 2016. On April 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, 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 April 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2016.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on May 19, 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.

4. Factual Background

CREDIT AGRICOLE S.A., the Complainant, is a French banking group, which primarily leads banking and insurance activities.

The Complainant is the owner of numerous trademarks matching or incorporating the sign “credit agricole”, including the following rights:

- International Trademark CREDIT AGRICOLE No. 1064647, dated January 4, 2011 and covering goods and services in classes 9, 16, 35, 36, 38, 42;

- International Trademark CA CREDIT AGRICOLE No. 525634, dated July 13, 1988, duly renewed and covering goods and services in classes 16, 35, 36;

- International Trademark CA CREDIT AGRICOLE No. 441714, dated October 25, 1978, duly renewed and designating goods and services in classes 16, 35, 36, 42;

- European Union Trademark CREDIT AGRICOLE No. 6456974, dated November 13, 2007, covering goods and services in classes 9, 16, 35, 36, 38, 42.

The Complainant also owns several domain names, such as:

- <credit-agricole.com>, registered on December 31, 1999 and duly renewed;

- <creditagricole.com>, registered on June 11, 2001 and duly renewed;

- <creditagricole.net>, registered on January 7, 2002 and duly renewed.

The disputed domain names <credit-agricole-epipe.com> and <credit-agricole-eppe.com> were registered on March 25, 2016 and are inactive.

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant contends that the disputed domain names are confusingly similar to its registered and widely-known trademark CREDIT AGRICOLE since this trademark is contained in the disputed domain names. The Complainant states that the disputed domain names are also confusingly similar to the domain names it owns in relation with its trademark CREDIT AGRICOLE.

The Complainant considers that the addition of the letters “EPIPE” and “EPPE” in the disputed domain names, along with a hyphen to separate them from its trademark, as well as the generic Top-Level Domain (“gTLD”) “.com” are not sufficient elements to avoid the finding of confusing similarity.

Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect to the disputed domain names. In this regard, the Complainant mentions that no license or authorization has been granted to the Respondent to make any use of its trademarks. The Complainant further indicates that it has no business relationship with the Respondent. Also, the Complainant states that the disputed domain names are inactive and that, consequently, the Respondent did not make any use of the disputed domain names since their registration, which tends to show that the latter has no demonstrable plan to use the disputed domain names.

Thirdly, the Complainant asserts that the disputed domain names were registered and are being used in bad faith.

On the criterion of registration in bad faith, the Complainant evokes the notoriety of its trademarks CREDIT AGRICOLE and deems that it is reasonable to infer that the Respondent registered the disputed domain names with full knowledge of these trademarks.

Finally, the Complainant contends that the incorporation of a famous trademark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use.

In view of all the above, the Complainant requests the Panel to order that the disputed domain names <credit-agricole-epipe.com> and <credit-agricole-eppe.com> be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of a disputed domain name, the Complainant shall prove the following three elements:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has 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.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns various registered trademarks CREDIT AGRICOLE protected throughout the world, including in France, where both the Complainant and the Respondent are located.

The trademark CREDIT AGRICOLE is also reflected through the registration and use of domain names by the Complainant, such as <credit-agricole.com>.

In the present case, the disputed domain names reproduce the Complainant’s trademark in its entirety, which was found to be well-known by prior UDRP panels (see e.g. Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683).

Besides, previous UDRP panels have held that when a domain name entirely incorporates a complainant’s registered trademark, this fact might be sufficient to establish confusing similarity for purposes of the Policy (see e.g. RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059 or Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150).

Thus, it has to be considered that the presence of the elements “epipe” and “eppe” in the disputed domain names is not sufficient to distinguish them from the Complainant’s trademark. In this respect, the Panel notes that although the term “epipe” could refer to pipes sold online, this fact is not in itself sufficient to avoid the likelihood of confusion.

Furthermore, the presence of hyphens is irrelevant. Former UDRP panels have stated that a hyphen in a domain name “add[s] no distinctiveness whatsoever” (see e.g., Dr. Grandel GmbH v. West End Internet Services, WIPO Case No. D2005-0853).

Finally, it is well established that the Top-Level domain, as “.com” in the present case, may be disregarded to assert whether or not the disputed domain name is identical or confusingly similar to a complainant’s trademark (see e.g. Diamonique Corporation v. Foley Services, WIPO Case No. D2007-0893).

In consequence, the Panel considers that the Complainant has proved that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Prior UDRP panels have recognized that it is sufficient for the Complainant to demonstrate a prima facie case that the Respondent lacks rights or legitimate interests in the dispute domain name, in order to shift the burden of production to the Respondent (see e.g.Skipton Building Society v. skiptonassetmanagement.com, Private Registration, WIPO Case No. D2011-0222).

Presently, the Complainant has shown that the Respondent does not benefit from a license or authorization, granted by the Complainant, to use the trademark CREDIT AGRICOLE and that the Complainant and the Respondent have no business relationship together.

Besides, the Respondent is not commonly known under the name “Credit Agricole”. Neither has the latter made demonstrable preparations to use the disputed domain names in relation with a bona fide offer of goods and services, since the disputed domain names are both inactive.

Finally, the Panel notes that the Respondent has not filed any response to the Complainant’s contentions to try to establish that it has a possible right or legitimate interest in respect to the disputed domain names. The Respondent has thus not provided evidence of the circumstances set in paragraph 4(c) of the Policy.

Consequently, the Panel considers that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant must also show that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of registration and use of a domain name in bad faith.

As stated above, the disputed domain names entirely incorporate the Complainant’s trademark and are therefore confusingly similar to this trademark.

Further, the Complainant owns trademark rights on the sign CA CREDIT AGRICOLE since 1978 whereas the disputed domain names were registered in 2016, namely 38 years later. Consequently, these elements suggest bad faith registration (see e.g. Crédit Agricole S.A. v. Donghui, WIPO Case No. D2015-0472).

Besides, both the Complainant and the Respondent are located in France, where the Complainant mainly deploys its activities. Hence, there is no doubt to the Panel that the Respondent had full knowledge of the Complainant’s trademark when it registered the disputed domain names.

In view of the above, the Panel concludes that the disputed domain names were registered in bad faith by the Respondent.

Regarding the question of use in bad faith, no positive use is made of the disputed domain names, one of them resolving to a blank page only incorporating the mention “sito web in manutenzione” (meaning “website maintenance”) and the other resolving to a blank page too, only featuring the mention “sito in contruzione” (meaning “website under construction”).

However, passive holding does not preclude a finding of use in bad faith. On the contrary, passive holding can constitute use in bad faith, as recognized in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003:

“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”.

Presently, the Panel has concluded that the Respondent has registered the disputed domain names in bad faith, especially considering the goodwill the Complainant achieved in its trademark, which was recognized by prior UDRP panels (see e.g. Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683 and Credit Agricole S.A. v. Wang Rongxi, WIPO Case No. D2012-0258).

Indeed, the Complainant’s trademark has a strong reputation, especially in France, where the Respondent is located. Moreover, the Respondent has provided no evidence whatsoever of any actual or contemplated goof faith use of the disputed domain names.

Therefore, the Panel finds that the Respondent also uses the disputed domain names in bad faith.

7. 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 <credit-agricole-epipe.com> and <credit-agricole-eppe.com> be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist
Date: May 31, 2016