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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Credit Industriel et Commercial S.A. and Confйdйration Nationale du Credit Mutuel v. Spiral Matrix
Case No. D2006-0271
1. The Parties
The Complainants are Credit Industriel et Commercial S.A. and Confйdйration Nationale du Credit Mutuel, both of France and both represented by Meyer & Partenaires, Strasbourg, France.
The Respondent is Spiral Matrix, Eldoret, Kenya.
2. The Domain Names and Registrar
The disputed domain names <cicenterprise.com>, <creditmutuelocean.com> and <filban.com> are registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2006. On March 6, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On the same date, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative 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 March 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2006.
The Center appointed Adam Samuel as the sole panelist in this matter on April 19, 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.
4. Factual Background
The three domain names in dispute were registered on July 21, 2005, (<cicenterprise.com>), August 6, 2005 (<creditmutuelocean.com>), and August 12, 2005 (<filban.com>).
The first Complainant is a French banking group with branches in a number of different countries around the world. It uses CIC as a common acronym and trade name. It offers Internet facilities through its online banking service, named “Filbanque” which it has offered since 1998, through the domain name, <filbanque.com>.
The first Complainant registered the trademark C.I.C. in 1976, in France, renewing it in 1986 and 1996. It has registered the trademark CIC BANQUES in 1991, renewing it in 2001. It has a trademark registration for FILBANQUE that it last renewed in 2002.
The second Complainant offers banking and insurance services in France. Its domain name <creditmutuel.com> describes those services. Its western France subsidiary, Credit Mutuel Ocean has been registrant of the domain name <cmocean.fr> since 1998.
The second Complainant owns trademark registrations for CREDIT MUTUAL dating back to 1988. One of the second Complainant’s branches, Fйdйration du Credit Mutuel Ocean has owned a trademark registration for CREDIT MUTUEL OCEAN CMO since July 1999.
In 1998, the Complainants merged to form the Group Credit Mutuel-CIC.
On October 26, 2005, the Complainants’ trademark attorneys wrote to the Respondent asking it to transfer the domain names in dispute to the Complainants. They did not receive a reply to this letter and e-mail.
5. Parties’ Contentions
The domain name, <cicenterprise.com> is confusingly similar to the first Complainant’s trademark CIC, which is reproduced in the domain name with the generic word “enterprise” added to it. The mere addition of a generic or descriptive word to a trademark does not prevent a domain name from being confusingly similar to the trademark. The domain name, <cicenterprise.com> provides hyperlinks to banking and financial services providers.
The domain name, <filban.com> is confusingly similar to the first Complainant’s trademark FILBANQUE reproducing as it does the first six letters of the trademark. Again, the domain name provides hyperlinks to banking and financial services providers.
Filban has no independent meaning in English or French. Considering the other domain names that seem to refer to the two other members of the same banking group, one must assume that the domain name, <filban.com> is aimed at diverting traffic from people seeking the “Filbanque” service of the first Complainant.
The second Complainant claims that this domain name is confusingly similar to its trademark CREDIT MUTUEL, which is reproduced at the start of the domain name. The addition of the word “ocean” to the trademark adds to the confusion because it identifies the domain name with the second Complainant’s western France subsidiary’s name.
As regards <creditmutuelocean.com>, the Respondent could not have selected the second Complainant’s subsidiary’s name randomly. It must have been done to attract users seeking the website associated with the subsidiary concerned.
All the domain names in issue
The Complainants argue that the Respondent has no rights or legitimate interests in any of the domain names in question. The Respondent has no connection with the Complainants’ business. The Respondent is not known nor has it ever been known by the names “CIC”, “CICenterprise”, “Credit Mutuel”, “Credit Mutuel Ocean”, “Filbanque” or “Filban”. The Complainants have not licensed the Respondent to use or apply for registration of the domain names in issue.
The domain names have been registered to take advantage of the Complainants’ renown in order to divert Internet users to competing websites through a “pay-per-click” domain parking solution. The Respondent must have known of the Complainants’ trademarks since the company’s names are well known.
The Complainants further contend that many of the hyperlinks on the domain names in question relate to banking products or services indicating clearly that the Respondent was aware of the Complainants’ activities. It can be deduced from this that the names were selected to divert the Complainants’ customers to the Respondent’s website and through it to companies that would pay it by pay-for-clicks. The Respondent has registered the disputed domain names only for the purpose of taking advantage of Internet traffic from Internet users seeking the Complainants’ products and services on the Internet.
The Respondent also has a lengthy history of cybersquatting as indicated by UDRP domain name cases reported in the past.
The Complainants claim that the Respondent uses the domain names in issue to divert Internet users to parking webpages on which several hyperlinks are displayed, some of which lead to hyperlinks in French covering banking and financial services. By clicking on the hyperlinks, users are led to websites of businesses that compete with the Complainants.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Under the Policy, the Complainants must prove that
(i) the domain names are identical or confusingly similar to a trademark or service mark in which they have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The domain name, <cicenterprise.com> is confusingly similar to the first Complainant’s trademark CIC, which is reproduced in the domain name with the generic word “enterprise” added to it. The mere addition of a generic or descriptive word to a trademark name does not prevent a domain name from being confusingly similar to the trademark.
In Barclays Bank PLC v. Robert Cutler, WIPO Case No. D2004-0519, the panelist said of the addition of “business” to a trademark:
“There can be no serious dispute that the prefix “BARCLAYCARDBUSINESS” is confusingly similar to the word mark “BARCLAYCARD” which the Complainant has registered”.
