WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Credit Industriel et Commercial S.A. v. Demand Domains, Inc. Case No. D2009-1184 1. The Parties
1.1 The Complainant is Credit Industriel et Commercial S.A. of Paris, France, represented by Meyer & Partenaires, France.
1.2 The Respondent is Demand Domains, Inc. of Bellevue, Washington, United States of America, internally represented. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2009 naming “Whois Privacy Protection Service Inc” as the Respondent. On September 8, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2009, the Registrar transmitted by email to the Center its verification response disclosing “Demand Domains Inc” as the registrant of the Domain Name and providing contact information for the same.
3.2 The Center sent an email communication to the Complainant on September 15, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 16, 2009 substituting Demand Domains Inc. as the named Respondent. The Center verified that the Complaint as amended 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”).
3.3 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 September 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2009. The Response was filed with the Center on October 7, 2009.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 9, 2009. 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
4.1 The Complainant is part of a French banking group that can trace its origins back to 1859. Although primarily operating in France, it has branches all over the world including Europe (including Spain), Africa, Latin America, North America (where it has one branch) and Asia.
4.2 The Complainant is the owner of a large number of trade marks around the world that comprise or incorporate the term CIC. These include:
(i) French national trade mark no. 1358524 for the text “CIC” dated June 10, 1986 in classes 35 and 36.
(ii) Community trade mark no. 5891411 for the text “CIC” filed on May 10, 2007 in classes 9, 16, 35, 36.
(iii) International trade mark registration no. 582446 dated February 18, 1992 in classes 35 and 36, designating a number of jurisdictions and which takes the following form:
4.3 The Complainant is also the owner of various domain names including:
4.4 The Respondent does not quite say this expressly, but it seems clear that it is an entity that trades in domain names and uses them for the purposes of generating advertising revenues.
4.5 The Domain Name was registered on July 2, 2009. From the date of that registration, or at least shortly thereafter, the Domain Name has been used to display a page which bears all the hallmarks of having been generated by a domain name “parking page” that generates automated “pay per click” links.
4.6 For example, as at September 7, 2009 the page displayed from the Domain Name had the heading “Welcome to ESCIC.com” and below that were displayed the following links1:
Rachat Credit
Credit
Assurance
Finance
Investissement
Credit Immobilier
Assurance Credit
Mutuelle
Complementaire Sante
Credit En Ligne
4.7 A “pay per click” and “parking” page continues to operate from the Domain Name as at the date of this decision. 5. Parties' Contentions A. Complainant
5.1 The Complainant claims that the term “CIC” is widely known around the world. It claims that it is registered and used in commerce in “a great majority of countries of the world” and is well-known in the sense of article 6bis of the Paris Convention. It refers to the cases of Credit Industriel et Commercial S.A., CM-CIC Securities v. Homeshop, WIPO Case No. D2007-0530 and Credit Industriel et Commercial S.A., CM-CIC Securities v. Click Cons. Ltd,WIPO Case No. D2007-1323. These cases are said to have recognised the well-known character of its mark.
5.2 The Complainant claims that the “only distinctive” element of the Domain Name are the letters “cic”, which reproduces its trade mark in its entirety, and to which it has been added “es”. It maintains that the letters “es” are simply a reference to the country code for Spain and asserts that the addition of these letters was “undoubtedly designed to take advantage of the confusion likely made by Internet users, particularly the Spanish ones, when trying to access [the Complainant's] international websites”. It also points to a number of decisions under the Policy where the panel concluded that the use of country codes or abbreviations for countries in a domain name did not preclude a finding of confusing similarity.
5.3 In the circumstances, the Complainant claims that the Domain Name is confusingly similar to a trade mark in which it has rights.
