Credit Libanais SAL v. Mr. Charbel Hajj

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Credit Libanais SAL v. Charbel Hajj

Case No. D2002-0792

1. The Parties

The Complainant in this administrative proceeding is Credit Libanais, a bank

organized and existing as a Lebanese Joint Stock Co. under the laws of Lebanon

with its principal place of business located at Sofil Centre, Fifth Floor, Charles

Malek Ave, Ashrafieh, Beirut, Lebanon.

The Respondent is Mr. Charbel Hajj, a private individual having his address

at Ste Aquilina, 45 Jbeil, Lebanon.

2. The Domain Name and Registrar

The disputed domain name is <creditlibanais.net>.

The Registrar of the domain name is Network Solutions, USA.

3. Procedural History

Issuance of Complaint

3.1 On August 22, 2002, Complainant submitted a Complaint to the World Intellectual

Property Organization Arbitration and Mediation Center ("Center")

pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP")

implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN")

on October 24, 1999, and under the Rules for Uniform Domain Name Dispute Resolution

Policy implemented by ICANN on the same date ("UDRP Rules").

The Complaint and exhibits were received by the Center via email on August 22,

2002, and in hardcopy on August 26, 2002. The Center acknowledged receipt of

the Complaint on August 2002.

Confirmation of registration details

3.2 On August 23, 2002, a Request for Registrar Verification was transmitted

to Network Solutions. In an e-mail to the Center dated August 26, 2002, Network

Solutions confirmed that it is the Registrar for the domain name <creditlibanais.net>

and that the language of the Service Agreement is English. On August 27, 2002,

the Center sent a Complaint Deficiency Notification to the Complainant in which

it informed the Complainant that the current registrar is Network Solutions

and not the one mentioned in the Complaint. The Center requested amendments

of the Complaint. The Center received the amendments on September 19, 2002.

Notification of Respondent

3.3 Having verified that the Complaint satisfied the formal requirements of

the UDRP and the UDRP Rules, the Center sent on September 12, 2002, a Notification

of Complaint and Commencement of Administrative Proceeding to the Complainant

by e-mail; to the Respondent by post and e-mail. The Center advised the Respondent

that the Response was due no later than October 2, 2002.

Filing of Response

3.4 A Response was filed on October 2, 2002, via email and on October 7, 2002,

by hardcopy.

Constitution of Administrative Panel

3.5 Having received the Response within the specified time in the Notification

of Complaint, the WIPO Center proceeded to appoint a single-member Panel and

invited Dr. Torsten Bettinger to serve as a Panelist in this Administrative

Proceeding.

Having received the Panelist’s Declaration of Impartiality and Independence,

the Center issued a Notification of Appointment of Administrative Panel on October 11,

2002, and set a decision date, with the Panelist’s deadline for issuing a decision

of October 25, 2002. The Center transmitted the case file to the Panelist on

October 11, 2002.

4. Factual Background

The Complainant is the well-known Lebanese bank registered in 1961 under the

Arabic name (Etemad Lebnany) and its French translation Credit Libanais.

Complainant has provided documentary evidence that it is the owner of a trademark

issued under no. 82200 by the Ministry of Economy and Trade of the Republic

of Lebanon, consisting of the name of the Complainant in Arabic with its Latin

translation "Credit Libanais SAL", a design (a cedar tree with the

letter C) and a descriptive phrase in Arabic which means "close to you".

The Respondent is the registrant of the domain name <creditlibanais.net>.

At present the domain name <creditlibanais.net> does not resolve to a

website or other on-line presence except for a website with an "under construction"

message.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that: (1) The domain name <creditlibanais.net>

is identical or confusingly similar to the trademark "Credit Libanais"

in which the Complainant has exclusive rights; (2) the Respondent has no rights

or legitimate interests with respect to the domain name; and that (3) the domain

name was registered and is being used in bad faith.

The Complainant alleges that the Respondent has registered the domain name

at issue for the purpose of selling it to the Complainant for a valuable consideration

in excess of documented out-of-pocket costs directly related to the domain name

and that the domain name was registered in order to prevent the Bank from reflecting

the mark in the corresponding domain name.

