Complainant is Union des sociétés du Crédit Coopératif, France, represented by DBK Law Firm, France.
Respondent is Fycls Ingenieria, Colombia.
The disputed domain name <creditocoop.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2020. On October 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2020. Informal communications were filed with the Center by Respondent on October 14, 2020; October 24, 2020; and November 1, 2020.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on November 5, 2020. 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 French cooperative bank that provides banking services. Complainant is part of the BPCE Group, a large banking group in France. Complainant owns and uses the name and mark CREDIT COOPERATIF in connection with its banking services and owns a trademark registration for the CREDIT COOPERATIF mark in the European Union (No. 2227072), which issued to registration on June 19, 2002 and for the CREDICOOP mark in France (No. 1388858), which issued to registration on January 12, 1987. Complainant also owns and uses the domain names <credit-cooperatif.coop>, <creditcoop.fr>, and <creditcooperatif.com> which are used with websites concerning Complainant and its services.
Respondent is based in Bogota, Colombia and registered the disputed domain name on May 2, 2020. The domain name currently resolves to a parked page generated through the registrar, GoDaddy.com
Complainant contends that it owns rights in the marks CREDIT COOPERATIF and CREDICOOP by virtue of its trademark registrations for these marks in connection with banking and financial services.
Complainant argues that the disputed domain name is confusingly similar to the CREDICOOP mark as it is merely a typo version that adds the letters “t” and “o” to the word “credi.” Complainant also maintains that the disputed domain name is confusingly similar to the CREDIT COOPERATIF mark as it simply adds the letter “o” to the word “credit” along with an abbreviation for the word “cooperative.”
Complainant asserts that Respondent does not have rights or a legitimate interest in the disputed domain name as Respondent (i) has not been granted any authorization or license to use or register a domain name based on Complainant’s rights, and (ii) has used the disputed domain name with a webpage with links that ultimately redirect towards websites of Complainant’s competitors.
Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith given that Complainant’s trademarks are well-known in France and given that Complainant is part of the BPCE Group, a well-known banking group. As such, Complainant maintains that Respondent’s registration of the disputed domain name was no mere coincidence but was done to create a likelihood of confusion with Complainant’s CREDIT COOPERATIF mark and BPCE Group. Complainant further contends that Respondent’s bad faith is established through Respondent’s use of the disputed domain name to attract web users to Respondent’s click through webpage at the disputed domain name for profit.
Respondent did not file a formal response, but sent a series of emails to the Center detailing Respondent’s contentions in the matter.
Respondent maintains that they are a legitimate company that operates in Colombia and that Respondent purchased the disputed domain name legitimately when it was offered publicly for sale. Respondent maintains that until this dispute arose it was not aware of Complainant and that it did not register the disputed domain name to take advantage of any rights owned by Complainant.
Respondent asserts that its business activities are in the Colombian cooperative sector and that it acquires domain names for use in connection with products and activities it is commercializing in Colombia. Respondent contends that it owns and uses a number of domain names that consist of the term “coop”, such as <boletacoop.com>.
Respondent contends that it registered the disputed domain name for one of its projects, a platform for various financial credit related services. In that regard, Respondent maintains that it has been working on its credit related project for months and has created various promotional and presentation materials for the project, a digital campaign, and programming for a web page. Respondent asserts that it had communications with Complainant after this proceeding was initiated, in which Respondent advised that it had spent the equivalent of approximately USD 5,000 in Colombia in connection with the branding and digital media portion of the project. Respondent further asserts that the parties operate in separate markets and, as such, asked that if Complainant wants Respondent to change its branding, then it should cover the costs incurred to date by Respondent in connection with its brand identity.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.2.1. Complainant has provided evidence that it owns a trademark registration for CREDICOOP in France and CREDIT COOPERATIF in the European Union, and that such issued to registration before Respondent registered the disputed domain name.
With Complainant’s rights in the CREDICOOP and CREDIT COOPERATIF marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) such as “.com”) is identical or confusingly similar with Complainant’s marks. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark. WIPO Overview 3.0 at section 1.7.