5.4 There are various statements in the Complaint to the effect that the “privacy service” initially listed as the registrant of the Domain Name has no rights or legitimate interests in the Domain Name. However, it also asserts that the Respondent has no relationship with the Complainant and is not known by any name embodied in the Domain Name. On this basis it claims that the Respondent has no rights or legitimate interests in the Domain Name and lists a number of cases said to support that proposition including Christian Dior Couture v. Chanel Perfume/Whois Privacy Protection Service Inc,WIPO Case No. D2007-0876 and Crédit Industriel et Commercial S.A v. Yu Ming,WIPO Case No. D2007-1817.
5.5 So far as bad faith is concerned the Complainant contends that it is “difficult to imagine” that the Respondent was not aware of the Complainant when it registered the Domain Name. It claims that given the Complainant's business activities in the United States the Complaint is “known on the American market”.
5.6 The Complainant also contends that the Respondent could not have randomly chosen the combination of “cic” and “es” in a Domain Name other than as part of an intended reference to the Complainant and its activities in Spain.
5.7 It is claimed that in similar circumstances the Respondent's registration of the domain name had been found to be in bad faith. Reference is made in this respect to Christian Dior Couture v. Chanel Perfume/Whois Privacy Protection Service Inc., supra (although that case does not appear to have involved “Demand Domains Inc”).
5.8 The Complaint also maintains that the Respondent had taken steps to hide its identity with the use of a “WhoIs Privacy Service” and this is said to indicate bad faith (citing The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd./ “The Saul Zaentz Company”, WIPO Case No. D2008-0156).
5.9 In the circumstances, the Complainant alleges that the registration was for the “purpose of diverting the Complainant's clients to a parking webpage, which contain numerous hyperlinks in French in the financial and banking field, among which numerous of them are pointing to the Complainant's competitors”.
5.10 So far as bad faith use is concerned the Complainant contends that the reputation of its trade mark is such that a prima facie presumption is raised that the Respondent registered the domain name not for using it by itself but for the purpose to attract, for commercial gain, Internet users to its web site. Once again it refers to the pay per click parking use of the Domain Name. B. Respondent
5.11 The Respondent contends that the Complainant's claim that the Domain Name should be seen as the mark CIC to which the letters “es” have been added is “specious”. It distinguishes the cases identified by the Complaint, in which panels held that the addition of a country code or abbreviation in a domain name did not preclude confusing similarity, as each involving the addition of a dash so as to indicate separation of the relevant letters from the rest of the Domain Name. In the present case there is no dash and the Domain Name is said to comprise a meaningless string of letters.
5.12 Further, the Respondent contends that even if the letters “cic” are to be considered to be separately from the letters “es”, the letters “cic” in the United States (i.e. where the Respondent is located) are used by multiple entities. In such circumstances, the Respondent maintains that “[it] could not possibly have concluded that registration of the [Domain Name] would infringe any other party's alleged rights”.
5.13 So far as the letters “escic” are concerned, the Respondent provides a Google search result that is said to show that the letters are used by a number of entities including basketball club in London, a company by the name of Earth Sciences, Inc. and an environmental surveillance centre in Japan.
5.14 The Respondent also maintains that it has a right and legitimate interest in the Domain Name. It points out that many individuals and companies hold generic, descriptive (or even nonsensical) domain names, and may opt to generate advertising income by the use of pay per click links. It cites a number of cases that are said to show that such activity constitutes the “bona fide offering of a service”, including Super Supplements, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-0244; Bolsa de Valores de São Paulo S.A. – BVSP v. Rarenames, WebReg,WIPO Case No. D2008-1360 and Koninklijke KPN N.V. v. Konstantinos Zournas,WIPO Case No. D2008-0055.
5.15 The Respondent further maintains that by registration of the Domain Name it has joined a long “roster” of persons using the letters “escic”, and that no individual can claim exclusive rights in such a term.
5.16 So far as bad faith is concerned, the Respondent claims that it registered the Domain Name “with the good faith belief and knowledge that the [Domain Name] has no meaning”. It denies that it registered the Domain Name with any intent to divert Internet traffic away from Complainant or to knowingly provide links to the Complainant's competitors that provide similar services or to target the Complainant's Spanish customers.
