The Complainant is Credit Industriel et Commercial S.A. in Paris, France, represented by MEYER & Partenaires, France.
The Respondent is IT Administrator of Road Town, Tortola, Virgin Islands (British), Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Joe Thomas. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2013. On April 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 April 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2013. The Response was filed with the Center on May 13, 2013.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on May 24, 2013. 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
Credit Industriel et Commercial (“CIC”) is a French banking group known as the oldest deposit-banking group in France.
CIC holds 2.108 agencies in France, three branches, 36 representative offices abroad and 20.779 collaborators. In France, the group is organized around six regional banks including one in “Ile-de-France”.
CIC is engaged in four major activities, which are retail banking, private banking, capital-development and financial banking.
CIC has expanded its activities to the international market. The group covers over 50 countries all around the world such as Japan, Australia, the United States of America, China, the United Arab Emirates, Poland and Chile.
CIC is the trade name and the acronym of the Complainant, used in commerce since 1859. CIC is also the registered owner of a large number of trademarks consisting or including the wording CIC in France and abroad.
CIC is also the registrant of several generic and country code top level domain names.
The disputed domain name was registered on January 24, 2012. 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is confusingly similar to the trademark CIC. The trademark CIC of the Complainant is indeed entirely reproduced in the disputed domain name. Moreover, the addition of a word as a suffix to a well-known trademark does not alter the risk of confusion with this trademark. On the contrary, the fact that the term “finance” is descriptive and clearly identifies CIC’s activities, which essentially consist in banking and financial services, worsens the risk of confusion.
The Complainant claims that the Respondent is not related in any way to the Complainant and does not have any authorization nor licence from the Complainant to use and register the trademark CIC as a domain name. He is not a licensee, employee, subsidiary or a subcontractor of the Complainant.
The Complainant further claims that the Respondent is using the well-known trademark CIC to attract Internet users on a parking page containing commercial links directly competing with the services of the Complainant, visibly in order to obtain illegitimate profit. The commercial links, which are in French, refer to targeted advertising and promote websites offering banking and financial services such as credit or insurance services.
These elements demonstrate the bad faith registration of the disputed domain name by the Respondent. B. Respondent
The Respondent provided a response indicating that:
He registered the disputed domain name on Jan. 24, 2012, because he planned to build a blog about customs clearance experiences since he is a businessman in imports and exports business.
The term “CIC” would stand for “container imbalance charge”.
The Respondent further indicates that after online blogging for two months, he gave up since he was short of leisure time and has used the disputed domain name since May 2012, for customs clearance related pay-per-click advertising. He states that he has never offered to sell the disputed domain name to anyone.
The Respondent adds that he was contacted by a buyer who sent several emails asking to buy the disputed domain name but he never agreed to sell it.
The Respondent adds that there is no evidence showing that he has heard of any trademarks of Credit Industriel et Commercial (“CIC”) before registering the disputed domain name.
The Respondent finally adds that CIC can stand for any of the following entities:
Citizenship and Immigration Canada
China Investment Corporation
Construction Industry Council
Committee on Institutional Cooperation
Cambridge Innovation Center
Canadian International Council
Canadian Islamic Congress
Central Information Commission
Chelsea Independent College
Chemical Institute of Canada
China Investment Corporation
Chinese Industrial Cooperatives 6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the disputed domain name registered by the Respondent 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 names in question; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights.
1. The Panel finds that the Complainant has established that it is the owner of the registered trademarks CIC based on the evidence provided by the Complainant (annex F).
2. The disputed domain name consists of two different words, one consisting of the Complainant’s registered trademark and another of a generic term “finance”. The Panel considers that the addition of the generic denomination, especially when added to a famous trademark, is not sufficient to avoid confusion.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name in question.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain name in responding to a Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the burden is shifted to the Respondent to prove the contrary.
The Complainant has stated that the disputed domain name website features the Complainant’s trademark. The Complainant asserts that the Respondent has never been commonly known by the domain name. The Complainant also claims that the Respondent has no legitimate interest in the disputed domain name. There is no connection between the Respondent and the Complainant.
