Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS 3794

SAS Carte Bleue v Denis Morozov

Decision of Independent Expert

1. Parties

Complainant: SAS Carte Bleue

France

Respondent: Mr Denis Morozov

Russia

2. Domain Name

cartebleue.co.uk

3. Procedural Background

On 23 June 2006 the Complaint was lodged with Nominet. In accordance with the Dispute Resolution Service Policy hard copies of the Complaint were received in full on 27 June 2006.

On 27 June 2006 Complaint documents were generated for service upon the Respondent. No Response was received from the Respondent by the due date of 20 July 2006.

On 1 August 2006 Mr Clive Thorne was selected as the Expert. He has confirmed his independence and willingness to act.

The Expert understands the necessary fees were received from the Complainant on 27 June 2006. There are no interlocutory or interim matters outstanding.

The Expert is satisfied that the Complaint documents were served upon the Respondent. On 20 July 2006 he sent an email to Suzanne Begley at Nominet in response to Suzanne Begley's email of the same date attaching the Complaint documents. In the absence of a Response the Expert proceeds to determine the Complaint on the basis of the evidence submitted by the Complainant.

4. Facts

The factual background is summarised in the Complaint. There being no Response the Expert accepts the truth of the facts stated in the Complaint.

The Complainant is a French company has been registered at the Paris register of companies under the name SAS Carte Bleue since 8 March 2002. It is the assignee of the activities previously carried out by GIE Groupment Carte Bleue, a company registered at Paris Registrar of Companies under the name GIE Groupment Carte Bleue since 22 November 1971.

The Complainant provides credit card payment services. It provides 200 customer banks with a wide range of cards in order to meet the needs of the banks' customers who are both individuals and businesses. To date more than 30 million payment cards are active on French territory and branded "CARTE BLEUE". Evidence of this can be seen from Exhibit 2 to the Complaint. At Exhibit 4 to the Complaint are extracts from the Complainant's website "www.carte-bleue.com" which sets out details of its products.

"Carte Bleue" has apparently been used as a trade name since the registration of GIE Groupment Carte Bleue in 1971 and as a trade mark since the first registration of the trade marks, "CB Carte Bleue" on 18 February 1977 and "Carte Bleue" on 10 October 1996. Both marks have been renewed since then. Evidence of the registration of the marks is set out at Exhibit 11.

In addition, the Complainant has the following registered European Community Trade Marks:

Carte Bleue - no. 000710467 - dated 24 March 1999

Carte Bleue - no. 000707067 - dated 18 June 1999

Copies of the Certificates of Registration are exhibited to the Complaint as Exhibit 1.

The Complainant points out that the total number of transactions made by holders of the Carte Bleue card in the United Kingdom exceeded 1 billion Euros in 2005. The Complainant submits that this is evidence that the mark "Carte Bleue" should be regarded as well known in the United Kingdom.

The Complainant is also the owner of numerous domain names containing the marks Carte Bleue including inter alia:

cartebleue.com

cartebleue.fr

cartebleue.net

cartebleue.biz

cartebleue.info

cartebleue.org

carte-bleue.com

carte-bleue.fr

carte-bleue.net

carte-bleue.biz

carte-bleue.info

carte-bleue.org

The Complainant also relies upon a decision of a WIPO Administrative Panel to support that the proposition that the reputation of the trade mark "Carte Bleue" is well established. It relies upon Case No. D2006 1147 the decision in which is exhibited at Exhibit 7 to the Complaint. The result of that decision is that the WIPO panelist ordered the domain names "cartesbleues.com", "cartes-bleues.com", "cartes-bleues.net" and "cartesbleues.net" be transferred to the Complainant.

The history of the present dispute appears to have arisen as a result of a dispute between the Complainant and Respondent with regard to the domain names "cartebleue.be" and "carte-bleue.be". On 6 March 2006 Novagraaf, a representative of the Complainant, wrote to the Respondent pointing out that domain name "cartebleue.be" infringed its rights. This appears to have been followed by an email from Novagraaf dated 7 March 2006 sent to the Respondent under which Novagraaf indicated that the Complainant was determined to take all necessary steps to protect its rights. The Respondent replied by email of the same date rejecting the request and pointing out that he had registered "cartebleue.be" without having knowledge of the existence of the Complainant.