5.17 In this respect it also denies that the mark CIC is famous and refers to cases in which panels have held that the registration of an acronym in wide use (in the words of the Respondent) “is not proof of a respondent's intentional confusion (and thus bad faith use) against a complainant”. The Respondent maintains that “[it] could not have had any awareness that the Complainant would have any issues surrounding registration of the [Domain Name]”.
5.18 So far as the use of WhoIs Privacy service is concerned, it claims that the service addresses a legitimate purpose (i.e. the reduction of spam) and that the Respondent did not conceal its identity for any non-legitimate or bad faith purpose. 6. Discussion and Findings
6.1 The Complainant must make out its case in accordance with the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these issues in turn. A. Identical or Confusingly Similar
6.3 The Panel accepts that the Complainant has registered trade mark rights in the term “CIC”.
6.4 The Domain Name (if one disregards the .com TLD) comprises 5 letters of which the last three are “cic”. The Panel does not accept the Complainant's contention that the most significant element of the Domain Name is the letters “cic”. There is nothing in the Domain Name to suggest that these letters are particularly significant or that the Domain Name should be read as comprising the separate element “cic” and “es”. As the Respondent rightly points out, there is no dash or other separator in the Domain Name between these groups of letters.
6.5 Nevertheless, the Panel accepts that it is possible to read the Domain Name as comprising the Complainant's mark in its entirety with the addition of two letters which represent a country code. Is this sufficient for a finding of confusing similarity? The question of whether a domain name that incorporates a trade mark in its entirety is necessarily confusing similar to that mark is one that this Panel addressed in Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227. In that case the Panel stated:
“6.6 It is necessary to recognise that the term of confusing similarity is a low threshold test the purpose of which is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint (see, for example, Aubert International SAS and Aubert France SA v. T Co.,WIPO Case No. D2008-1986). It involves a simple comparison of the mark relied upon with the domain name in issue. The geographical location of that mark is not important and normally neither is the degree of fame or reputation that a registered mark has achieved. Similarly, reference to local case law on confusing similarity or likelihood of confusion, is also unlikely to be that helpful.
6.7 It is against this “standing” requirement that the word “confusing” is to be understood. So for example, even in cases where the domain name in issue takes the form of a trade mark combined with the pejorative term such as “sucks”, there is still likely to be confusing similarity (see for example, Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647). There are cases where a domain name combining the term “sucks” with a mark has not been held to be confusingly similar to that mark where the domain name has been used for a criticism site (see the case listed in The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez,WIPO Case No. D2003-0166), but the Panel would suggest that the real rationale of those cases may rather be found in an assessment of whether the operation of a criticism site from such a domain name provides rights or legitimate interests and/or is in bad faith.
6.8 This low threshold approach in cases where the pejorative or the alleged distinguishing term is incorporated in a domain name is sometimes said to be justified by the fact that the domain name might be seen by persons who are not familiar with the language from which the additional word is taken. It is claimed that such persons will be confused by the mark element of the domain name and that this confusion will not be dispelled by the additional word or words in the domain name. There may be some force in this argument, but regardless of its exact justification, the advantages of the low threshold approach are clear. Take for example, a company that registers the domain name for a website that does nothing more than sell its own goods. In the opinion of this Panel the question of whether or not such use should be allowed is best addressed in the context of an assessment of rights or legitimate interests and bad faith. To interpret paragraph 4(a)(i) as setting a low threshold test permits this to happen.
6.9 It is also an approach that means that in most cases where a domain name incorporates the entirety of a trade mark, then the domain name will for the purposes of the Policy be confusingly similar to the mark. The Complainant has cited a number of cases that are said to support that proposition. However, this Panel would prefer not to endorse this as a hard and fast rule. Are the domain names or (to adopt American spelling) really confusingly similar to a mark for the word “heat”? Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.”
6.6 So, for example, although the ordinary English word “icicle” contains the letters “cic”, it does not follow that any domain name which incorporates the word “icicle” will be confusingly similar to the Complainant's mark. Similarly, if the domain name comprised a lengthy random series of letters of which the combination “cic” formed a small part, again it would be difficult to reach a finding of confusing similarity.
