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LE LIDO contre Olivier Salesse [2005] GENDND 328 (13 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banque Transatlantique S.A. v. DOTSCOPE

Case No. D2004-1100

1. The Parties

The Complainant is Banque Transatlantique S.A., Paris, France, represented by Meyer & Partenaires (hereinafter, the Complainant).

The Respondent is Dotscope, Van Nuys, California, United States of America (hereinafter, the Respondent).

2. The Domain Name and Registrar

The disputed domain name is <banquetransatlantic.com> (hereinafter, the Domain Name) and it is registered with eNom, Inc. (hereinafter, eNom).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (hereinafter, the Center) on December 23, 2004. On December 28, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On December 29, 2004, eNom 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, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (hereinafter, the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, 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 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2005.

The Center appointed Mr. Albert Agustinoy Guilayn (hereinafter, the Panel) as the sole panelist in this matter on February 9, 2005. 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 one of the oldest French private banks, being currently integrated within the Crédit Mutuel-CIC banking group. Since its foundation in 1881, it has rendered financial and wealth-management services to its clients which are both French and international.

At present, the Complainant has more than 45,000 clients which are spread in more than 170 countries. For the development of its international activities, the Complainant has incorporated subsidiaries in different countries such as the United States of America, the United Kingdom, Luxembourg and Singapore. In addition, the Complainant has also developed a banking network composed by 230 international correspondents, which allow it to render world-wide services to its clients.

In particular, the Complainant has consolidated its presence in the United States by incorporating a subsidiary (seated in Washington, D.C.) and having a correspondent in New York. At present, the Complainant is able to offer a wide range of services related to offshore banking, real estate and private investment to its US clients.

For the development of its activities, the Complainant has used the brand BANQUE TRANSATLANTIQUE since 1881. Moreover, the Complainant is the owner, inter alia, of the French nominative trademark BANQUE TRANSATLANTIQUE, no. 712417, filed on March, 1966 and covering services under class 36 of the International Nomenclator. The Complainant has annexed to the Complaint numerous materials showing an extensive use of the said trademark for the advertisement and rendering of its services.

The Complainant also owns the following domain names based on the name “Banque Atlantique”:

- <banquetransatlantique.com>, registered on January 29, 2003;

- <banquetransatlantique.net>, registered on February 12, 2003;

- <banquetransatlantique.org>, registered on February 12, 2003;

- <banquetransatlantique.info>, registered on February 12, 2003;

- <banquetransatlantique.fr>, registered on February 12, 2003.

The Complainant has linked these domain names to its web portal, which has served as an important commercial platform for years.

The Domain Name was registered by the Respondent on September 26, 2004, and it is currently linked to a web page that offers Internet search services, including a number of generic categories of contents, products and services. Among those categories, the web page linked to the Domain Name highlights several so-called “sponsored links” that, in some cases, connect with the websites of some of the Complainant’s French and international competitors. In addition, after visiting the website, the Panel has been able to find out that the contents of each of the above-mentioned categories are automatically selected taking into account the actual location of the Internet user (by means of the IP address it is using).

In accordance with the information provided by the WHOIS database, the Respondent seems to be a US entity called Dotscope, seated in Van Nuys (California).

The Complainant has been able to establish that another domain name, <dutchvirtualfinancecompanybv.com>, has been registered by another entity which, according to the WHOIS database, holds the same postal and telephone contact data as those corresponding to the holder of the Domain Name in dispute. Thus, it seems that the Respondent has been somehow connected with the registration of this other domain name which, even though it is deactivated at the moment of issuing this decision, was previously linked to the web page of a supposed Dutch financial company named Dutch Virtual Finance Company BV. Indeed, according to the documents filed by the Complainant, such a web page offered a number of financial and banking services to international customers.

No further information on the Respondent has been provided to the Panel, as the Respondent has neither responded the Complaint nor filed any kind of document during this proceeding.

On November 30, 2004, the Complainant sent the Respondent a cease-and desist letter. In that letter, the Complainant informed the Respondent about the existence of its BANQUE TRANSATLANTIQUE trademark, urging it to transfer the Domain Name, as its registration and use constituted a breach of the Complainant’s rights. Nevertheless, the Respondent did not reply in any manner to the above-mentioned letter from the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends in the Complaint that:

- The Domain Name is confusingly similar with the BANQUE TRANSATLANTIQUE trademark in which it has rights, as the only difference between them is the use of the word “Transatlantic” instead of “Transatlantique”. According to the Complainant, such a difference is not relevant since phonetically both words sound very similar, if not the same;

- The Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, the Complainant states that the Respondent is not known under the name “Banque Transatlantique” or any similar term. Moreover, a fair and legitimate non-commercial use is not made since the Domain Name is linked to a search website. In addition, in accordance with the Complainant, the Respondent seems to be connected with the banking-services sector. Thus, it is highly doubtful that it registered the Domain Name based on a fair interest, but rather due to its knowledge of the Complainant’s activities and trademarks;

