The Complainant is Credit Industriel et Commercial S.A. of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Zabor Mok of Paris, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2015. On August 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2015.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on September 30, 2015. 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
The Complainant, Credit Industriel et Commercial, is a French banking group known as the oldest deposit-banking group in France (since 1859). The Complainant is the fourth largest bank in France.
The Complainant carries on the businesses of retail banking, corporate banking, private banking, capital development and insurance services.
The Complainant is the registered owner of a large number of trademarks consisting in or including the wording CIC in France and abroad:
- The French trademark C.I.C., No. 1358524, registered on June 10, 1986, in classes 35 and 36, renewed on February 21, 2006;
- The community trademark CIC, No. 005891411, in classes 9, 16, 35 and 36, registered on March 3, 2008;
- The international trademark UNION EUROPEENNE DE CIC, No. 581464, in classes 35 and 36, registered on January 23, 1992;
- The international trademark CIC BANQUES, No. 585099, in classes 35 and 36, registered on April 10, 1992;
- The French trademark CIC BANQUES, No. 1682713, in classes 35, 36 and 41 registered on July 24, 1991, renewed on February 8, 2011.
The Complainant is also the registrant of several generic top level domain names (“gTLDs”) and country code top level domain names (“ccTLDs”):
- , registered on May 28, 1999, and duly renewed;
- , registered on March 6, 2006, and duly renewed;
- , registered on September 26, 2006, and duly renewed;
- , registered on June 28, 2009, and duly renewed;
- , registered on September 29, 2006, and duly renewed.
The disputed domain name was registered on March 17, 2015.
The disputed domain name is inactive as it appears to resolve to a parking page.
The Complainant tried to contact the Respondent to settle this matter amicably and found through further investigations that the Respondent’s identification data in the WhoIs record was inaccurate. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the trademark CIC in which the Complainant has rights. Indeed, the Complainant states that its trademark CIC falls into the category of a famous trademark and that the disputed domain name reproduces integrally its trademark CIC.
According to the Complainant, the gTLD “.com” has not to be taken into account as a technical and necessary part of the domain name, and the sole difference between the disputed domain name and the Complainant’s trademark consists in the addition of the generic French wording “espaceclient” and a dash.
The Complainant adds that the addition of the suffix “espaceclient” does not prevent the risk of confusion between the Complainant’s trademark and the disputed domain name in the minds of Internet users.
The Complainant considers that the trademark CIC remains the distinctive and main part of the disputed domain name, despite the addition of the generic term “espaceclient” which does not alter the risk of confusion with this trademark.
Moreover, the use by the Respondent of the suffix “espaceclient”, which could refer to an online private platform dedicated to the Complainant’s clients, used by them to consult their bank accounts online or to make wire transfers, may enhance users’ confusion with the Complainant’s trademark.
The Complainant adds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that the Respondent is not related to the Complainant’s business. The Complainant adds that the Respondent is not one of its agents and that the Respondent is not authorized or licensed to use the CIC trademark or to apply for registration of the disputed domain name .
Indeed, the Complainant adds that the Respondent is not related to the Complainant’s business and is not known under the wording “CIC Espace Client”.
Finally, according to the Complainant, the Respondent has not committed any action showing that he has rights or legitimate interests in the disputed domain name.
With respect to the third element, the Complainant contends that the Respondent registered the disputed domain name in bad faith. Indeed, the Complainant stated that given the strong reputation and the widely known nature of the CIC trademark, it is difficult to imagine that the Respondent was not aware of the Complainant’s rights to this trademark when registering the disputed domain name. The Complainant considers that the choice of the Respondent to combine the trademark CIC and the suffix “espaceclient” was not coincidental, but made to create a real and concrete correlation between the disputed domain name and the Complainant for the Complainant’s clients and other Internet users, when they try to access the Complainant’s CIC’s website.
In addition, the Complainant highlights the fact that the Respondent chose a French address and used common French words such as “espaceclient”, “rue” and “Paris” in the registration contract of the disputed domain name. This demonstrates, according to the Complainant, that the Respondent has a connection with France and is thus more likely to know the existence of the Complainant, which is widely known in France.
Moreover, the Complainant asserts that the lack of explanation of the Respondent for having registered this domain name is a further indication of bad faith.
The Complainant also contends that the Respondent uses the disputed domain name in bad faith. The Complainant alleges that the disputed domain name is used by the Respondent to redirect the Internet users to a page under construction, which does not constitute a bona fide use. Furthermore, the Complainant adds that the fact that the disputed domain name is passively held does not prevent a finding of bad faith.
Moreover, according to the Complainant, the fact that the Respondent never mentions on its website that there is no link between the Complainant and the Respondent’s website and activity demonstrates the Respondent’s bad faith use.
In addition, the Complainant asserts that the disputed domain name was registered with false contact details, which demonstrates his bad faith use.