6.7 However, here the Respondent does not contend that the term “escic” has an obvious ordinary meaning. Indeed, it contends precisely the opposite. Further, the Domain Name when one ignores the .com TLD comprises only 5 letters. In other words, the letters “cic” comprise 60% of that Domain Name.
6.8 Further, the suggestion that the term “escic” might be read by an Internet user as the Complainant's mark combined with the county code for Spain does not strike the Panel as inherently improbable or fanciful. Given this and bearing in mind the “low threshold” or “standing” nature of paragraph 4(a)(i) of the Policy, the Panel finds that the Domain Name is confusingly similar to the Complainant's mark as that phrase is understood under the Policy. The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.9 The Panel accepts that the Domain Name in this case was registered and is currently being used by the Respondent for use with a “domain name parking” or “pay per click” service.
6.10 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party's rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a third party complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
6.11 Similarly there is nothing per se illegitimate in dealing in domain names. However, if there is an intention by reason of the sale or threatened sale of the domain name to take advantage of the third party's rights and reputation in a trade mark represented in that domain name, then that is quite a different matter.
6.12 Essentially, therefore, in a case such as this the assessment boils down to the questions: did the Respondent register the Domain Name with the Complainant's marks in mind and has it deliberately used it to take unfair advantage of the reputation of those marks? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use, and a separate assessment of the question of rights and legitimate interests adds very little.
6.13 For the reasons that are explained in greater detail under the heading of bad faith, the Panel concludes that the answer to both questions is yes. In the circumstances, the Panel finds that the Respondent has no right or legitimate interest in the Domain Name and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.14 As the Panel has already stated, it seems clear that the Domain Name was registered for the purpose of use with a “pay per click” or “domain name parking” service.
6.15 It is now well-known how these sorts of service operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA,WIPO Case No. D2007-1143).
6.16 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page (see, for example, Express Scripts, Inc. v. Windgather Investments Ltd, supra). The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent's website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay per click site that it then becomes clear that the website is unconnected with the trade mark holder.
6.17 In this case the Respondent has gone to some length to persuade the Panel that the Domain Name prima facie represents a meaningless combination of letters and could stand for a number of different organisations or companies. Perhaps the letters could be used for a number of different purposes that are unconnected with the Complainant. However, usually evidence of this sort is of secondary importance. It can be corroborative of claims by a registrant that it had some such other purpose in mind at the time of registration. But if a Panel concludes as a matter of fact that the domain name was registered to take advantage of the reputation of a complainant's mark, then no amount of evidence of a possible alternative use will save that registration.
6.18 Similarly, claims from the Respondent that no individual can claim exclusive rights in the letters “escic” somewhat miss the point. The Complainant is not claiming exclusive rights in these letters nor is that a requirement for success under the Policy. What is required is that the Complainant shows that the Domain Name was registered with the intention of taking advantage of the reputation of its CIC mark.
6.19 A factor that is often relevant to the assessment of a respondent's knowledge and intent include the degree of fame of the complainant's mark, particularly if that reputation can be shown to extent to the jurisdiction or jurisdiction in which the respondent resides or undertakes activities. In this present case the Respondent appears to operate in the United States and there is evidence before the Panel that would suggest that the Complainant's CIC mark has some reputation in that country. However, this evidence is somewhat limited. The Complainant operated a branch office in the United States but there is not attempt to describe or provide evidence of the extent of its activities in North America.
6.20 The Panel notes that in Credit Industriel et Commercial S.A., CM-CIC Securities v. Homeshop, supra the panel held that the CIC mark had “worldwide fame and recognition”, but the basis for that conclusion is not set out in that decision in any detail. Therefore, although the Panel is prepared to accept that the reputation of its mark is a factor that weighs to some degree in the Complainant's favour, it is far from determinative.