The Complainant requests that the Administrative Panel issue a decision that

the domain name <creditlibanais.net> be transferred to the Complainant.

B. Respondent

a) The Respondent alleges that the domain name <creditlibanais.net> is

not identical or confusingly similar to the trademark "Credit Libanais"

because:

- it does not include the particle SAL;

- the Complainant registered trademark only for two classes (class 6 and 36)

which refer to the Complainant financing and banking services and that therefore

the Complainant could not be considered as the only owner of the name "crédit

libanais";

- the Respondent is a private individual and has no company and that according

to the Lebanese commercial law anyone who wants to work in a bank or financial

services institution must be incorporated as a Lebanese joint stock company;

- the Respondent does and will not work in the same field and provide the same

services as the Complainant;

- the Respondent’s intention is to use the domain name to supply information

on Lebanon notably to the Lebanese immigrant population around the world;

- the words "crédit" and "libanais" are generic

and have multiple meanings;

- anyone who enters the Respondent’s website will notice without any difficulty

that the website has no relation to financial services;

- the extension ".org" and ".com" are more often used than the ".net" and ".info"

extensions and that the domain names <creditlibanais.com.lb> and <creditlibanais.com>

are the first addresses someone thinks about when looking for the official site

of the Complainant;

- in Lebanon the trademark of the Complainant is well known only in its Arabic

form "Iitimad loubnani";

- there is no possibility of misunderstanding the word "iitiamad"

- translation of credit- because it means loan .

b) The Respondent further claims that he has legitimate rights in respect of

the domain name and contends that:

- he is waiting for the implosion of the tourism sector in Lebanon to launch

a network of four websites: services (<jbeil.com>), historical (<ahiram.com>),

fun (<yadast.com>) and <creditlibanais.net>;

- he is targeting the Lebanese immigrant population around the world not in

Lebanon while the Complainant’s activities are banking in Lebanon;

- because he intends to use the domain name for a website promoting the Lebanese

tourism activities on the Internet and that he has chosen the domain name <creditlibanais.net>

because the word "credit" means "consideration" or "influence";

- the first definition of the word "crédit" in the french

dictionary Larousse is:

"confiance qu'inspire quelqu'un ou quelque chose; influence, considération.

Jouir d'un grand crédit auprès de quelqu'un"

and that the financial meaning of the word appears only at the third rank;

- the domain name <creditlibanais .net> was registered for more than

22 months without contacting the Complainant asking for any deal in relation

to the diputed domain name.

c) The Respondent also alleges that he did not register and use the disputed

domain name in bad faith. He states that

- his website has financial objectives while the Respondent's intend is the

promotion of the Lebanese tourism on the Internet;

- he will not compete with the Complainant’s website and therefore will "not

steal clients from the Complainant by creating a likelihood of confusion with

the complainant's mark;

- the domain name is registered but not being used;

- the Respondent does and will not offer the domain name for sale.

6. Discussion and Findings

Pursuant to Paragraph 4(a), the Complainant must prove that each of the following

three elements are present if it is to prevail:

(i) The Respondent’s "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 with respect

to the domain name;" and

(iii) The "domain name has been registered and is being used in bad faith."

a. Identical or confusingly similar (Paragraph 4(a)(i))

The Respondent has registered the domain name <creditlibanais.net>. This

domain consist in exactly the same verbal elements as Complainant's protected

trademark "Credit Libanais (and device)". Only the graphic elements

(cedar tree) of the trademark, the identifier of the Complainant’s legal form

"SAL" and the Arabic slogan were left out. The Panel finds that neither

the device emphasizing the Lebanese nature of the trademark which cannot be

reproduced in a domain name nor the identifier of the Complainant’s legal form

"SAL" and the slogan "close to you" have distinguishing

capacity. Whether the Complainant’s trademark and the domain name <creditlibanais.net>

are confusingly similar in a trademark sense as regards the products and services

covered by the Complainant’s trademark is of no relevance. Paragraph 4 (a) (i)

merely requires that there is a similarity between the domain name and the trademark

irrespective of the similarities in products and services. The question to be

answered by the Panel is not whether the domain name causes confusion as to

source but instead whether the mark and domain name, when directly compared

have confusing similarity [See Wal-mart Stores, Inc.v. Richard MacLeod d/b/a

For Sale, WIPO Case No. D2000-0662

at p.4 (September 19, 2002)].

