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Société des Hôtels Méridien v. Mr. Bekir Dogan [2005] GENDND 631 (12 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Crédit Industriel et Commercial S.A v. Name Privacy

Case No. D2005-0457

1. The Parties

The Complainant is Crédit Industriel et Commercial S.A, Paris, France, represented by Meyer & Partenaires, France.

The Respondent is Name Privacy, Labuan, Malaysia.

2. The Domain Names and Registrar

The disputed domain names <filbanques.com> and <filbanue.com> (hereinafter also referred to as the “Domain Names”) have been registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2005. On April 27, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On April 27, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent was 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 (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 May 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2005.

The Center appointed Alfred Meijboom as the Sole Panelist in this matter on June 1, 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 a French banking group with more than three million clients and 1,846 branches in France. Besides, the Complainant has an international presence in 39 countries worldwide, amongst which Malaysia.

The Complainant offers Internet facilities through the online banking service named FILBANQUE. The service has been available since June 1998, under the domain name <filbanque.com>.

The Complainant holds the following French trademarks:

- FILBANQUE (92402299), registered since 1992, in classes 35, 36 and 42 for banking related goods and services;

- FIL BANQUE (92402297), registered since 1992, in classes 35, 36, 40, 42, 43, 44, 45 for banking related goods and services;

- FILBANQUE (013126064), registered since 2001, in classes 9, 16, 28, 41 and 42 for banking related goods and services;

- device mark FILBANQUE, registered since 2001, in classes 9, 16, 28, 35, 36, 38, 41 and 42 for banking related goods and services.

Documents filed by the Complainant show that the French device marks FILBANQUE (95553426 and 95553427) have been registered since 1995, in classes 35, 36 and 38 in the name of Compagnie Financière de CIC et de l’Union Europeènne SA, which according to the Complainant was its former name.

The Respondent holds the Domain Names, which were registered on March 1, 2005. The Domain Name <filbanue.com> is being used for diverting visitors to competing banks. The Domain Name <filbanques.com> is offered for sale and meanwhile is being used in connection with different kinds of links.

The Respondent registered the Domain Names anonymously as “Name Privacy”. The Respondent’s address is identical to the address of the Complainant’s Malaysian branch, although the Respondent is not affiliated with the Complainant, nor has the Complainant authorized the Respondent to register and use the Domain Names.

The Respondent’s email details, on the other hand, correspond to the holder details of many more domain names, some including French company names or misspellings thereof.

5. Parties’ Contentions

A. Complainant

According to paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Names, the Complainant is required to prove that the three elements mentioned below are met. The Complainant makes the following assertions with respect to these elements:

(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

The Complainant contends that the Domain Name <filbanques.com> is the plural of its FILBANQUE trademark and is phonetically identical and visually very similar. The Domain Name <filbanue.com> only differs slightly from the FILBANQUE trademark: the “Q” is missing. “Filbanue” has no specific meaning and the misspelling does not have any self distinctiveness.

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and

The Complainant contends that the Respondent is not currently nor has ever been known under the terms “filbanue” or “filbanques”. The Respondent is not a subsidiary, branch nor correspondent of the Complainant. Furthermore, the Respondent does not carry out any business with the Complainant nor is the Respondent related to the Complainant’s business in any way. The Complainant has never provided the Respondent with a license nor has it ever authorized the Respondent to use its trademarks or to acquire the Domain Names.

(iii) the Domain Names were registered and are being used in bad faith.

The Complainant contends that the Respondent was well aware of the existence of FILBANQUE at the time of registering the Domain Names. The Complainant considers the fact that the Respondent has not revealed its identity as a sign of bad faith. Furthermore the Complainant states that the Respondent has been clearly identified as a cyber squatter, considering the number of infringing domain names he holds. Therefore the Complainant is of the opinion that the Respondent is undoubtedly engaged in a pattern of such conduct. Lastly the Complainant asserts that the Domain Names have primarily been registered for the purpose of attracting internet users for commercial gain to various websites by creating a likelihood of confusion between the Complainant’s trademark and the source, sponsorship, affiliation and endorsement of the Respondent’s websites.

B. Respondent

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

6. Discussion and Findings

Because the Respondent did not submit any reply, the Panel shall proceed to a decision on the Complaint pursuant to paragraph 14(a) of the Rules.

A. Identical or Confusingly Similar

The Complainant has several French trademark registrations for FILBANQUE registered for banking related goods and services. The Panelist finds that the Complainant has rights in the FILBANQUE trademarks.

For the purpose of assessing whether the Domain Names are identical or confusingly similar to the FILBANQUE trademarks in which the Complainant has rights, the “.com” suffix is disregarded, it being a necessary component of a domain name. The relevant parts of the Domain Names are “filbanue” and “filbanques”. The term “filbanue” only differs by one letter from the Complainant’s FILBANQUE trademarks and can easily result from a typographical error in typing FILBANQUE. The term “filbanques” is the plural of the Complainant’s FILBANQUE trademarks. Consequently the Panelist considers “filbanue” and “filbanques” to be very similar to FILBANQUE and as a result thereof finds the Domain Names to be confusingly similar to the Complainant’s FILBANQUE trademarks.

B. Rights or Legitimate Interests

The Complainant has stated that it is not affiliated with the Respondent in any way and that it has not authorized the Respondent to register the Domain Names. The websites behind the Domain Names do not seem to contain any suggestion of a legitimate right to use the Domain Names. Furthermore there is no evidence that the Respondent is commonly known as “filbanue” or “filbanques” or a similar name. Neither is there any evidence of circumstances as described in paragraph 4(c) of the Policy or any other circumstances which could indicate that the Respondent has any rights or legitimate interests in the Domain Names.

Respondent has not rebutted Complainant’s prima facie showing of lack of rights or legitimate interests. Consequently, the Panelist finds that the Respondent has no rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

Considering the fact that the Respondent has used the Domain Name <filbanue.com> for diverting visitors to the websites of competing banks and “filbanue” is – as far as the Panelist knows – not an existing word, plus the fact that the Respondent has registered the highly similar Domain Name <filbanques.com> as well, the Panelist considers that it is very likely that someone who was familiar with the FILBANQUE trademarks registered the Domain Names. Taking these circumstances into account, together with the fact that the Respondent has no rights or legitimate interests in the Domain Names and has used the websites for its own commercial interests, the Panelist concludes that the Domain Names were registered in bad faith.

The Complainant must also prove that the Respondent is using the Domain Names in bad faith. According to paragraph 4(b) of the Policy an indication for use in bad faith is if the Respondent is intentionally attempting to attract, for commercial gain, internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website.

The Panelist is satisfied with Complainant’s prima facie evidence of the likelihood that the Domain Names intentionally misspelled the Complainant’s trademarks, so as to attract users who wanted to visit Complainant’s domain name, but made a typographic error. This qualifies the Respondent a typosquatter, who, by using the confusingly similar Domain Names and without having rights or legitimate interests in the Domain Names, has tried to redirect internet users to his websites, generating traffic for his own commercial purposes. Subsequently, the Panelist finds that the Respondent uses and has used the Domain Names 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 names <filbanques.com> and <filbanue.com> be transferred to the Complainant.

Alfred Meijboom
Sole Panelist

Dated: June 15, 2005