- The Respondent was aware of the Complainant’s trademarks, which are well-known due to the extensive international use made by the Complainant and specially the activities the Complainant develops in the US (where the Respondent seems to be seated). The apparent involvement of the Respondent in the field of banking and financial services is another element that leads the Complainant to believe that the Respondent was aware of the existence of the BANQUE TRANSATLANTIQUE trademark;

- The Respondent registered and uses the Domain Name in bad faith as it currently confuses and diverts Internet users to the Respondent’s website. Moreover, after having tried to contact the Respondent by means of the information included in the Whois database, the Complainant was able to verify that such information was not correct.

- The Respondent might have been involved in an Internet fraud that took place in 2004. Therefore, a risk of deceptive use of the Domain Name is given in this case, as it could be very useful for the transmittal of false e-mail messages.

B. Respondent

The Respondent did not reply the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that the following three conditions are met in order to obtain the transfer of the Domain Name:

(a) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) that the Respondent does not hold rights or legitimate interests in respect of the Domain Name; and

(c) that the Domain Name has been registered and is being used by the Respondent in bad faith.

Consequently, the Panel shall further analyze the concurrence or not of the above-mentioned circumstances in the present case.

A. Identical or Confusingly Similar

According to the Policy, the first circumstance that must be established is that the Domain Name may be considered identical or confusingly similar to the BANQUE TRANSATLANTIQUE trademark in which the Complainant holds rights.

The comparison between the Domain Name and the Complainant’s trademarks shows two main differences between them:

- <banquetransatlantic.com> is composed by the word “transatlantic” instead of “transatlantique”.

- The Domain Name includes the “.com” suffix.

With regard to the first difference, the Panel considers that the Domain Name clearly relates to the Complainant’s BANQUE TRANSATLANTIQUE trademark, as the substitution of the word “transatlantique” into “transatlantic” is not significant enough to differentiate both words. As a matter of fact, the two words sound alike, if not the same, both in English and in French. Therefore, such a substitution may very well confuse an average Internet user, as other decisions have pointed-out regarding similar situations (see, for example, Microsoft Corporation v. Microsof.com a.k.a. Tarek Ahmed, WIPO Case No. D2000-0548; Yahoo! Inc. v. David Murray, WIPO Case No. D2000-1013; VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446; or Dunkin’ Donuts Incorporated and Dunkin’ Donuts USA, Inc. v. RandomThinkers and Patrick Huba, WIPO Case No. D2001-0104).

The second of the above-mentioned differences between the BANQUE TRANSATLANTIQUE trademark and the Domain Name is the inclusion of the “.com” suffix in the latter one. Such an inclusion is due to the current technical specificities of the Domain Name System (DNS). Therefore, said difference should not be taken into account in order to evaluate the identity or similarity between the Domain Name and the Complainant's trademark (see, for example, New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Inc., Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc. et al., WIPO Case No. D2003-0172).

As a consequence, the Panel considers that the Domain Name is confusingly similar to the BANQUE TRANSATLANTIQUE trademarks owned by the Complainant. Therefore, the condition set out by Paragraph 4(a)(i) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, Paragraph 4(c) of the Policy foresees a set of circumstances where the Respondent may be considered as holding said rights or interests. Those circumstances are:

- To have used the Domain Name or to have made demonstrable preparations for its use before any notice of the dispute in connection with a bona fide offering of goods and services; or

- To have been commonly known by the Domain Name, even when no trademark or service mark right has been acquired; or

- To make a legitimate non-commercial 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.

In the present case, none of the above-mentioned circumstances seems to apply. Indeed, the Respondent has not been authorized by the Complainant to use its BANQUE TRANSATLANTIQUE trademark. The linkage of the Domain Name with a website which serves only to redirect users to a search engine and unrelated third-party vendors cannot be considered as a bona fide offer of goods or services in the sense foreseen by the Policy. Such a conclusion has been adopted in other proceedings dealing with similar circumstances (see, for example, Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Emmis Television Broadcasting, LP d/b/a Khon-TV v. Henry Chan, WIPO Case No. D2004-0366; or Société Française du Radiotéléphone-SFR v. Modern Limited-Caymen Web Development, WIPO Case No. D2004-0385).