The Panel thus finds that the domain name <creditlibanais.net> is confusingly

similar to the trademark mark in which the Complainant has prior exclusive rights.

b. Rights or legitimate interests (paragraph 4(a)(ii))

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel

to be proved, shall demonstrate the Respondents’ rights or legitimate interest

in the domain names. These circumstances are:

(i) before any notice to the Respondent 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 the bona fide offering of goods or services;

or

(ii) the Respondent (as an individual, business or other organisation) has

been commonly known by the domain name, even if the Respondent has acquired

no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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 has not provided evidence 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 domain name.

Although Paragraph 4 (a) of the Policy requires the Complainant to prove the

presence of this element, WIPO and the other approved Dispute Resolution Providers

found in a number of cases that once a Complainant makes out a prima facie showing,

the burden of production on this factor shifts to the Respondent to rebut the

showing by providing concrete evidence that it has rights to, or legitimate

interests in the domain name. This "burden shifting" is appropriate

given that Paragraph 4 (c) of the Policy, which is entitled "How to Demonstrate

Your rights to and Legitimate Interests in the domain name in Responding to

a Complaint" , and discusses the kind of evidence a Respondent should provide

to show that it has rights to or legitimate interests in the domain name [see

Inter-Continental Hotels Corporation v Hales Ali Soussi, WIPO

Case No. D2000-0252 ( July 5, 2000)].

The elements set forth in Art. 4 (c) UDRP are not present.

The Complainant has not licensed or otherwise permitted the Respondent to use

any of its trademark or business name and has not permitted to apply for or

use any domain name incorporating the trademark.

In particular the Respondent is not a holder of a trademark "Credit Libanais"

or a similar trademark, nor is this his name. Before any notice to the Respondent

of the dispute, there is no evidence of it’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 and services. Especially, the domain name

at issue is not used to address a website. The domain also has never been used

as an e-mail address. There were no preparations of a future use, neither.

The Respondent has not been commonly known by the domain name. That results

already from the fact that it never has been used by Respondent

The Respondent is making no legitimate non commercial use of the domain name,

without intent for commercial gain misleadingly to divert consumers or to tarnish

the trademark or service mark at issue. The Respondent hasn’t used the domain

name at all.

Finally the fact that the expression "credit libanais" apart from

being the Complainant’s trademark may have other meanings as put forward by

the Respondent is not itself sufficient to establish a legitimate interest in

the domain name.

The Panel therefore concludes that Respondent has no rights or legitimate interests

in the domain name <creditlibanais.net> and that the requirement of Paragraph

4 (a) (ii) UDRP is satisfied.

c. Bad faith (Paragraph 4 (a) (iii))

The final factor is whether the Respondent registered and is using the domain

name in bad faith.

The Panel notes that the Complainant’s mark is well known not only in Lebanon

where the Respondent is resident but also worldwide and that therefore there

is no doubt that the Respondent registered the domain name at issue with full

knowledge of the Complainant’s trademark.

The Respondent also notes that the Respondent failed for a substantial period

of time to make good faith use of the domain name and that these circumstances

alone have been considered by many Panelist as a sufficient basis for the conclusion

that the domain name was registered or acquired primarily for the purpose of

selling or otherwise transferring the domain name to the owner of the trademark

for valuable consideration in excess of out-of-pocket costs directly related

to the domain name [See for example WIPO Case

No. D2000-0310 (June 19, 2000); NAF FA95314 <caravanclub.com>; WIPO

Case No. D2000-0808 (August 31, 2000)].

