ARBITRATION
AND
MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
Crédit Industriel et Commercial S.A. v. Moniker Privacy
Services / Charlie Kalopungi
Case No. D2010-1914
1. The Parties
The Complainant is Crédit Industriel et Commercial S.A. of Paris, France, represented by Meyer &
Partenaires, France.
The Respondent is Moniker Privacy Services / Charlie Kalopungi of Pompano Beach, United States of
Americ and of Seychelles, Seychelles.
2. The Domain Name and Registrar
The disputed domain name <filbanquel.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on
November 9, 2010. On November 10, 2010, the Center transmitted by email to Moniker Online Services,
LLC a request for registrar verification in connection with the disputed domain name. On
November 11, 2010, Moniker Online Services, LLC 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 November 22, 2010 providing the registrant and contact information disclosed by
Moniker Online Services, LLC, and inviting the Complainant to submit an amendment to the Complaint. The
Complainant filed an amended Complaint on November 24, 2010 adding Mr. Charlie Kalopongi, the person
subsequently identified as the registrant by Moniker Online Services, LLC and now appearing in WhoIs
registration details as such.
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(a) and 4(a), the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on December 1, 2010. In accordance with the Rules,
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paragraph 5(a), the due date for Response was December 21, 2010. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on December 23, 2010.
The Center appointed Simon Minahan as the sole panelist in this matter on January 12, 2011. 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 an entity in a French banking group which has an extensive network of branches in
France and an international network as well.
It holds registration for FILBANQUE, French nominative trademark n° 92 402 299 which was registered on
January 1992 in classes 35, 36 and 42. It also has registered trade marks as follows:
-
French figurative trademark FILBANQUE n° 95553426 registered on 13 January 1995 for classes 35,
36, 3;
-
French figurative trademark FILBANQUE n° 95553427 registered on 13 January 1995 for classes 35,
36, 38;
-
French nominative trademark FILBANQUE n° 01 3 126 064 registered on 15 October 2001 for classes
9, 16, 28, 41 and 42;
-
French figurative trademark FILBANQUE n° 013130040 registered on 7 November 2001 for classes 9,
16, 28, 35, 36, 38, 41 and 42.
5. Parties’ Contentions
A. Complainant
The Complainant claims that, via a subsidiary corporation, Euro Information, it operates on-line banking by
reference to the name “Filbanque” and in this undertaking it claims it has continuously operated web-banking
services under the following domain names since the following dates:
-
January 1998 for domain name created on 1996, <filbanque.tm.fr>
December 2004 for domain name created on 2004, <filbanque.fr>
June 2000 for domain name created on 1998, <filbanque.com>
July 2006 for domain name created on 2006, <filbanque.eu>
It further claims that Euro Information holds domain name registrations <filbanque.fr>, <filbanque.net> and
<filbanque.org>.
By reason of the aforementioned trade mark registrations, domain name registrations and continuous use of
the Filbanque brand in connection with its on-line banking enterprise since the 1990’s, the Complainant
contends it has trade mark rights and interest in the trademark FILBANQUE.
It further contends (with contentions supported by citations as indicated) that:
1.
the disputed domain name <filbanquel.com> is confusingly similar its trademark FILBANQUE and
constitutes a classic case of “typosquatting”: e.g.: ANOVO v. Moniker Privacy Services / Alexander
LERMAN, WIPO Case D2008-1049; Zedge LTD v. Moniker Privacy Services / Aaron Wilson, WIPO
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Case D2006-1585;
2.
the Respondent Moniker Privacy Services is a known provider of anonymous registration services
which has been involved in several previous UDRP cases where its role has been subject to adverse
remark and transfers or cancellations have resulted;
3.
the Respondent Charlie Kalopungi has been the subject of a previous UDRP case as a joint
respondent with the Respondent Moniker Privacy Services which case involved a finding of
“typosquatting” which case resulted in cancellation of the subject domain name: Autosales
Incorporated dba Summit Racing v Moniker Privacy Services/Charles Kalopungi, WIPO case
D2010-1081;
4.
the Respondent is not licensed or authorised by it to make use of its trade mark and has no
demonstrable history of use of or association with the trade mark FILBANQUE and accordingly has no
rights or legitimate interests in the said domain name;
5.
the Respondent must have known of the Complainant’s rights in the FILBANQUE trade mark by
reason of the extensive nature of the Complainant’s commercial activity by reference to it and that
registration therefore was taken out in bad faith: e.g.: Credit Industriel et Commercial S.A. v.
WhoisGuard Protected, WIPO Case No. D2006-1162;
6.
the use of the disputed domain name, which resolves to a web site which includes hyperlinks to
competitors of the Complainant constitutes bad faith use: e.g.: SERTA INC v. Charles Dawson,
WIPO Case No. D2008-1474; Credit Industriel et Commercial S.A. v. WhoisGuard Protected, WIPO
Case No. D2006-1162; Deceuninck NV v. William Vaughan, smtm investments ltd, WIPO Case
No.D2007-1911.
