The Complainant is Crédit industriel et commercial S.A. of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”). 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 December 2, 2016. On December 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 9, 2016 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 December 13, 2016.
The Center verified that the Complaint together with the amended 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 December 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2017.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on January 9, 2017. 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, Crédit industriel et commercial S.A., in abbreviated form CIC, is the oldest deposit bank in France. It was set up in 1859 and has currently more than 4.7 million clients. More than 2,000 agencies are distributed in France and 38 abroad.
The Complainant submitted evidence that it is the owner of a large number of French, European Union and international registered trademarks for CIC and CIC BANQUES (the “Trademarks”).
The Complainant indicates that it uses its Trademarks as domain names to promote its activities, for instance , , , , and that Euro-Information, the computing subsidiary of the CREDIT MUTUEL-CIC Group is also the owner of the following domain names: and .
The Complainant also brings to the Panel’s attention that it has been established in previous UDRP decisions, e.g., Crédit Industriel et Commercial S.A. v. Headwaters MB,WIPO Case No. D2008-1892 (); Crédit Industriel et Commercial S.A. v. Jeongyong Cho,WIPO Case No. D2013-1263 () and Crédit Industriel et Commercial S.A. v. Mao Adnri,WIPO Case No. D2013-2143 (), that CIC is considered to be a well-known trademark.
The disputed domain name was registered on July 27, 2016, well after the Complainant secured rights to the Trademarks. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the disputed domain name is confusingly similar to its Trademarks.
The Complainant first submits that its Trademark CIC is identically reproduced in the disputed domain name.
The Complainant also contends that the addition of the term “bank” which describes the core activity of the Complainant is not enough to avoid confusion, quite to the contrary. It quotes UDRP decisions according to which such an addition even strengthens the likelihood of confusion, inter alia, Crédit Industriel et Commercial S.A. v. CIC Banq,WIPO Case No. D2016-1875 (). The Complainant also indicates that confusion is increased by the fact that the disputed domain name is highly similar to the Complainant’s Trademarks and domain names , , , , , and .
Finally, the Complainant contends that the use of the generic Top-Level Domain (“gTLD”) “.net” as well as a hyphen between “bank” and “CIC” does not affect the confusing similarity.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that it has rights in the Trademarks CIC and CIC BANQUES and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
In substance, the Complainant contends that the Respondent (i) has never been known and is not known under the wording “CIC” or “BANK CIC”; (ii) has not been licensed or authorized by the Complainant to register the disputed domain name; (iii) cannot assert that its use of the disputed domain name is in connection with a bona fide offering of goods or services or a noncommercial use, as the domain name is inactive; (iv) is not related in any way to the Complainant’s business.
(c) The disputed domain name was registered and is being used in bad faith.
The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.
The Complainant first underlines the strong reputation and the well-known character of its Trademarks CIC and CIC BANQUES. It also contends that the disputed domain name identically reproduces the CIC Trademark, in association with the descriptive wording “bank”.
The Complainant submits, relying on previous UDRP decisions, that the notoriety of a trademark creates a prima facie presumption of bad faith registration.
The Complainant also contends that the anonymous registration of the disputed domain name, with the purpose of avoiding to be contacted and/or for escaping liability, demonstrates bad faith registration, as was established in Confédération Nationale du Crédit Mutuel v. Fernand Macia / Registration Private / Domains By Proxy, LLC / DomainsByP,WIPO Case No. D2015-1699 ().
The Complainant further contends that the passive holding of the disputed domain name, combined with circumstances such as the Complainant’s well-known Trademarks and bad faith registration, constitutes bad faith use.
The Complainant also submits that the active use of email addresses with the “@” suffix which may be used for commercial emailing, spamming, or phishing purpose supports the idea that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
Finally, the Complainant refers to its duty as a banking group to prevent counterfeiting and phishing attempts to protect its clients. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to CIC and CIC BANQUES.
