Westmore · UDRP DecisionCetelem.credit
The Panel ordered transfer of <cetelem.credit>. It found the domain confusingly similar to the Complainant’s coined CETELEM mark, that the Respondent lacked rights or legitimate interests, and that the domain was registered and used in bad faith. The Panel relied particularly on the mark’s reputation in France and the European Union, the Respondent’s location in France, the exact reproduction of CETELEM with the directly relevant “.credit” extension, and the domain’s redirection to a domain-name marketplace for commercial purposes.
The timeline behind cetelem.credit
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
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This decision illustrates how an exact-match domain combining a coined financial-services mark with a semantically aligned new gTLD can strengthen, rather than reduce, the inference of targeting. The domain’s marketplace redirection, the Respondent’s location in the jurisdiction where the mark was well known, and the absence of any rebuttal were central to the transfer.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION BNP Paribas Personal Finance v. MYDNS.STORE Case No. D2018-2352 1. The Parties The Complainant is BNP Paribas Personal Finance of Paris, France, represented by Nameshield, France. The Respondent is MYDNS.STORE of Nancy, France. 2. The Domain Name and Registrar The disputed domain name <cetelem.credit> is registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2018. On October 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 24, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 24, 2018. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2018. The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on November 27, 2018. 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 BNP PARIBAS PERSONAL FINANCE (the Complainant) is a company which offers a complete range of loans for private individuals to support them in their projects. As a 100 percent subsidiary of BNP PARIBAS GROUP, and with EUR 91 billion of outstanding loans managed and EUR 1.543 million of net profit before tax, BNP PARIBAS PERSONAL FINANCE is among the leaders in personal financing in France and in the European Union through its consumer credit and home loan activities The Complainant is the owner of several trademarks CETELEM, such as: - The international trademark CETELEM No. 528169 registered on August 25, 1988 and renewed; - The international trademark CETELEM No. 647740 registered on September 4, 1995 and renewed; - The international trademark CETELEM No. 1321480 registered on August 4, 2016. The Complainant contends that it is also the owner of several domain names consisting of CETELEM, such as <cetelem.fr>, registered in 1995, and <credit-cetelem.com> registered in 2007. The disputed domain name <cetelem.credit> was registered on February 7, 2018, using a Privacy service, and redirects to the homepage of the domain marketplace at “www.domainnamesales.com”. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name <cetelem.credit> is identical to the trademark CETELEM. Indeed, the disputed domain name includes in its entirety the Complainant’s trademark without any adjunction of letter or word. The new generic Top-Level Domain (“gTLD”) “.credit” does not serve to distinguish the disputed domain name from the CETELEM trademark, which is the distinctive component of the disputed domain name. It is well established that merely adding a gTLD to a trademark is not sufficient to distinguish a domain name from a trademark. On the contrary, the addition of the new gTLD “.credit” increases the likelihood of confusion, as the Complainant uses the CETELEM trademark to offer its clients a wide range of financial products, personal loans, revolving loans with or without a credit card, car loans or for work, live or at the point of sale. The Complainant asserts that the Respondent is not known under the disputed domain name. The Complainant contends that the Respondent is not affiliated with it nor authorized by it in any way to use the trademark CETELEM. The Complainant does not carry out any activity for, nor has any business with the Respondent. Moreover, the disputed domain name redirects to the domain name marketplace at “www.domainnamesales.com”. Thus, the Complainant contends that the Respondent has registered the disputed domain name <cetelem.credit> with the aim to divert Internet traffic initially destined to the Complainant by creating a likelihood of confusion and by trading on the reputation of the Complainant’s trademark CETELEM. Besides, the content of the website is unrelated to the disputed domain name. The Complainant claims this does not constitute a bona fide offering of goods. The Complainant contends that the choice of the new gTLD extension “.credit” is even likely to increase the likelihood of confusion with the Complainant’s trademark CETELEM, since it suggests that the disputed domain name leads to an official website of the Complainant, specialized in loans. The term “cetelem” does not have any meaning, except in relation with the Complainant. All results to a search on “cetelem” on a search engine are related to the Complainant and to its CETELEM trademark. Furthermore, the disputed domain name resolves to the domain names marketplace at “www.domainnamesales.com”. The Complainant contends that the Respondent registered and is using the disputed domain name to divert users, presumably for commercial gain, which is evidence of bad faith under Policy. Consequently, the Complainant contends that the Respondent has registered the disputed domain name <cetelem.credit> and is using it in bad faith. The Complainant requests the Panel that <cetelem.credit> be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has submitted evidence of its registered CETELEM trademark rights in other countries than France. The CETELEM trademark is a coined trademark, which is well known in France for credit services. The disputed domain name incorporates entirely the Complainant’s CETELEM trademarks. The new gTLD extension “.credit” is descriptive and in direct relation with the services offered under the CETELEM trademark. The Panel finds that the disputed domain name <cetelem.credit> is confusingly similar to the Complainant’s CETELEM trademarks. The condition of paragraph 4(a)(i) of the Policy has therefore been satisfied. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial 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. The Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the disputed domain name. The Respondent is not known under the disputed domain name and has not been licensed or authorized to use the CETELEM trademark or to register the disputed domain name. The disputed domain name resolves to a website which redirects to the domain name marketplace at “www.domainnamesales.com”, which is a proof of use for commercial purposes. In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, which the Respondent has not rebutted. The condition of paragraph 4(a)(ii) of the Policy has therefore been satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name. It provides that: “For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.” Given the well-known character of the CETELEM trademarks in France and in the European Union, the Panel finds that the Respondent could not ignore the Complainant’s rights in the CETELEM trademark when it registered the disputed domain name, as the Respondent is domiciled in France. Furthermore, the entire reproduction of the Complainant’s CETELEM trademark under the “.credit” extension proves that the Respondent targeted the Complainant when it registered the disputed domain name. The choice of this extension aims at strengthening the likelihood of confusion with the Complainant’s CETELEM trademarks. The Panel finds that the disputed domain name was registered in bad faith with the Complainant in mind, to disrupt the Complainant’s activities, by creating a likelihood of confusion with the Complainant’s CETELEM trademark. With regard to the use of the disputed domain name, it currently resolves to domain name market place “www.domainnamesales.com”, which evidence that the Respondent is using the disputed domain name to attract for commercial gain Internet users to its website as specified in paragraph 4(b)(iv) of the Policy. Moreover, offering credit services is a regulated activity and a domain name such as <cetelem.credit> should only be used by an entity that complies with this regulation. For all the above reasons, the Panel is of the opinion that the Respondent’s use of the disputed domain name satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name was registered and is being used in bad faith by the Respondent. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <cetelem.credit> be transferred to the Complainant Marie-Emmanuelle Haas Sole Panelist Date: December 11, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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