B. Respondents
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The circumstances of this case suggest that the Respondent Moniker Privacy Services appears to operate a
so-called “privacy service” and that the Respondent Charlie Kalopungi is and probably always has been the
beneficial registrant of the disputed domain name.
In comparable cases, previous panels have been prepared to treat both the initially listed registrant and the
subsequently disclosed registrant as proper respondents. See e.g. TDS Telecommunications Corporation v.
Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No.
D2006-1620, WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and
Gregory Ricks, WIPO Case No. D2006-0975 and Zedge Ltd. v. Moniker Privacy Services/Aaron Wilson
WIPO Case No. D2006-1585.
In the present case, Moniker Privacy Services does appear to have been correctly identified in the Complaint
as the listed registrant of record in the WhoIs at the time the Complaint was filed. Moniker Online Services,
LLC, the concerned registrar, appears to have subsequently disclosed the identity of the
underlying/beneficial registrant, Charlie Kalopungi, who has also been named by the Complainant in the
amended Complaint as the Respondent. Accordingly, it is in the Panel's view appropriate for both of these to
be treated as the Respondent in the present case, as in previous cases involving the Respondent Moniker
Privacy Services.
In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the
Policy it is necessary that the Complainant must prove, as required by paragraph 4(a) of the Policy, that
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(i)
the disputed domain name is identical or confusingly similar to a trademark or service mark in which
the Complainant has rights; and
(ii)
the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii)
the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well established the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect
the domain name for the purpose of determining whether it is identical or confusingly similar to the
complainant’s trademark:
-
Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525;
Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Comparison of the disputed domain name (excluding the gTLD identifier) and the FILBANQUE trade mark
excludes a finding they are identical because of the presence of the additional letter “l” in the disputed
domain name. However the disputed domain name is clearly confusingly similar to the Complainant’s
various registered FILBANQUE trade marks.
Additionally, it is confusingly similar to the various domain names incorporating the FILBANQUE trade mark
which the Complainant claims to own and operate in its business via the auspices of its subsidiary, Euro
Information. The Panel notes that the Complainant provided no substation of the claimed relationship
between it and Euro Information, but in the absence of any contradiction – and noting that the finding is not
crucial to its decision in this case – it accepts that Euro Information is a subsidiary of the Complainant, as
contended.
The Panel further finds that the case is one of “typosquatting” as identified in:
-
ANOVO v. Moniker Privacy Services / Alexander Lerman, WIPO Case No. D2008-1049;
Zedge LTD v. Moniker Privacy Services / Aaron Wilson, WIPO Case No. D2006-1585;
Autosales Incorporated dba Summit Racing v Moniker Privacy Services/Charles Kalopungi, WIPO
case No. D2010-1081.
Under these circumstances, the Panel takes the view that the requirement of paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or
legitimate interests in the disputed domain name. It is generally accepted that if a complainant makes a
prima facie case that a respondent has no rights or legitimate interests, and the respondent fails to show
evidence to the contrary, then the a respondent may be deemed to lack rights or legitimate interests in the
domain name: e.g. Zedge Ltd. v. Moniker Privacy Services/Aaron Wilson, WIPO Case No. D2006-1585.
The Complainant asserted that the Respondent has neither a license nor any other permission to use the
Complainant’s trademark FILBANQUE and that the Respondents’ use of the domain name for a parking
website is neither a bona fide offering of goods and services nor a legitimate noncommercial use. The Panel
thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or
legitimate interests in the disputed domain name.
The Respondent has not provided positive or contradictory evidence of circumstances of the type specified
in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the
disputed domain name.
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The Panel finds that the Respondent Charlie Kalopungi is currently using Complainant’s trademark to divert
Internet users to a parking website with links to commercial websites offering telecommunications goods and
services in competition with the Complainant, which is not a bona fide noncommercial use pursuant to
paragraph 4(c)(iii) of the Policy.
Further, nothing in the record suggests that the Respondent is making any other legitimate noncommercial
use of the disputed domain name or registered the disputed for bona fide purposes.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate
interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered and has been using the disputed domain name in bad
faith.
The Panel finds that the selection of the domain name must have been made with consciousness of the
Complainant’s trade mark interests and in circumstances where the Respondent had no interest in the trade
mark FILBANQUE. It finds, in the absence of any cogent explanation or evidence justifying the selection of
the disputed domain name, that it was registered with the intent of using it for “typosquatting” and illegitimate
diversion of traffic destined for the Complainant or its subsidiaries and affiliates.
The Panel also finds, under paragraph 4(b)(iv) of the Policy, that the disputed domain name is being used in
bad faith. Screen shots provided by the Complainant of the web page associated with the disputed domain
name reveal a web site apparently carrying hyperlinks to third parties which compete with the Complainant,
among others. The Panel infers that the Respondent has earned “clic-through” fees for redirecting traffic to
the linked web sites, as is a common if not ubiquitous practice of such web sites. In the Panel’s view, the
use is therefore one which seeks to illegitimately capitalize on the goodwill of the Complainant’s trademarks
and constitutes bad faith use under the Policy.
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 name <filbanquel.com> be transferred to the Complainant.
Simon Minahan
Sole Panelist
Dated: January 19, 2011