Compagnie Generale de Location d’Equipements and Societe Generale v; Kidder Mathews
WIPO Case No. D2023-5333
•21-03-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Compagnie Generale de Location d’Equipements and Societe Generale v.
Kidder Mathews
Case No. D2023-5333
1. The Parties
The Complainants are Compagnie Generale de Location d’Equipements and Societe Generale, France, represented by Valérie Perrichon – Avocatst, France.
The Respondent is Kidder Mathews, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cgifinancefr.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
| disputed domain names <cgifinancefr.com>, and <cgifinance-fr.com> on December 22, 2023. On December | The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) regarding two registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 30, 2024, the Center received a request from the Complaint to withdraw the disputed domain name <cgifinance-fr.com> from this proceeding, the Center continued the proceeding only regarding the disputed domain name <cgifinancefr.com>. The Complainant filed an amended Complaint regarding the disputed domain name <cgifinancefr.com> on February 1, 2024. |
| 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 February 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2024. The Respondent did not submit any response. |
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Accordingly, the Center notified the Respondent’s default on February 27, 2024.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on March 11, 2024.
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 Complainants are leading companies in the financial industry that belong to the same group. The
Complainant Societe Generale operates internationally in financial services for over 150 years, and currently
supports 25 million clients every day, with more than 117,000 staff, in 66 countries. The Complainant
Compagnie Generale de Location d’Equipements operates internationally in financial services for over 70
years as an independent company, and provides finance services under various brands, including the brand
CGI FINANCE, for boats, automobiles, and credit consolidation.
The Complainant Societe Generale owns various trademark registrations for the brand CGI FINANCE, including the European Union Trademark Registration No. 015899099 for CGI FINANCE, figurative, registered on February 7, 2017, in classes 35, and 36, hereinafter referred as the “CGI FINANCE mark”.
The Complainant Societe Generale further owns the domain name <cgifinance.fr> (registered on July 28,
2009), which resolves to its corporate website.
The disputed domain name was registered on October 11, 2023, and it is apparently inactive resolving to a blank page.
According to the Complainants’ allegations, the disputed domain name originally resolved to a parking page displaying promotional or pay-per-click (“PPC”) links in the field of finance. On November 10, 2023, the Complainants sent a cease-and-desist communication to GoDaddy, and after this communication, the original parking page linked to the disputed domain name was taken down.
5. Parties’ Contentions
A. Complainants
The Complainants contend that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, the Complainants contend that the disputed domain name is confusingly similar to their trademark Complainants’ country of origin and best marketplace. The addition of the letters “fr” increases the risk of confusion and the similarity with the Complainants’ domain name <cgifinance.fr> (used for their corporate website).
The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no relationship between the Parties and the Respondent has no authorization to use the CGI FINANCE mark. The disputed domain name originally pointed towards a parking website including PPC links in the field of finance, which was taken down after the Complainants’ cease and desist communication, and although it is
now apparently inactive, it is potentially very damageable, as it may be used in any type of phishing scam or
other fraud. In the field of finance, fraud is common, and the Complainants have already been victims of
various scams carried out under identical or similar domain names to their trademarks.
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The disputed domain name was registered and is being used in bad faith. The CGI FINANCE mark is reputed in the field of finance, at the least in France, and it is identically reproduced in the disputed domain name adding a reference to this country “fr”. The Respondent knew about the Complainants and the CGI FINANCE mark, and registered the disputed domain name in bad faith pointing to this reputed trademark to benefit from its reputation through a page with PPC links and/or to use it in any type of phishing scam or other fraud. The current apparent passive holding of the disputed domain name does not prevent a finding of bad faith.
The Complainants request the transfer of the disputed domain name to the Complainant Compagnie
Generale de Location d’Equipements.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
The Complainants have made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel
articulated, inter alia, in paragraph 10 of the Rules.
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainants’ trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
The Complainants have shown rights in respect of a trademark or service mark for the purposes of the
Policy, namely the CGI FINANCE mark. WIPO Overview 3.0, section 1.2.1.
The entirety of the CGI FINANCE mark is reproduced within the disputed domain name adding the letters “fr”, which are an indication for France. The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the CGI FINANCE mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
Although the addition of other terms here, the letters “fr”, may bear on assessment of the second and third elements, the Panel finds the addition of such letters do not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
Therefore, the Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with
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relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.
Having reviewed the available record, the Panel finds the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainants’ prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
The Panel notes that the Respondent’s name, its abbreviation, or acronym, shares no similarities with the terms included in the disputed domain name.
The Panel further notes that the disputed domain name is apparently inactive resolving to a blank page, and, according to the Complainants’ allegations its previously resolved to a parking page including PPC links in the financial sector, which does not represent a bona fide offering. WIPO Overview 3.0, section 2.9.
Nothing in the record indicates the existence of any rights or legitimate interests in the Respondent in respect of the disputed domain name.
The Panel further considers that the inherent confusing similarity of the disputed domain name with the
Complainants’ mark impede any bona fide legitimate use of the disputed domain name. The incorporation of
the CGI FINACE mark and the addition of the acronym for France “fr”, which is the country of origin of the
Complainants and the country where the CGI FINACE mark has acquired reputation, enhances the
confusion and/or affiliation and impedes to conceive any legitimate use of the disputed domain name.
WIPO Overview 3.0, section 2.5.1.
Furthermore, according to the Complainants’ allegations, the Panel considers that phishing scams and other type of frauds are common in the financial sector, and the disputed domain name is potentially harmful in this respect. Due to its confusing similarity with the CGI FINANCE mark and, even more importantly, with the
Complainants’ domain name <cgifinance.fr>, it may potentially be used for phishing scams, or other types of
fraud, which can never confer rights or legitimate interests under the Policy. WIPO Overview 3.0, section
2.13.1.
The Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
In the present case, the Panel notes the extensive presence of the Complainants and their CGI FINANCE mark over the Internet, and their reputation in the financial sector.
The Panel further notes that the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name, and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.
The Panel also notes that the Respondent concealed its identity in the registration of the disputed domain name.
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Additionally, the Panel notes that according to the Complainants’ allegations the disputed domain name was initially used to resolve to a parking page displaying PPC links in the field of finance, the same field where the Complainants and their trademark is reputed.
The Panel finds all these circumstances and the incorporation of the CGI FINANCE into the disputed domain name followed by the acronym for France, “fr”, precisely the Complainants’ country of origin and principal marketplace, show, in a balance of probabilities, the Respondent knew about the Complainants and their trademark when he registered the disputed domain name and targeted them when registering the disputed domain name.
The non-use or passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark in the financial field, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.
Additionally, due to the Complainants’ field of operation, in the financial services sector, the Panel considers that the disputed domain name may potentially be used in any type of illegal activity. Panels have held that the use of a domain name for illegal activity here, claimed phishing or other types of fraud, constitutes bad
faith. WIPO Overview 3.0, section 3.4.
Therefore, the Panel finds that the Complainant has established the third element of the Policy.
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 <cgifinancefr.com> be transferred to the Complainant Compagnie
Generale de Location d’Equipements.
/Reyes Campello Estebaranz/
Reyes Campello Estebaranz
Sole Panelist
Date: March 21, 2024
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