In the instant proceeding, the disputed domain name is confusingly similar for purposes of the first element, essentially a standing requirement, as Complainant’s CREDICOOP and CREDIT COOPERATIF trademarks are arguably recognizable in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s CREDITCOOP and CREDIT COOPERATIF marks and in showing that the disputed domain name is identical or confusingly similar to these trademarks.
Given that Complainant’s contentions under the second and third elements are largely similar and that the analysis of such contentions is based on the same limited evidence before the Panel, the discussion of these two elements has been combined.
Complainant argues that Respondent has acted in bad faith and has no rights or legitimate interests in the disputed domain name because Complainant has prior rights in the CREDIT COOPERATIF and CREDICOOP marks and registered and used the disputed domain name with a website with links to services offered by Complainant’s competitors. Complainant further contends that its CREDIT COOPERATIF and CREDICOOP marks are well known in France to consumers of financial and banking services.
In support of Complainant’s contentions, Complainant has provided copies of its French trademark registration for CREDICOOP and European Union registration for CREDIT COOPERATIF, the Whois records for the domain names <credit-cooperatif.coop>, <creditcoop.fr>, and <creditcooperatif.com>, and some web printouts in French from Wikipedia and Complainant’s BPCE Group website that concern Complainant.
In addition, while Complainant makes reference to the three domain names it owns (noted above), Complainant did not provide any screen shots showing use of the domain names with any active websites. The Panel, however, has checked to see if there are websites at these domain names and found that Complainant maintains a website at the domain name <credit-cooperatif.coop> that is entirely in French and concerns Complainant and its services in France, and through which customers of Complainant can presumably access their accounts. The domain names <creditcoop.fr> and <creditcooperatif.com> appear to simply be used as redirects to Complainant’s website at the domain name <credit-cooperatif.coop>.
Lacking in Complainant’s evidence is anything showing that Complainant, as separate from the BPCE Group, is well known outside of France, enjoys any reputation beyond France, or that Complainant has any trademark rights or is even known in Colombia or outside of France and Europe. The evidence that Complainant provided simply shows that it is is a French cooperative bank that operates solely within France. There is simply no evidence that the reputation of Complainant extends beyond France.
The basic issue that Complainant faces is that while Complainant has rights in CREDIT COOPERATIF and CREDICOOP in the European Union and France, the phrase “credit cooperatif” or “credit coop” has a common meaning, particularly when translated in languages other than French. For example, in English a “credit cooperative” is a financial organization that is owned by its members (e.g., a “credit union”). In Spanish the word for “credit” is “crédito,” the Italian word for “credit” is “credito” and “credito cooperativo” has a common meaning in both Italian and Spanish. That is not to say that Complainant cannot, and does not, enjoy rights in CREDIT COOPERATIF and CREDICOOP as marks for its financial services in the European Union and France, but it is incumbent on Complainant to prove that its rights or reputation extend beyond France and that use of “credito cooperativo” or “credito coop” would be perceived by consumers, particularly outside of France, as identifying a trademark of Complainant or Complainant’s financial or banking services, as opposed to simply being seen by consumers as a common term for a credit cooperative or union.
Here, that evidence is simply lacking in the record. Complainant’s reliance on the fame of the BPCE Group as a large French banking group does not in and of itself establish that all of its component entities and brands are ipso facto famous around the world. What is missing is evidence establishing that CREDIT COOPERATIF or CREDICOOP standing alone are well-known names and marks, or at the very least enjoy some reputation outside France, such as in Colombia where Respondent is located. Indeed, while Complainant relies on its French trademark registration for CREDICOOP, Complainant submitted no evidence showing use of the CREDICOOP mark anywhere or that the mark is even in use in France.
