Decision for dispute CAC-UDRP-105084

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant owns the European trademark CARDIF n°004105185 registered since November 3, 2004.

The Complainant is also the owner of several domain names “CARDIF”, such as:

<cardif.com>, registered since January 27, 1998;

<bnpparibascardif.com> registered since April 12, 2011.

The Complainant is an international insurance company with a presence in 33 countries in Europe, Asia and Latin America. The Complainant states the term “CARDIF” is a contraction of “Compagnie d'Assurance et d'Investissement de France”.

The Complainant owns the European trademark CARDIF n°004105185 registered since November 3, 2004 and several domain names “CARDIF”, such as <cardif.com> and <bnpparibascardif.com>.

The disputed domain name was registered on December 5, 2022 and resolves to an inactive page. Besides, it has been used in the view of Complainant in a phishing scheme.

The Complainant states that the disputed domain name is confusingly similar to its previous trademark registration on the term CARDIF and its domain names associated, because the disputed domain name contains the Complainant’s registered trademark CARDIF in its entirety.

The Complainant contends that the disputed domain name only differs from the trademark CARDIF by the addition of the term “GESTION” (meaning “MANAGEMENT”).

Moreover, the Complainant contends that the addition of the gTLD “.COM” does not change the overall impression of the designation as being connected to the trademark CARDIF. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademark and its domain names associated.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name and that he is not related in any way to the Complainant’s business.

The Complainant contends further that the Respondent is not affiliated with nor authorized by him in any way to use the trademark CARDIF. The Complainant does not carry out any activity for, nor has any business with the Respondent.

Besides, the disputed domain name resolves to an inactive page and it has been used in a phishing scheme. The Complainant asserts that Respondent has used the disputed domain name to pass itself off as one of the Complainant’s employees, in order to phish for personal information and receive undue payment. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy 4 (c)(i), nor a non-commercial or fair use pursuant to Policy 4(c)(iii).

The Complainant states that the disputed domain name is confusingly similar to its trademark CARDIF. The Complainant asserts that the addition of the term “GESTION” cannot be coincidental, as all the Google results of a search of the terms “CARDIF GESTION” refer to the Complainant.

Moreover, the Respondent has used the disputed domain name to pass off as the Complainant in order to phish for personal information and to receive undue payment.

Thus, given the distinctiveness of the Complainant's trademark and reputation, it is inconceivable in the view of Complainant that the Respondent could have registered the disputed domain name without actual knowledge of Complainant's rights in the trademark, which evidences bad faith.

Finally, the Complainant argues that the Respondent has used the disputed domain name in a phishing scheme. The Respondent attempted to pass of as one of the Complainant’s employees. Therefore, the Complainant states that the Respondent used the disputed domain name in bad faith, as it is well-established that using a domain name for purposes of phishing or other fraudulent activity constitutes solid evidence of bad faith use.

The Complainant submits that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

A. Identical or Confusingly Similar

The Panel acknowledges that the Complainant has established rights in the CARDIF trademark.

Disregarding the gTLD “.com”, the disputed domain name incorporates the trademark CARDIF in its entirety.

The Panel further notes that the addition of the dictionary term “GESTION”, (meaning “MANAGEMENT”), which relates directly to the Complainant’s field of business, does not prevent a finding of confusing similarity.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the CARDIF trademark and in demonstrating that the disputed domain name is confusingly similar to its trademark.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

The Complainant asserts that it has not authorized the Respondent to use its trademark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

Thus, the Complainant has established its prima facie case with satisfactory evidence.

The Respondent did not file a formal response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. As such, the Panel concludes that the Respondent has failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and that none of the circumstances of paragraph 4(c) of the Policy is applicable in this case.

As previously noted above, the disputed domain name incorporates the Complainant’s trademark in its entirety with the additional term “GESTION”, which is associated with the Complainant’s industry. Such usage carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. 

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances in particular but without limitation shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark 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) circumstances indicating that the respondent registered the domain name to prevent the owner of the trade mark 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances in which bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another party. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

The Panel believes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(i) of the Policy.

When the Respondent registered the disputed domain name on December 5, 2022, the CARDIF trademarks were already widely known and directly associated with the Complainant’s activities.

Given the extensive prior use and fame of these marks, in the Panel’s view, the Respondent should have been aware of the Complainant’s trademark when registering the disputed domain name.

The Respondent has provided no evidence to justify his registration of the disputed domain name. Given the foregoing, it would be unreasonable to conclude that the Respondent, at the time of the registration of the disputed domain name, was unaware of the Complainant’s trademark, or that the Respondent’s adoption of the uncommon and distinctive trademark CARDIF was a mere coincidence.

The Complainant’s registered trademark rights in CARDIF for its signature products and services predate the registration date of the disputed domain name. A simple online search for the term “CARDIF” would have revealed that it is a world-renowned brand.

The Panel is therefore of the view that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademark rights, a finding which is reinforced considering the addition of the term “GESTION” in the disputed domain name.

Finally, the Panel agrees with Complainant, that the Respondent has used the disputed domain name in a phishing scheme. The Respondent attempted to pass of as one of the Complainant’s employees. The Respondent therefore used the disputed domain name in bad faith, as it is well-established that using a domain name for purposes of phishing or other fraudulent activity constitutes evidence of bad faith use.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.