Additionally, it is important to outline the fact that the lack of action by the Respondent vis-à-vis the cease-and-desist letter sent to it by the Complainant and during this proceeding shows the Respondent’s clear absence of interest in proving the existence of a fair or legitimate interest on the Domain Name. Many decisions adopted under the Policy (see, for example, Adventis Pharmaceuticals Products, Inc. v. Nejat, WIPO Case No. D2003-0401; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465; or Harrods Limited v. Vision Exact, WIPO Case No. D2003-0723) have considered that by defaulting and failing to respond, the Respondent fails to offer the Panel evidence of any of the circumstances foreseen by Paragraph 4(c) of the Policy or any other evidence of its rights or legitimate interests on the Domain Name. The Panel considers that this approach is fully applicable to the present case, as the Respondent has not refuted any of the evidence and arguments provided by the Complainant regarding its lack of rights or legitimate interests in the Domain Name.

As indicated in the factual background, the Respondent seems to be somehow linked to the banking and financial services sector. Therefore, it is quite unlikely that the Domain Name was chosen by the Respondent by “coincidence”. On the contrary, it seems that the Respondent, due to its knowledge of the said sector, was well aware of the existence of the Complainant (an international bank which develops part of its activities in the US, where the Respondent is seated) as well as of its BANQUE TRANSATLANTIQUE trademark. Accordingly, in all probability, the Respondent did not register the Domain Name for a legitimate or fair purpose. Once again, the lack of response from the Respondent prevents this Panel from adopting another approach, as it has not been provided with any reasonable alternative argument.

Consequently, the Panel considers that the Respondent does not hold rights or legitimate interests in the Domain Name and that the second condition foreseen by the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The last of the elements foreseen by Paragraph 4(a) of the Policy is that the Complainant proves that the Respondent has registered and uses the Domain Name in bad faith.

In this regard, it is important to remind that both conditions are cumulative, as stated in many decisions adopted under the Policy (World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 or Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001, for example). Consequently, the Complainant must clearly show that: (i) the Domain Name was registered by the Respondent in bad faith and, (ii) the Domain Name has been used by the Respondent in bad faith.

The eventual concurrence of said circumstances in the present case shall be analyzed.

i. Registration of the Domain Name in bad faith

First of all, the Complainant must prove that, at the moment of registering the Domain Name, the Respondent was guided by bad faith purposes.

The Domain Name is based on the combination of the words “Banque” and “Transatlantic”. The combination of both words does not match neither in French nor in English, since each one is written in a different language. Moreover, the word “Banque” seems to be explicitly related to the banking sector (where the Complainant is an important player and where the Respondent seems to have experience). Consequently, the Panel is unable to find out how the Respondent could have registered the Domain Name in good faith, specially taking into account the fact that the Respondent seems to be somehow connected with the field of financial and banking services.

Given the above-mentioned circumstances, the only feasible possibility in this case seems to be that the Respondent registered the Domain Name in order to unfairly breach the Complainant’s rights on the BANQUE TRANSATLANTIQUE trademark. As a matter of fact, such a behavior would constitute a breach of Clause “Representations and Warranties” of the eNom’s registration agreement, which does expressly require the registrant to warrant that registration and use of the corresponding domain name does not infringe third parties’ rights.

Consequently, the Panel must consider that the Respondent registered the Domain Name in bad faith.

ii. Use of the Domain Name in bad faith

The Complainant considers that the Respondent’s use of the Domain Name may be deemed as a bad faith behavior as foreseen by the Policy. As previously stated, the Domain Name is linked with a website that offers Internet search services, divided into several categories of goods and services and with the corresponding results taking into account the actual location of each Internet user visiting the website. This is to say, the Domain Name does not contain a permanent and identified set of contents, but it is actually designed to offer the visitor a set of links to third-parties’ websites that, in some cases, are even competitors of the Complainant.

The Panel considers that such a use is far from being made in good faith. Indeed, taking into account the above-mentioned circumstances, the Panel considers that the Respondent is using the Domain Name basically for diverting Internet users for unfairly benefitting from the Complainant’s trademark for obtaining gains derived from sponsorship and advertising included in that website. Thus, the Respondent is unfairly obtaining revenues from the use of the Domain Name which relates to a trademark in which it has no rights (neither as its owner nor as a licensee).

This type of behavior has been repeatedly considered as a clear case of bad faith use in numerous decisions adopted under the Policy (see, for example, Daimler Chrysler Corporation v. Worshiping, Chrisler and CHR a/k/a Dream Media and a/k/a Peter Conover, WIPO Case No. D2000-1272; CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273; Lifetime Products Inc. v. IQ Management Corporation, WIPO Case No. D2004-0719; or Bank of America Corporation v. Internmos, NAF Case No. FA006000095092).

Taking into account the above-mentioned arguments, the Panel concludes that the evidence shown by the Complainant regarding the Respondent’s use of the Domain Name satisfies the requirements foreseen by the Policy, paragraph 4(a)(ii). Consequently, the Panel considers that the Complainant has proved that the Respondent registered and uses the Domain Name in bad faith.

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 name <banquetransatlantic.com> be transferred to the Complainant.

Albert Agustinoy Guilayn
Sole Panelist

Date: February 23, 2005