Secondly, the disputed domain name fully incorporates the Complainant’s CIC Trademarks in which the Complainant has exclusive rights. The addition of the generic word “bank” does not avoid confusion or distinguish the disputed domain name from the Trademark CIC. In fact, since the word “bank” describes the Complainant’s core services, this Panel finds that the addition of this generic word is more likely to increase confusion (see Barclays Bank PLC v. Arthur Kulik / Whois Privacy Protection Service, Inc.,WIPO Case No. D2010-1992 (); Barclays Bank PLC v. PrivacyP, Sanjay Jha,WIPO Case No. D2011-1014 () and Crédit Industriel et Commercial S.A. v. CIC Banq,WIPO Case No. D2016-1875 ()). Furthermore, the similarity between the disputed domain name and the Complainant’s Trademarks and domain names increases the confusion.
Thirdly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.net” to the disputed domain name, as well as a hyphen, do not constitute elements so as to avoid confusing similarity for purposes of the Policy.
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s CIC and CIC BANQUES Trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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 or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.”
This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.
Moreover, this Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business or other organization, has been commonly known under the wording “CIC” or “BANK CIC” or that the Respondent is related in any way to the Complainant’s business.
In light of the Complainant’s asserted facts, the Panel finds that no license or authorization of any kind to use the Complainant’s Trademarks has been granted to the Respondent. Previous UDRP decisions inferred from this lack of license or authorization that the Respondent had no rights or legitimate interests in respect of the disputed domain name, inter alia, Crédit Industriel et Commercial S.A. v. CIC Banq,WIPO Case No. D2016-1875 ().
After having examined the website operating under the disputed domain name, as evidenced by the Complainant and the Panel’s own research and findings, this Panel finds that the website currently does not show any activities.
Therefore, and in view of the evidence of the Complainant, this Panel finds that there is no evidence showing that the Respondent has used the disputed domain name in connection with a bona fide offering of goods and services.
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four 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. Paragraph 4(b) of the Policy reads:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith.”
First of all, with regard to the Respondent’s registration of the disputed domain name, this Panel believes, given the reputation and well-known character of the Complainant’s Trademarks, that the Respondent must have known and been aware of the Complainant’s rights on the prior CIC and CIC BANQUES Trademarks and the associated products and services at the time of registration of the disputed domain name.
Such conclusion is further evidenced by the fact that the Complainant’s CIC Trademark is incorporated entirely into the disputed domain name. A similar approach was also adopted in the previous UDRP decision concerning the CIC Trademark (Crédit Industriel et Commercial S.A. v. Beijinghongshanhushuizushangmaoyouxiangongsi,WIPO Case No. D2007-1818).
The Complainant also demonstrates that the Respondent used a WhoIs proxy service to keep his identity private. Taking into account the banking activities of the Complainant and the related heightened counterfeiting and fishing attempts, this Panel concurs with UDRP decisions considering that a deliberate concealment of identity may be a further indication of registration in bad faith, see Confédération Nationale du Crédit Mutuel v. Fernand Macia / Registration Private / Domains By Proxy, LLC / DomainsByP,WIPO Case No. D2015-1699 (); TTT Moneycorp Limited. v. Diverse Communications,WIPO Case No. D2001-0725 () and Schering Corporation v. Name Redacted,WIPO Case No. D2012-0729 ().
Finally, and most telling as to the Respondent’s likely motivation in registering the disputed domain name, it has used the English word “bank” to trade off the Complainant’s mark which uses the French “banque”; this very much indicates a bad faith attempt to confuse consumers.
Therefore, for all the above mentioned reasons, the Panel concludes that the Respondent has registered the disputed domain name in bad faith.
Furthermore, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s use of the disputed domain name.
Passive holding of domain names can, in certain circumstances of the respondent’s behaviour, be evidence of use in bad faith, as already decided in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 ().
In that regard, this Panel finds that, given the well-known character of the Complainant’s Trademarks, the concealment of identity and the possible use of email addresses with the “@” suffix, the passive holding of the disputed domain name constitutes use in bad faith.
In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under the Policy. 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.
Benoit Van Asbroeck
Sole Panelist
Date: January 23, 2017
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