However, the Panel also notes that the Respondent has not attempted to sell

the disputed domain name to the Complainant for a considerable period of time

since the registration of the domain name and has therefore doubts whether the

circumstances are sufficient for the conclusion that the Respondent registered

the domain name primarily for the purpose of selling it to the Complainant.

Nevertheless the Panel notes that the criteria for finding bad faith set forth

in Paragraph 4 (b) of the Policy are not exclusive and that the particular

circumstances of the case clearly indicate that the Respondent registered and

used the domain name in order to create an association with the Complainant

and as a means of attracting users to his future website. This will create a

likelihood of confusion with the Complainant’s mark as to source, affiliation

or endorsement of the website.

The Panel agrees that the word "credit" has different meanings. This

however is not sufficient to convince the Panel that the Respondent has registered

the combination of the word "credit libanais" which is so obviously

connected with the well-know trademark of the Complainant. In view of the notoriety

of the Complainant’s mark the Respondent faces a difficult, if not impossible

task of showing satisfactory proof of any legitimate intentions to use the term

"credit libanais" as a domain name. The Respondent’s explanation falls

way short of doing so here.

Instead of citing French dictionaries and explaining the different meanings

of the word "credit" the Panel would have expected the Respondent

to present - what he or his counsel must have considered as the best argument

against a finding of bad faith – some documentary or other evidence that show

that the Respondent in fact made preparations to use the domain name to "encourage

the tourism toward Lebanon and explaining the Lebanese heritage". Considering

the fact that the Respondent’s counsel has presented extensive, and in the Panel’s

view excessive pleadings, but has chosen not to submit any information as to

the project, the professional background and the Respondent’s motivation for

such – as the Respondent himself states – "very expensive project"

- the Panel must draw the conclusion that the reason propounded by the Respondent

for the registration of the domain name is a mere pretext.

However, even if someone supposes that the Respondent is involved in such a

project this would not justify the registration of the Complainant’s trademark

as a domain name. The Respondent’s explanation that he has chosen the domain

name because the word "credit" is used here in the meaning of consideration

and that he is waiting for the "implosion of the tourism sector in Lebanon

and to use the domain name for a website promoting the Lebanese tourism activities

does not lack imagination but seems off-beat. The combination of the French

words "credit libanais" are not a generic description of such activities.

On the contrary, and to reiterate, the domain name <creditlibanais.net>

is so obviously connected with the Complainant’s well known trademark that it

almost not possible to conceive of any plausible actual or contemplated active

use of the domain that would not be illegitimate and its very use by someone

with no connection with the Complainant suggests opportunistic bad faith.

The fact that the domain is inactive does not prevent from the assertion that

registered and use in bad faith. On the contrary, inaction itself can constitute

"use in bad faith", where the domain name comprises a name which can

only sensibly refer to the Complainant, where there is no reasonable justification

for the selection of the domain name and it is not possible to conceive of any

plausible actual or contemplated active use of the domain name by the Respondent

that would not be illegitimate such as by being a passing off an infringement

of the Complainant’s rights under trademark law [see only Telstra Corporation

Limited v. Nuclear Mashmallows, WIPO Case

No. D2000-0003 (February 18, 2000)].

In light of these circumstances, the Administrative Panel concludes that the

Respondent’s passive holding of the domain name in this particular case satisfies

the requirement of Paragraph 4(a)(iii) that the domain name <creditlibanais.net>

is being used in bad faith" by Respondent.

7. Decision

The Panel thus decides that:

1) the domain name <creditlibanais.net> is confusingly similar to the

trademark in which the Complainant has rights;

2) The Respondent has no rights or legitimate interest with respect to the

domain name <creditlibanais.net>

3) the domain name <creditlibanais.net>has been registered and used in

bad faith by the Respondent.

Pursuant to Paragraph 4(i) of the Policy and pursuant to Paragraph 15 of the

Rules, the Panel requires that the Registrar, Network Solutions, transfer the

domain name <creditlibanais.net> to the Complainant.

Dr. Torsten Bettinger

Sole Panelist

Dated: November 3, 2002