Finally, the Complainant points out that the Respondent has activated the domain name’s email servers, which allows sending and receiving emails with any email address ending by “@”. The Complainant claims that such use disrupts its online activity and will force the Complainant to create, keep and pay for online watch dedicated to this risk.
The Complainant therefore requests the Panel to order that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel observes that the Complainant has provided evidence that it has rights in the CIC trademarks, and that the Complainant’s trademarks and domain names are still in force.
In this case, the disputed domain name is composed of the distinctive element “cic”, which is the exact reproduction of the protected CIC trademark of the Complainant, to which is added the generic terms “-espaceclient” and the gTLD suffix “.com”.
First of all, when determining whether a domain name and a trademark are identical or confusingly similar, the gTLD may be disregarded.
Furthermore, the Panel concurs with the opinion of several prior UDRP panel decisions which have held that, when a domain name wholly incorporates a complainant’s registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy (see e.g., Hoffmann-La Roche Inc., Roche Products Limited v.Vladimir Ulyanov,WIPO Case No. D2011-1474; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059).
As a consequence, regarding the disputed domain name , the Panel finds that the addition of the terms “-espaceclient” to the trademark CIC is not sufficient to exclude confusing similarity.
Moreover, with regards to the banking activity of the Complainant, the addition of the generic terms “espaceclient”, which is a French expression commonly used to designate a space reserved for the clients of a company, would rather enhance the risk of confusion with the Complainant’s trademark (see France Telecom v. Richard J.,WIPO Case No. D2006-0807).
In view of the above, the Panel considers that the Complainant has proved that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Policy outlines circumstances (Policy, paragraph 4(c)), that if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to prior UDRP panel decisions, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Complainant has made a prima facie showing that the Respondent has no authorization or license from the Complainant to use the Complainant’s trademarks, that there is no business relationship existing between the Complainant and the Respondent and that the Respondent is not itself commonly known under the disputed domain name.
The Respondent did not reply to the Complainant’s contentions and thus has provided no evidence of the circumstances specified in paragraph 4(c) of the Policy, nor any circumstances giving rise to a right or legitimate interest in the disputed domain name. The Panel also considers that, as the disputed domain name apparently resolves to a parking page, there is no bona fide offering of goods and services by the Respondent.
In view of the above, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Policy outlines non-exclusive circumstances (Policy, paragraph 4(b)) which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith.
The Panel has established that the disputed domain name is confusingly similar to the CIC trademark of the Complainant. Taking into account the reputation of the Complainant in France, where the Respondent claims to be located, the Panel finds that in all likelihood the Respondent was aware of the Complainant’s trademark at the time the disputed domain name was registered. Moreover, regarding the choice of the suffix “espaceclient”, which is a French expression commonly used to designate a space reserved for the clients of a company, it is very unlikely that the Respondent has registered the disputed domain name without bad faith.
Furthermore, the Complainant demonstrates that it has tried to contact the Respondent but it found out that the Respondent had registered the disputed domain name with fanciful contact details. Based on this observation, which is not contested by the Respondent, it appears to the Panel that the Respondent has intentionally registered the disputed domain name under a false or incorrect identity. The Panel concurs with UDRP decisions which consider that a deliberate concealment of identity and contact information may be a further indication of registration in bad faith (see Schering Corporation v. Name Redacted,WIPO Case No. D2012-0729; TTT Moneycorp Limited. v. Diverse Communications,WIPO Case No. D2001-0725).
Therefore, for all the above mentioned reasons, the Panel concludes that the Respondent has registered the disputed domain name in bad faith.
Concerning the criteria of bad faith in the use of the disputed domain name, the Panel finds that the disputed domain name is connected to an inactive page, which demonstrates that it is passively held by the Respondent.
The Panel concurs with UDRP decisions which consider that the passive holding of a domain name that incorporates a widely known trademark without obvious use for an Internet purpose could constitute bad faith use (see Schneider Electric S.A. v. LLC “All-Energy”,WIPO Case No. D2015-0388; Confédération Nationale du Crédit Mutuel v. Bryna Cytrynbaum,WIPO Case No. D2010-0165). The lack of response to the Complaint and the Respondent’s concealment of its identity are further circumstances demonstrating bad faith use.
Finally, the Respondent has provided no evidence of any actual or any contemplated good faith use by it of the disputed domain name. In particular, the Complainant asserts that the Respondent has activated the disputed domain name’s email servers, which allows sending and receiving emails with any email address ending by “@”; such use can disrupt the Complainant’s online activities and could enable the Respondent, using this email address, to realize fraudulent actions while pretending to be the Complainant.
Thus, in view of the above, the Panel finds that the Respondent has registered and is using the disputed domain name 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.
Christiane Féral-Schuhl
Sole Panelist
Date: October 15, 2015
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