The domain name, <filban.com> is confusingly similar to the first Complainant’s trademark FILBANQUE reproducing as it does the first six letters of the trademark. The word “filban” has no meaning in French or English. In auditory terms, there is only one consonant sound missing from the domain name for it to reproduce the trademark concerned.
The domain name, <creditmutuelocean.com> is confusingly similar to its trademark CREDIT MUTUEL, which is reproduced at the start of the domain name. The word “ocean” is a word without any obvious extra meaning except to identify a subsidiary of the second Complainant. In Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338, the panelist said:
“The Panel is satisfied that the domain name <volvooceanrace.com> is confusingly similar to the registered trade mark ‘VOLVO’ which falls into the category of a ‘famous mark’ as one of the best known automobile and vehicles trade marks in the world.”
In that case, Volvo was associated with an ocean race. Here, the second Complainant has a subsidiary with the name “ocean” added to its name.
B. Rights or Legitimate Interests
The Respondent is not called any of the domain names in question or by a similar name and does not appear to trade under those names. There is no evidence that the owners of the trademarks in question, the Complainants, have authorized it to use the trademarks concerned. The Respondent has never asserted any rights or legitimate interests in the name. For these reasons and the on the basis of the case file, notably the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain names.
C. Registered and Used in Bad Faith
The domain name <cicenterprise.com> currently links to a website promoting mainly holidays but also some financial services products and services. The website gives no indication that the site has no connection with the Complainant.
The domain name <filban.com> currently links to a website promoting a variety of lifestyle products and services including those relating to financial services.
The domain name, <creditmutuelocean.com> currently links to a website promoting mainly financial services and banking-related products and services although it also contains links to lifestyle and travel sites.
Of the three trademarks in question, two are reasonably well known even outside France. “Filban” has no independent meaning and must be aimed at people who mistype “filbanque”. It seems highly likely that the Respondent knew that it was registering the domain names in issue in probable breach of a trademark. At best, it closed its eyes to the possibility.
The Respondent is using the Complainants’ trademarks to attract visitors to a website to profit, presumably through “click-throughs” to a number of other websites. It is irrelevant to the question of bad faith as to whether this is likely to be successful.
The Respondent’s motive in registering and using the sites seems to be either to attract Internet users for commercial gain or simply to disrupt the Complainants’ relationship with its customers or potential customers. Both these motives constitute evidence of registration and use in bad faith: paragraphs 4(b)(iii) and (iv) of the Policy.
The panel in Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar, WIPO Case No. D2006-0068 agreed that this type of behaviour constituted bad faith. It said:
“The Respondent is linking the disputed domain name to a portal site offering sponsored links. There, Internet users have access to a variety of goods and services, among them websites of the Complainant’s competitors. As described by the panelist in Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584, such websites offer a revenue program which pays domain name owners (in the particular case) ‘50% of all revenues generated from searches, popunders, popups, and exit popups’ in respect of users directed to its website through the participants domain name.
This leads the Panel to the conclusion that the Respondent registered the domain name at issue to divert Internet users seeking information about the Complainant’s products to a portal site offering sponsored links and to share in revenues obtained from the diverted traffic. Even if internet users would realize that the Respondent’s website is not connected with the trademark owner, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on sponsored links. In many previous UDRP decisions, in some of them the Respondent was involved as a respondent party as well, such exploitation of trademarks to obtain click-through commissions from the diversion of internet users was held of use in bad faith. …In the absence of any reply of the Respondent, the Panel can make a reasonable inference that the Respondent’s website generates revenue for the Respondent in that manner.”
As the Complainants point out, the Respondent has an extensive record of being involved in cybersquatting. In the following WIPO UDRP cases, domain name panels have made findings of bad faith against the Respondent: The Sutton Corporation v. Spiral Matrix, WIPO Case No. D2006-0167; PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189; Sociйtй des Hфtels Meridien v. Spiral Matrix / Kentech Inc., WIPO Case No. D2005-1196; Finaxa S.A. v. Spiral Matrix, WIPO Case No. D2005-1044; Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890; Staples, Inc., Staples The Office Superstore, LLC, and Staples Contract & Commercial, Inc. v. Spiral Matrix a/k/a Kenyatech.com a/k/a Kentech.com, WIPO Case No. D2006-0227; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., and Ermenegildo Zegna Corporation v. Spiral Matrix, WIPO Case No. D2006-0169; Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145.
This all supports a conclusion that the Respondent’s behaviour is not an accident but a concerted attempt to use the Complainants’ and other companies’ trademarks for its own gain. As the panel in Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar, WIPO Case No. D2006-0068 commented:
“…the Respondent has been involved as a respondent in at least 30 UDRP cases which ended all with the transfer of the disputed domain names to the complainants (see e.g. Deutsche Telekom AG v. Unasi Management, Inc. WIPO Case No. D2005-0423; Members Equity PTY v. Unasi Management, Inc, WIPO case No. D2005-0383; Gianfranco Ferre’ S.p.a. v. Unasi Inc., WIPO Case No. D2005-0622; L’Oreal Biotherm, Lancome Parfums et Bouteille & CIE v. Unasi Inc., WIPO Case No. D2005-0623; Red Bull GmbH v. Unasi Management, Inc., WIPO Case No. D2005-0304). Therefore, the Panel believes that the Respondent appears to be a prolific registrant of domain names which tends to support a finding that the registration of the domain name at issue was for the purpose of preventing the owner of the trademark from reflecting the trademark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct (paragraph 4(b)(ii) of the Policy).”
For all these reasons, the Panel concludes that the domain names in dispute have been registered and are being used in bad faith.
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, <cicenterprise.com>, <creditmutuelocean.com> and <filban.com> be transferred to the Complainant.
Date: April 23, 2006