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Société des Hôtels Méridien v. Hank [2005] GENDND 442 (27 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Crédit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. LaPorte Holdings, Inc.

Case No. D2004-1110

1. The Parties

The Complainant is Crédit Industriel et Commercial S.A., Paris, France and Banque Scalbert Dupont S.A., Lille, France, represented by MEYER & Partenaires, France.

The Respondent is LaPorte Holdings, Inc., Los Angeles, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <filbanquebsd.com>, <filebanque.com> and <filbank.com> are registered with NameKing.com, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on December 31, 2004, and in hardcopy on January 3, 2005. On January 4, 2005, the Center transmitted by e-mail to NamKing.com a request for Registrar verification in connection with the domain names at issue. On January 20, 2005, NameKing.com transmitted by e-mail 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 26, 2005. 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 February 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2005.

The Center appointed Christos A. Theodoulou as the sole panelist in this matter on March 17, 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 Crédit Industriel et Commercial S.A. is a French banking group with many branches both in France and worldwide, of which the other Complainant, Banque Scalbert Dupont S.A. is part. The Complainant is also known in the U.S.A., where the Respondent is located, since the Complainant has had an active branch in New York for several years.

“Filbanque” is the online banking service of the whole Crédit Industriel et Commercial S.A. group; through the “Filbanque” website, the group’s clients have access to their bank accounts and may also proceed to other activities, such as stock transactions.

Crédit Industriel et Commercial S.A. is the owner of domain names <filbanque.tm.fr> and <filbanque.com> and Banque Scalbert Dupont S.A. is the owner of the website “www.bsd.tm.fr”. Moreover, Crédit Industriel et Commercial S.A. has owned French trademark registration no. 92 402 299 for “FILBANQUE” since 1992 and Banque Scalbert Dupont S.A. has registered “B.S.D.” as being its intellectual property with French nominative trademark no. 1 393 874 since 1987. Some complimentary research on the Internet was necessary to verify if Crédit Industriel et Commercial S.A. is indeed the owner of the French registration for “FILBANQUE”, since the evidence provided by the Complainant showed the owner to be “Compagnie Financière de CIC et de l’Union Européenne (société anonyme)” instead and was, therefore, unsatisfactory in the eyes of the Panel. This further investigation was conducted ex proprio motu by the Panel, as has been done in multiple WIPO cases before [see e.g. Société des Hôtels Meridien SA v. United States of Moronica, WIPO Case No. D2000-0405; Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648; Novus Credit Services Inc. v. Personal, WIPO Case No. D2000-1158; NCRAS Management, LP v. R. Cole, WIPO Case No. D2001-0554; DR. S.A. v. aunomdelarose.com, WIPO Case No. D2001-0666; Crown Audio Inc., D/B/A Crown International v. Yuri Gutsatz Réalisation, WIPO Case No. D2001-0722; Fortuneo v. Johann Guinebert, WIPO Case No. D2001-0781; La Chemise Lacoste v. M. Lee Ji Hong, WIPO Case No. D2001-0956; AT&T Corp. v. Linux Security Systems, WIPO Case No. DRO2002-0002; Fresh Intellectual Properties, Inc. v. Vitty, Inc., WIPO Case No. DBIZ2002-00055; Viacom International Inc. v. Domains For Sale Sp, WIPO Case No. D2002-0481; Ltd. Commodities, Inc. v. Nadia Slepko, WIPO Case No. D2002-0554; Pebble Beach Company v. Telmex Management Services, WIPO Case No. D2002-1068; PepsiCo, Inc. v. Phayze Inc., WIPO Case No. D2003-0693; FleetBoston Financial Corporation v. Albert Jackson, WIPO Case No. D2003-0915; ePocrates, Inc. v. Ling Shun Shing, WIPO Case No. D2004-0082; Harrah’s License Company, LLC v. FHC Entertainment, WIPO Case No. D2004-0989].

As for the Respondent, LaPorte Holdings, Inc., according to the evidence provided by the Complainant, it is an entity based in Los Angeles, California, U.S.A. Its exact activities are unknown to both the Complainant and the Panel. It may be mentioned, however, that the Respondent has been found to have registered and used domain names in bad faith in prior WIPO decisions. Based on the above, it may be said that the Respondent is active in the field of domain name registrations.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its trademarks, that the Respondent has no legitimate interests or rights in the disputed domain names, and that the Respondent registered and is using the disputed domain names in bad faith.

B. Respondent

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

6. Discussion and Findings

Before engaging itself into the usual threefold discussion of Paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue related to the default of the Respondent. The implications of a default in this case are obvious: since the Complainant has the burden of proof, according to Paragraph 4(a) of the Policy (“In the administrative proceeding, the Complainant must prove that each of these three elements are present”), the Panel may not just grant the Complainant’s request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy [see Européenne de Traitement de l’Information v. Horoshiy, Inc., WIPO Case No. D2004-0706; FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881].

The Panel shall now proceed with the analysis of the evidence in this case, based on the three elements of Paragraph 4(a) of the Policy.

A. The contested domain names are identical or confusingly similar to trademarks, in which the Complainant has rights.

(i) <filbanquebsd.com>

As mentioned before, Crédit Industriel et Commercial S.A. is the owner of “FILBANQUE” trademark and Banque Scalbert Dupont S.A. is the owner of “B.S.D.” trademark. The above disputed domain name is clearly a combination of these trademarks. The Panel is of the opinion that, since the Complainant has to be seen as one entity, i.e. the banking group of Crédit Industriel et Commercial S.A. of which Banque Scalbert Dupont S.A. is part, the Complainant has rights on both the above-mentioned trademarks. In this respect, the disputed domain name <filbanquebsd.com> is not just similar, but also identical to the combination of the two marks.

