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AB Svenska Spel v. Jesper Boulliant [2005] GENDND 666 (1 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caisse Nationale des Caisses d`Epargne et de Prevoyance v. LaPorte Holdings

Case No. D2005-0430

1. The Parties

The Complainant is Caisse Nationale des Caisses d`Epargne et de Prevoyance, Paris, France, represented by HAAS Société d`Avocats, France.

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

2. The Domain Names and Registrar

The disputed domain names <caissepargne.com> and <wwwcaisse-epargne.com> are registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2005. On April 22, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain names at issue. On April 25, 2005 NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. 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 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2005.

The Center appointed Peter G. Nitter as the sole panelist in this matter on June 3, 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 bank registered as a joint stock company of French law with a share capital of 6.905.865.632 Euros. The company is registered in the Registry of Commerce and Companies of Paris, having its registered office in Paris. Complainant belongs to the “Caisse d`epargne” Group. This Group has acquired international banks such as SanPaolo bank and the investment bank CDC-IXIS that has activities in Europe, Japan and USA. The Group is therefore present on the major international market. The Group has 26 million clients over the world, 4.700 agencies, 20 subsidiaries and 55.000 employees.

The domain names at issue were registered on November 10 and 11, 2004.

Trademarks held by Complainant are the following:

1) “Caisse d`epargne” a French trademark

2) “Caisse d`epargne” a French figurative trademark

3) “Caisse d`epargne” an International trademark

4) “Caisse d`epargne” an International figurative trademark

These trademarks were all registered in 1991.

5. Parties’ Contentions

A. Complainant

Confusingly similar

The domain name <wwwcaisse-epargne.com> is identical to the international trademark “Caisse d’epargne” owned by Complainant.

It is clear that “www” (which stands for World Wide Web in the Internet context) is not a distinctive element in the context of top level domain names and is merely a generic element that is part of the full syntax for entering the full URL of any domain name in a browser’s address or location field.

The domain name <caissepargne.com> is highly similar to the international trademark “caisse d’epargne”.

It is only one letter different from the Complainant’s mark. The deletion or addition of one letter is inadequate to make two trademarks dissimilar. The one letter difference of the domain name <caissepargne.com> renders it nonsensical, suggesting that the Respondent chose it specifically because it is confusingly similar to the Complainant’s well-known mark.

“Caisse d’epargne” is a strong mark which is entitled to a broad scope of protection.

Rights or legitimate interest

The Respondent did not use the domain names before the Complainant acquired rights in its mark.

“Caisse d`epargne” is not the Respondent’s personal name, and the Respondent is not publicly known under this name. According to the Whois database, the Respondent belongs to NameKing and is publicly known under its company name, LaPorte Holdings, and under the name NameKing.

The Respondent has no past or current affiliation with the Complainant concerning the domain names.

The Respondent is not one of the Complainant’s licensees and is in no way authorized to use the Complainant’s trademarks.

The Complainant is, with the companies belonging to its Group, the sole owner and user, of the above mentioned trademarks both in France and worldwide.

The Respondent does not provide sufficient justification of its use of the domain names.

Based on the above the Respondent has no rights or legitimate interests in the domain names.

Bad faith

The domain names were registered and are used in bad faith.

The merely adding “www” to the Complainant’s domain name is a deliberate attempt by the Respondent to exploit the typographical mistakes of Internet users when seeking the Complainant’s website. This qualifies as a form of “typo-squatting” which has been recognized as a bad faith use of a domain name under the Policy.

The trademark “caisse d’epargne” is composed of two French words, which have no meaning in English. In French they mean approximately “savings bank”.

The Caisse d`eparnge Group has international fame. The Respondent chose to register the two French words as domain names because the Respondent knew a famous company used them as a trademark.

The Respondent has been involved in a large number of cases under the UDRP.

Respondent’s activity consists in registering domain names similar to famous trademarks and to sell them to the trademark owners. In the cases involving Respondent WIPO decided to transfer the contested domain names to the Complainants.

The domain names at issue were registered in the aim of diverting the Complainant’s clients and of creating confusion with the domain name reserved by the Complainant. The domain names at issue direct users towards an American site referencing among others, websites linked to finance, home business, money and online banking. These websites offer the same services as the Caisse d’epargne Group. Complainant’s clients can believe that those services are proposed by the Caisse d’epargne Group. Consequently the Respondent harms the Complainant’s brand image.