The Complainant asserts that no license or authorization of any kind has been given to the Respondent to use its trademark. The Respondent is not an authorized dealer of the Complainant’s services and has never had a business relationship with the Complainant.
Furthermore, the Complainant asserts that the web page of the disputed domain name resolves to a parking page containing commercial links to direct competitors of the Complainant (see Annex H). Indeed, the Panel viewed the web page and can confirm that the same does exhibit and provides links to other banking and financial entities.
The Respondent provided a response to the allegations set forth by the Complainant, indicating the following: “I registered the disputed domain name, , on Jan. 24, 2012 because I planned to build a blog about customs clearance experiences as I am a businessman in imports and exports business, and CIC stands for container imbalance charge. After online blogging on the website built on this domain name for two months, I gave up as short of leisure time and used it since May. 2012 for customs clearance related pay-per-click advertising. And I have never offered to sell the domain name to anyone”.
He then further states “There are no evidences showing that I have heard of any trademarks of CREDIT INDUSTRIEL ET COMMERCIAL when I registered the domain name and used it”.
As mentioned above, the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the disputed domain name in responding to a Complaint. Mere statements or declarations offered by a Respondent do not suffice; evidence must be filed by the Respondent to back up its allegations. In this particular case, the Respondent only filed a one page document claiming the above, and did not file any evidence backing up its allegation regarding its supposed blog site, nor did he prove to the Panel that he effectively was a businessman dedicated to imports or exports.
Furthermore, no evidence was filed to demonstrate a bona fide offering of goods or services or that he was making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain by misleadingly divert Internet consumers to his website.
From the evidence presented to the Panel, one can only conclude that the Respondent was making an illegitimate use of the disputed domain name by intentionally diverting consumers to its website by using the Complainant’s trademark in connection with the term “finance”, a service clearly provided by the Complainant.
Finally, as mentioned by other UDRP Panels, operating a parking page using a trade mark in a domain name, and providing connection to services competitive with the service mark owner, does not establish rights or legitimate interests, it actually establishes the very contrary, see Get Away Today.Com Inc. v. Warren Gilbert - , WIPO Case DCO2010-0021; Easy Gardener Products, Inc. v. Whois Privacy Protection Service, Inc. / Demand Domains, Inc., WIPO Case No. D2010 1185 ; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139 ; and Alfa Laval AB and Alfa Laval Corporate AB v. A, WIPO Case No. D2007-1881 .
Consequently, this Administrative Panel is satisfied that the Complainant has satisfied the second element, Paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. In addition, the Respondent has not been able to prove any rights of legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrate that (1) the disputed domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name is a name composed of two terms, “CIC” and “finance”. The first is a registered trademark belonging to the Complainant, the second a noun which refers to a service that includes the circulation of money, the granting of credit, the making of investments, and the provision of banking facilities; all services provided by the Complainant.
One can legitimately consider that the adoption of a domain name with the term “CIC” may be mere coincidence but, such coincidence is difficult to uphold when the term “CIC” is positioned together with the term finance, creating a likelihood of confusion with a registered trade mark which offering of services is precisely finance and banking. Therefore, one can reasonably conclude that the Respondent had knowledge of the existence of the Complainant as a Banking Company, its acronym and trademarks, especially when such acronym is positioned together with a service provided by the same company.
The above clearly suggests bad faith registration.
In addition to the above, the use given to the website, as a parking page which offers links to websites related to finance, banking, credit and insurance services, of the Complaints’ direct competitors is sufficient evidence to conclude that the Respondent was in all likelihood well aware of the Complainant’s trade mark and wanted to refer to the Complainant by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
Therefore, in accordance with paragraph 4 (b)(iii) of the Policy, the above findings lead to the conclusion that the disputed domain name in dispute has been registered and used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Rodrigo Velasco Santelices
Sole Panelist
Date: June 7, 2013
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