The Complainant is Credit Industriel et Commercial S.A. of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Samir Andrea, 345645 of Torino, Italy. 2. The Domain Names and Registrar
The disputed domain name is registered with Register.IT SPA. The disputed domain name is registered with eNom, Inc. (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2017. On January 25, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On January 26, 2017, the Registrars transmitted by email to the Center their 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2017.
The Center appointed Alexander Duisberg as the sole panelist in this matter on March 7, 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 is a limited company based in France. The Complainant is a French deposit bank. Its business activities are in the banking and financial sector. It operates through representative offices in France and around the world, including Italy, where the Respondent is supposedly located.
The Complainant has rights in the following trademarks consisting in or including the sign “cic”: the French trade mark CIC Reg. No. 1358524, registered on June 10, 1986 and renewed; the European Union trade mark CIC Reg. No. 5891411, registered on March 5, 2008, and International trade mark CIC BANQUES Reg. No. 585099, registered on April 10, 1992 and renewed (the “CIC Trademarks”).
Furthermore, the Complainant holds domain names containing the term “cic”, inter alia: , , and (the “CIC Domains”).
The disputed domain names and were registered on December 27, 2016. The disputed domain name resolves to a website with the following message: “This website is temporarily unavailable”. The disputed domain name displays a message stating that the domain name has been suspended by ICANN. 5. Parties’ Contentions A. Complainant
The Complainant evidences its previous CIC Trademarks which refer to banking and financial services and also CIC domain names that it owns. The Complainant points out that the CIC Trademarks are well-known trademarks in the field of banking and financial services.
The Complainant claims that the disputed domain names and are identical or at least confusingly similar to its CIC Trademarks. According to the Complainant the disputed domain names integrally reproduce its CIC Trademarks. The sole difference between the disputed domain names and the CIC Trademarks is the mere addition of the descriptive word “bank” and a dash. The Complainant states that the addition of the word “bank” as a suffix does not alter the risk of confusion with the well-known CIC Trademarks. On the contrary, according to the Complainant adding the word “bank” would even increase the likelihood of confusion between the disputed domain names and the CIC Trademarks because the term “bank” refers specifically to the Complainant’s main business. Besides, the Complainant asserts that the generic Top-Level Domains (“gTLDs”) “.info” and “.online” would lack any distinctive character.
Furthermore, the Complainant states that the Respondent has no rights or legitimate interests in the disputed domain names since the Respondent is not related in any way to the Complainant’s business: It is not one of its agents and does not carry out any activity for, or has any business with the Complainant. Moreover, no license or authorization has been granted to the Respondent to make any use, nor apply for registration of the disputed domain names. The Respondent is not currently and has never been known under the wording “cic” or “cic bank”. Having regard to the well-known character of the CIC Trademarks in the field of banking and financial services, the Complainant asserts that the Respondent could not have ignored the CIC Trademarks when registering the disputed domain names.
According to the Complainant the disputed domain names have been registered and used in bad faith. The Complainant points out that both disputed domain names have remained unused since their registration which would constitute bad faith use as “passive holding”. Moreover, the provided contact details in the WhoIs data of the disputed domain names seem to be false or fictitious. In addition, the Respondent’s email address stated in the WhoIs data of the disputed domain names occurs in connection with other infringing domain names.
Against this background, the Complainant requests that the Panel orders the disputed domain names to be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions and was notified of its default on March 2, 2017. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the disputed domain names are 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; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel acknowledges the consensus view − as set forth in paragraph 4.6 of the WIPO overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) - that the Respondent’s default to respond to the Complaint does not automatically result in a decision in favor of the Complainant. The Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in the UDRP proceeding. In view of the Panel, the Complainant has established sufficient evidence in its favor in the case at hand. A. Identical or Confusingly Similar
The Panel finds that the disputed domain names and are confusingly similar to the Complainant’s CIC trademarks, and, thus, finds the requirement of paragraph 4(a)(i) of the Policy to be met.
UDRP panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name (see Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307). The addition of a dictionary term does not serve to distinguish the domain name from the trademark, but may reinforce the association of the complainant's trademark with the domain name (see Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755).