6.21 Far more significant in this case is the fact that the sponsored links operating from the webpage displayed from the Domain Name seem to have been predominantly associated with the field of banking. It is hard to reconcile that fact with the Respondent's contentions that the term “escic” is either meaningless or can be equally associated with a number of organisations unrelated to the Complainant. Of course, these links are unlikely to have been individually chosen by the Respondent. Nevertheless, these links do provide prima facie evidence of the Respondent's knowledge and intent. As this Panel stated in Owens Corning v. NA, supra:
“6.15 Of course, this still leaves the Respondent's contention that she was not responsible for the advertising that appeared on the page because GoDaddy automatically generated this advertising. The Panel is somewhat sceptical that the Respondent had no hand in choosing of the type of advertising that would appear. Domain name parking services will usually allow users to choose “keywords” to associate with a domain name so that the sponsored links that appear on the page are better aligned with the domain name in the hope that more “click through” revenue will be generated. In circumstances where a respondent does not disclose the exact manner in [which] the domain name parking service web page has been set up and does not disclose exactly what keywords it has chosen, it is reasonable for the Panel to infer that the respondent had some influence upon the sponsored link selection process (see similar comments to this effect in the decisions of this Panel in Associated Professional Sleep Societies v. l.c./Li Chow,WIPO Case No. D2007-0695 and Columbia Insurance Company, Shaw Industries Group Inc. v. Adminstrator, Domain,WIPO Case No. D2007-0583). Therefore, in this case whilst it seems likely that the Respondent is correct when she asserts that these links were automatically generated, it does not necessarily follow that she had no influence over the type of links that appeared.”
6.22 Given that the Domain Name has no obvious generic meaning that might explain the appearance of banking related links, and in the absence of any further explanation from the Respondent as to their appearance, these links constitute evidence of bad faith.
6.23 Further, there is the less than compelling explanation given by the Respondent in this case as to why the Domain Name was chosen. It claims to have registered a meaningless combination of letters, but no real explanation is given as to why it might have decided to do this, still less is there an explanation of why this particular “meaningless” combination was chosen over any other. Perhaps there might be an innocent explanation for this registration. Perhaps the Domain Name is merely one of an extensive set of registrations by the Respondent all of which comprise similar “meaningless” combinations of five letters. But no such explanation or evidence of this sort is proffered by the Respondent, notwithstanding the central importance of a registrant's intent and knowledge when it comes to the assessment of bad faith. In the opinion of the Panel this silence on the part of the Respondent is significant. Evidentially, it is the dog that did not bark2.
6.24 These factors when considered together are sufficient in the Panel's opinion to justify a finding of bad faith registration and use.
6.25 There is also in this case the fact that the Respondent has used a domain privacy service in relation to the Domain Name. The Complainant contends that by means of this service the Respondent is trying to hide its identity. The Respondent maintains that this is not the case and that the service has been adopted for the legitimate purpose of the reduction of spam.
6.26 Whilst not determinative, the Panel accepts for the reasons set out in Compagnie Gervais Danone v. Domain Management, Syed Hussain,WIPO Case No. D2008-1239, that the Respondent's use of such a service is a factor that also points in the direction of bad faith. There are “privacy” services available that provide changing email addresses so as to deal with the issue of spam and yet still disclose the identity of the registrant. Rather than use such a service, the Respondent has instead opted to hide details of its name. No good reason is offered by the Respondent for having done this.
6.27 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of 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, be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: October 19, 2009
1 The links are in French. Parking pages will often generate the links dynamically in a manner that is partially driven by the location of the viewer of the page. It, therefore, seems likely that the links listed are those that were generated in respect of an Internet user accessing that page in France.
2 “Inspector Gregory: ‘Is there any other point to which you would wish to draw my attention?'
Holmes: ‘To the curious incident of the dog in the night-time.'
‘The dog did nothing in the night time.'
‘That was the curious incident,' remarked Sherlock Holmes.”
“Silver Blaze" by Sir Arthur Conan Doyle.
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