Moreover, Complainant provided little evidence showing the actual use of the CREDIT COOPERATIF mark beyond (i) a reference to Complainant’s website at the domain name <credit-cooperatif.coop> which is entirely in French and which does not appear to be targeted to consumers outside of France, and (ii) some Wikipedia pages and a printout from the “www.groupebpce.com” website that speak about Complainant generally and its activities in France. What is missing is evidence that would tend to establish that consumers, particularly outside of France, would more likely than not perceive “credito coop” to be related to Complainant as opposed to simply a common reference. Under these circumstances, it is difficult for the Panel to conclude that Complainant has exclusive rights in “credit cooperatif” beyond perhaps France and the European Union and that such rights are so strong and exclusive as to cover variants such as “credit coop,” “credito cooperativo” or “credito coop“ (on which the disputed domain name is based) around the world.
Beyond Complainant’s evidentiary failures, Complainant’s entire claim is that Respondent has no legitimate interests in the disputed domain name and is acting in bad faith because the disputed domain name resolves to a web page with “hypertext links redirecting towards websites of Complainant’s competitors.” In support of that contention, Complainant has submitted a web page which features links in French for a variety of broad categories related to getting rapid credit, opening up a bank account and, notably, a reference to the common term “Credito Cooperativo,” along with some sub-pages showing further click-through links. Apart from the fact that the links differ depending on the geo location of the web user1, the very bottom of the page submitted by Complainant provides that “This Web page is parked FREE, courtesy of GoDaddy.” While the Panel is mindful that the registrant of a domain name is ultimately responsible for what is posted at a domain name, it is not clear that Respondent is getting any monetary or other benefit from such a parked page. Certainly, this single page does not necessarily establish by itself that Respondent specifically targeted Complainant for profit, given the common meaning that “credito coop” or “credito cooperativo” might have in Spanish and/or the fact that GoDaddy, a registrar based in the United States, might be the party who generated the links that appear on the parked page at the disputed domain name (depending on the web users location). Again, the touchstone is for Complainant to establish that through its use of CREDIT COOPERATIF and CREDICOOP the reputation of these marks extends beyond France and that Respondent sought to take advantage of Complainant’s reputation in such trademarks in bad faith as opposed to registering a domain name based on a common term in Spanish and then allowing GoDaddy to post a parked page that had some financial related links.
Added to this analysis are Respondent’s communications and evidence. Respondent alleges that it was not aware of Complainant or its claimed rights until this dispute arose. Respondent also asserts that it has been creating a financial credit platform project in Colombia for Colombian consumers and has provided more than a dozen documents that it claims it created in the past five months for the project, including numerous multi-colored promotional flyers that include a “Credito Coop” logo Respondent created for the project, a detailed digital presentation for the “Credito Coop” project and offerings and other documents. There is also some evidence that Respondent created other bona fide projects that use the term or abbreviation “coop” such as a <boletacoop.com>, which appears to be promoting a ticket management application.
While Respondent’s evidence could be seen as pretextual, including Respondent’s request of a USD 5,000 fee to cover its branding related costs if it changes the name of its project, there is nothing in the record that suggests that Respondent does not have a bona fide business or did not legitimately register and develop its “credito coop” project. For instance, there is no evidence showing that Respondent (i) has a pattern of registering and using domain names based on the marks of others, (ii) operates a sham business, (iii) targeted Complainant specifically or its “Credit Cooperatif” website and/or financial and banking services, or (iv) submitted potentially fake or altered documents as evidence.
Based on the evidence that is before the Panel, this dispute does not look like a cybersquatting issue, but more like a trademark or unfair competition case. To be sure, to the extent that Complainant may have a claim against Respondent for trademark infringement or unfair competition, such a claim belongs in another forum and is beyond the scope of a UDRP proceeding which is limited to considering whether a respondent has a legitimate interest in a disputed domain name and whether a disputed domain name has been registered and used in bad faith pursuant to a non-exhaustive list of circumstances set forth in paragraph 4(b) of the Policy.
Accordingly, the Panel concludes that Complainant’s Complaint fails under both the second and third elements.
For the foregoing reasons, the Complaint is denied.
Georges Nahitchevansky
Sole Panelist
Date: November 19, 2020
1 The Panel went to the web page at the disputed domain name and received a parked page with links entirely in English, suggesting that the language and links differ depending on the location of the web user.