This is the case here. The disputed domain names completely incorporate the term “cic” which is the distinctive element of the Complainant’s CIC Trademarks. The term “bank” within the disputed domain names is of purely descriptive character (see N.M. Rothschild & Sons Ltd. v. Fine Art Investments Ltd.,WIPO Case No. D2001-1029) and cannot rule out confusing similarity. To the contrary, the term “bank” may increase the confusing similarity with the Complainant’s trademarks, because the term “bank” refers to the main business activity of the Complainant. As such, the average consumer will associate the disputed domain names with the Complainant. This applies even more because one of the CIC Trademarks contains the French term “banques” which causes even a higher degree of similarity between the CIC Trademarks and the disputed domain names.
The generic gTLDs “.info” and “.online” are not of distinguishing effect and can be ignored when comparing the disputed domain names to Complainant’s trademarks. B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and pursuant to paragraph 4(a)(ii) of the Policy.
In line with previous UDRP decisions, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names, in order to shift the burden of production of evidence to the Respondent (see, inter alia, Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Respondent has not filed any Response to the Complaint and therefore has not alleged any facts or elements to justify rights or legitimate interests in the disputed domain names. Moreover, the Complainant maintains that the Respondent is not related in any way to its business and that no license or authorization has been granted to the Respondent to make any use, nor apply for registration of the disputed domain names.
The Complainant has therefore established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, unrebutted by the Respondent.
Furthermore, the disputed domain names remain unused since their registration. In addition, there is a lack of correct WhoIs contact details regarding the registrant of the disputed domain names. Hence, there are neither indications for a bona fide offering of goods and services of the Respondent, nor for a noncommercial or fair use of the disputed domain names. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names and have been registered and are being used in bad faith according to paragraph 4(a)(iii) of the Policy.
The Panel shares the holdings of previous UDRP panel decisions which have recognized the CIC Trademarks as well-known (see Credit Industriel et Commercial S.A., Banque Fédérative du Crédit Mutuel v. Headwaters MB,WIPO Case No. D2008-1892; Credit Industriel et Commercial S.A. v. Jeongyong Cho,WIPO Case No. D2013-1263; Credit Industriel et Commercial v. Mao Adnri,WIPO Case No. D2013-2143).
The Panel holds that the Respondent knew or must have known about the well-known CIC Trademarks when registering the disputed domain names. The addition of the term “bank” in both disputed domain names could not be chosen randomly. These registrations are sufficient evidence that the Respondent was clearly aware of the business activities of the Complainant under the CIC Trademarks. Hence, in view of the Panel the Respondent deliberately chose the disputed domain names and to mislead the Internet users who are searching for the banking services of the Complainant.
The Complainant has also established sufficient evidence that the disputed domain names are being used in bad faith. The apparent lack of so-called active use of a domain name without any active attempt to sell or to contact the trademark holder (passive holding) does not prevent such finding of bad faith use. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith (see paragraph 3.2 of the WIPO Overview 2.0). Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no Response to the Complaint having been filed, and the registrant's concealment of its identity. Also the passive holding of domain names that incorporates a widely known trademark like the CIC trademarks of the Complainant without an obvious use for an Internet purpose constitutes bad faith (see Credit Industriel et Commercial S.A. v. Zabor Mok,WIPO Case No. D2015-1432).
These cumulative circumstances found to be indicative of bad faith are fulfilled in the present case. The Respondent has taken active steps to conceal its true identity and appears to have provided false contact details. Moreover, the Respondent’s email address stated in the WhoIs data of the disputed domain names occurs in connection with other domain names that contain third-party trademarks. Finally, since the Respondent has never replied to the Complaint at hand, the Respondent has provided no evidence of any actual or any contemplated good faith use of the disputed domain names. To the contrary, the Complainant has established that the Respondent has activated an email server for the disputed domain name , which allows sending and receiving emails for potentially fraudulent purposes. 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. 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 names and be transferred to the Complainant.
Alexander Duisberg
Sole Panelist
Date: March 21, 2017
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