The Respondent registered the domain names in order to make a commercial gain. Companies pay to be referenced on its website as sponsored links.

The elements mentioned prove that the domain names were registered and are used in bad faith.

B. Respondent

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

6. Discussion and Findings

The disputed domain names are <caissepargne.com> and <wwwcaisse-epargne.com>.

The Complainant is the owner of the registered trademark “Caisse d’epargne”.

The domain name <caissepargne.com> differs from the trademark with two letters “d” and “e”. The missing “e” in the domain name will not be noticed orally because there is another “e” with the same placing in the domain name. The fact that the “d” is included in the trademark and not in the domain name will make an oral difference, but the words will still be quite similar orally.

Both the domain name and the trademark consist of the two French words “Caisse” and “Epargne”. The missing “e” and “d” in the domain name is hard to notice also visually. A reason for this is that there is another “e” with the same placing in the domain name. The missing “d” between the two words is not enough to distinguish the domain name from the trademark visually.

The panel finds that the domain name <caissepargne.com> is confusingly similar to Complainant’s trademark.

The domain name <wwwcaisse-epargne.com> differs from Complainant’s trademark in two ways. Firstly it has “www” included as a prefix. Secondly it has a hyphen instead of the “d”.

The letters “www” has no distinguishing capacity in the context of domain names. Cf. WIPO Case No. D2000-0441 Reuters Limited v. Global Net 2000, Inc. A casual reader of the domain name may wrongly think that there is a period between the “www” and the succeeding word, and wrongly assume that the domain name is in fact comprised only of the succeeding word.

The replacement of the “d” with and hyphen makes the domain name and the trademark different only by one letter. This is an insignificant change for the purposes of the policy. Cf. WIPO Case No. D2004-0018 Staples, Inc., Staples Contract & Commercial, Inc., Staples The Office Superstore, Inc., v. John Sansone.

Based on this the panel finds that the domain name <wwwcaisse-epargne.com> is confusingly similar to Complainant’s trademark.

B. Rights or Legitimate Interests

The Panel has considered Complainant’s allegation that the Respondent does not have any rights or legitimate interests in respect of the domain names at issue. Since Respondent is in default, these allegations have not been contested, and the Panel finds it unlikely that Respondent could be in a position to claim any rights in the domain names at issue.

Because it is generally difficult for Complainant to prove the fact that Respondent does not have any rights or legitimate interests in the domain name at issue, while Respondent at the same time is given ample opportunity to demonstrate any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy, previous decisions under the UDRP have found it sufficient for Complainant to make a prima facie showing of its assertion.

The Panel finds that the circumstances mentioned and evidenced by Complainant establish a prima facie showing that Respondent has no rights or legitimate interests in the domain names at issue.

As Respondent has not at all demonstrated any of the three circumstances that constitute rights to or legitimate interests in the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy, the Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the domain names at issue.

C. Registered and Used in Bad Faith

Respondent’s registration of two domain names that only differs slightly, by one and two letters and the prefix “www”, from Complainant’s well-known trademark supports the inference that Respondent had actual knowledge of Complainant’s rights in the mark when registering the domain names. Cf. WIPO Case No. D2004-0018 Staples, Inc., Staples Contract & Commercial, Inc., Staples The Office Superstore, Inc., v. John Sansone, and the cases referred therein.

The Respondent’s registration and use of the disputed domain name is part of a pattern of conduct, since the Respondent is engaged in a pattern of registration of a series of well-known trademarks. Cf. WIPO Case No. D2004-0707 Krome Studios Pty, Ltd v. LaPorte Holdings, In. and WIPO Case No. D2004-0849 Societe des Hotels Meridien v. LaPorte Holdings, Inc. and the seven cases referred in the last mentioned decision. In each of these cases the Respondent has been found to have registered and used the disputed domain names in bad faith, and the result were transfers of the domain names. This evidences bad faith registration and use.

The domain names direct to websites offering similar services to those offered by Complainant. The Panel therefore finds that Respondent intentionally registered the domain names for commercial gain, since the Respondent’s domain names diverts Internet users who seek Complainant’s mark to Respondent’s commercial website.

On this basis the Panel finds that the domain names were registered and are used 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, <caissepargne.com> and <wwwcaisse-epargne.com> be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: June 7, 2005