On 7 April 2006 lawyers for the Complainant, Aramis, wrote to the Respondent pointing out inter alia that he had registered the domain name in dispute, "cartebleue.co.uk" on 8 March 2006 and this was confusingly similar to the Complainant's marks. Aramis sought undertakings to transfer the domain name and to cease using the mark "Carte Bleue" or any other similar sign. The correspondence is exhibited at Exhibit 8. There does not however appear to be any further correspondence prior to the commencement of the present proceedings.

5. Discussion and Findings

Under paragraph 2(a) of the DRS Policy a Complainant must show that:

1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

2. The Domain Name, in the hands of the Respondent, is an Abusive Registration.

The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities. The Expert therefore proceeds to deal with each element in turn.

(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name

The Expert has considered the evidence of trade mark rights adduced by the Complainant and referred to above and is satisfied that the Complainant has registered rights in the mark "carte bleue". It is also satisfied that these pre-date the date of registration of the domain name on 8 March 2006.

The Complainant points out that the only distinction between the mark "Carte Bleue" and the domain name is the suffix ".co.uk" and submits that this should be disregarded by the Expert in deciding whether or not the Complainant's name or mark is identical or similar to the domain name dispute. In the Expert's view this is the appropriate way to proceed. Accordingly the Expert finds that the Complainant has rights in respect of the mark "Carte Bleue" and which with the exception of the suffix ".co.uk" is identical to the domain name in dispute.

(ii) The Domain Name, in the hands of the Respondent is an Abusive Registration

"Abusive Registration" is defined in paragraph 1 of the DRS Policy as meaning a domain name which either:

(1) Was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

(2) Has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights.

Paragraph 3 of the Policy provides a non-exhaustive list of factors which may be evidence that a domain name is an Abusive Registration. In the present case, the Complainant submits that the Domain Name is clearly abusive for the following reasons:

(1) The domain name has been primarily registered for the purpose of selling or renting it to the Complainant or to its competitor for an excessive price. It relies upon a report exhibited at Exhibit 6 revealing that the domain names "cartebleue.be", "cartebleue.de" and "cartebleue.co.uk". were for sale (presumably by the Respondent) for 3,000 Euros each or for rent for 200 Euros per year. It submits that this offer for sale is wholly disproportionate to the Respondent's out of pocket costs and that this constitutes strong evidence that the Respondent's primary purpose in registering the domain name was to sell it in an unjustifiable premium to the Complainant.

(2) The Respondent points out that the domain name was registered on 8 March 2006 which was immediately after the Novagraaf demand letter referring to cartebleue.be. This meant that the Respondent knew of the existence of the Complainant's prior rights before the registration of the domain name in dispute the following day. The Complainant submits that these circumstances establish evidence of an Abusive Registration.

(3) In accordance with paragraph 3(a)(i)(C) of the DRS Policy the Complainant asserts that the Respondent registered the domain name as a blocking registration against a mark in which the Complainant has rights. It submits that the although the Complainant has a number of existing domain names, the registration of the domain name in dispute would block it from registering a further UK domain name.

(4) The Complainant submits that the Respondent has engaged in a pattern of registering domain names which correspond to trade marks registered by the Complainant in which he has no apparent interest. It relies upon the fact that over the course of a three month period the Respondent registered four domain names ie., "cartebleue.be", "cartebleu.be", "cartebleue.de" and "cartebleue.co.uk".

Having considered the evidence the Expert finds force in all of the above submissions. In particular, it finds particularly compelling the fact that in response to the Novagraaf letter of 6 March 2006 which gave notice of the Complainant's rights and the Complainant's Complaint regarding "cartebleue.be", the Respondent nevertheless proceeded to register the domain name in dispute. The Expert finds that this is evidence of Abusive Registration falling within paragraph 3(a)(i)(B) of the DRS Policy.

Accordingly, the Complainant has satisfied its burden of proof in showing that both elements of paragraph 2(a) of the DRS Policy are present on the balance of probabilities.

6. Decision

The Complainant has requested that the disputed Domain Name should be transferred from the Respondent to the Complainant. Accordingly, the Expert orders that the Domain Name "cartebleue.co.uk" be transferred from the Respondent to the Complainant.

Clive Duncan Thorne

Expert

17 August 2006