The incorporation of the totality of one of the marks in the disputed domain name would suffice to create a real and strong likelihood of confusion and, consequently, to establish the criterion of similarity for purposes of the Policy [see e.g. Eauto, L.L.C. v. Eauto Parts, WIPO Case No. D2000-0096; Komatsu Ltd. v. RKWeb Ltd., WIPO Case No. D2000-0995; FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881].

(ii) and (iii) <filebanque.com> and <filbank.com>

These two domain names should be examined together, since they are both based on the same rights, the ones derived by French trademark registration “FILBANQUE”.

It is obvious, both from the Complainant’s assertions, but also from the bare facts, that the Respondent has “played” with the pronunciation and the spelling of the Complainant’s mark in order to create a confusion to the Internet users. Indeed, “fil” and “file” in French sound the same, in the same way that the English “bank” sounds like the French “banque”. The mere misspelling might as well be considered as a factor of confusion in itself, since a typing error could lead the average Internet user to one of the Respondent’s websites and distract him/her from the ones of the Complainant [see e.g. LouisVuitton v. Net-Promotion, WIPO Case No. D2000-0430 for <luisvuitton.com>; Xerox Corp. v. Stonybrook Investments, Ltd, WIPO Case No. D2001-0380 for <zerox.com>; The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103 for <nasdasq.com>].

In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain names are identical, or at least confusingly similar to the Complainant’s trademarks.

B. The Respondent has no rights or legitimate interests in the contested domain names.

Under Paragraph 4(c) of the Policy any of the following circumstances, if found by the Panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s rights to and legitimate interest in a domain name:

I. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute: in this case, the Respondent seems to be using the trademarks of the Complainant as domain names for selling services similar to those offered by the Complainant or for diverting to other websites doing the same, in the absence of any sort of agreement or relation between them; this behavior may not be viewed as a bona fide offering of services, as it has already been decided in Crédit Suisse Group v. Kingdomdatanet Networks, Inc., WIPO Case No. D2004-0846.

II. An indication that the registrant has been commonly known by the disputed domain name, even if it has acquired no trademark rights: there is no such indication from the record.

III. Legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue: as shown by the Complainant in its submissions, the Respondent – at least back in December 2004 when the case was being prepared for filing with the Center – was using hyperlinks on the disputed websites in order to divert consumers to other websites offering banking and financial products and/or services. This misleading diversion might also tarnish the trademarks and brand image of the Complainant.

As a conclusion on this point, the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. The Respondent registered and used the contested domain names in bad faith.

The Complainant’s argumentation aims to establish only one of the circumstances mentioned in Paragraph 4(b) of the Policy, which serve to prove the Respondent’s bad faith: the intentional attempt to attract Internet users to its website(s) for commercial gain.

First of all, it is to be admitted without any doubt that neither the combination of the “FILBANQUE” and “B.S.D.” trademarks nor the misspelling of the first one may have possibly been made randomly. It is obvious, mainly from the categories of hyperlinks used by the Respondent on the litigious websites (banking and financial), that the latter was well aware of both the Complainant’s identity and activities. As to commercial gain, it seems evident that the Respondent made continuous profit from affiliate sponsors and advertising on the disputed websites by using, of course, the reputation of the Complainant’s trademarks.

Even though the above would be enough to prove the Respondent’s bad faith, another important fact to be observed with regard to the Respondent: as mentioned before and is also briefly referred to by the Complainant in its submissions, is that LaPorte Holdings, Inc., is an entity very often sought after for similar cases of cyber- or typosquatting and it has, on every occasion, lost because of its bad faith. See Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0707; Medco Health Solutions, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0800; Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849; Nokia Corporation v. LaPorte Holdings, Inc., WIPO Case No. D2004-0851; HBH, L.P. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0864; Société Française du Radiotéléphone – SFR v. LaPorte Holdings, Inc., WIPO Case No. D2004-0926; Karl’s Sales and Services Company, LLC v. LaPorte Holdings, Inc., WIPO Case No. D2004-0929; Fuji Photo Film U.S.A. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0971; Knight Transportation Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1022; Robert H. Ham Associates, Limited v. LaPorte Holdings, Inc., WIPO Case No. D2004-1051; CavinCare Private Limited v. LaPorte Holdings, Inc. and Horoshiy, Inc., WIPO Case No. D2004-1072; AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088; Specialty Store Services, Inc. v. Horoshiy, Inc. & LaPorte Holdings, Inc., WIPO Case No. D2005-0015; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. LaPorte Holdings, Inc., WIPO Case No. D2005-0030].

The Respondent is to be considered to be engaged in a pattern of such conduct and, therefore, to have registered the disputed domain names in bad faith, in the sense of Paragraph 4(b) of the Policy.

Consequently, the Panel holds that last element of the Policy is met.

7. Decision

The Complainant has successfully proved that the contested domain names are identical or confusingly similar to several trademarks in which it has rights, that the Respondent has no rights or legitimate interests in the contested domain names and that the Respondent registered and used the contested domain names in bad faith.

As a result, and in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names at issue, <filbanquebsd.com>, <filebanque.com> and <filbank.com>, be transferred to the Complainant.

Christos A. Theodoulou
Sole Panelist

Dated: March 31, 2005