The Complainant is Crédit Industriel et Commercial of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is WhoisGuard, Inc. of Panama / Thierry Alexis of Fgura, Malta. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2018. On August 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2018, 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 August 13, 2018 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 August 14, 2018.
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 August 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2018.
The Center appointed Mihaela Maravela as the sole panelist in this matter on September 12, 2018. 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 longstanding French deposit bank; it was set up in 1859 by an imperial decree signed by Napoleon III. The company was nationalized in 1982 and re-privatized in 1997, before the holding Fédération du Crédit Mutuel Centre Est Europe becomes the majority shareholder of the Complainant. The Complainant has currently more than 4.7 million clients, among them almost 770,000 professionals and business. More than 2,000 agencies are located in France and 38 abroad.
The Complainant is the registered owner of a number of trademarks consisting of the initials CIC in France and abroad, including the following:
- the French Trademark CIC with registration number 1358524 registered as of June 10, 1986;
- the European Union Trademark CIC with registration number 005891411 registered as of March 5, 2008;
- the European Union Trademark CIC and graphic representation with registration number 11355328 registered as of March 26, 2013;
- the French Trademark COMPTE CIC MOBILE, with registration number 4361045, registered as of May 12, 2017.
The Complainant uses various domain names to promote its activities, such as , , .
The disputed domain name was registered on June 19, 2018 and currently resolves to a parking page displaying links to financial services providers. According to the evidence adduced by the Complainant, the disputed domain name was previously used to display a website directly referring to the Complainant. On the website, Internet users had the possibility to give their personal details like their names, email addresses and phone numbers in order to be contacted by CIC. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is similar to its trademarks CIC, COMPTE CIC MOBILE since the trademark CIC is entirely incorporated in the disputed domain name. The addition of generic or descriptive words, such as “mon compte”, French for “my account”, as a prefix or suffix to a well-known trademark does not alter the risk of confusion with this trademark. The generic term “mon compte” associated with the well-known trademark CIC creates a risk of confusion in Internet users’ mind. Furthermore, the confusing similarity is heightened by the notoriety of the CIC trademarks and by the registration of some other trademarks by the Complainant which combine the initials “cic” with the word “compte”.
The Complainant further submits that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name. In order to prove this element, the Complainant argues that the Respondent is not related in any way to the Complainant’s business; he is not one of its agents and does not carry out any activity for, nor has any business with it. No license or authorization has been granted to the Respondent to make any use or apply for the registration of the disputed domain name.
Further, the Complainant argues that the disputed domain name was registered in bad faith because the Respondent has registered the disputed domain name for the reason that he knew the well-known character of the trademarks CIC and the Respondent has chosen the name to create an impression of affiliation with the Complainant’s fame and reputation. Furthermore, the Complainant argues that the concealment of the Respondent’s identity should be construed as a fraudulent maneuver demonstrating his bad faith registration. With regard to the use of the disputed domain name, the Complainant shows that the disputed domain name previously activated a website directly referring to the Complainant. On the website, Internet users had the possibility to give their personal details like their names, email addresses and phone numbers in order to be contacted by CIC. The Complainant argues that such activity was clearly a phishing activity against the Complainant. Subsequently, the disputed domain name directed to a parking webpage with several links in the financial field, not only to the Complainant but also to some of its competitors, such as Boursorama Banque, ING Direct, and Banque Postale. The Respondent is therefore using the disputed domain name in order to misdirect Internet users to his website, for commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Noting the fact that the Respondent has not filed a Response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Given the evidence put forward by the Complainant, the Panel is satisfied that it proved it has rights over the CIC and COMPTE CIC MOBILE trademarks.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademarks in which the Complainant holds rights.
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, Aldermore Bank Plc v. Hildegard Gruener,WIPO Case No. D2016-1617.
Here the disputed domain name incorporates the Complainant’s trademark CIC in addition to the terms “mon compte”, which mean “my account” in French. “Compte” is also part of the COMPTE CIC MOBILE trademark of the Complainant.
The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The addition of a descriptive term does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
With regard to the “.review” generic Top-Level Domain (“gTLD”) the Panel concludes that it is irrelevant to the analysis. According to section 1.11.1 of the WIPO Overview 3.0, “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” See Blue Apron, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Jason Blackmon,WIPO Case No. D2017-1000.
This Panel concludes that the disputed domain name is confusingly similar to the trademarks of the Complainant and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it 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.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established that it holds rights over the trademark CIC and claims that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent any license or authorization to make any use or apply for the registration of the disputed domain name. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “cic”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei,WIPO Case No. D2014-0957.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati,WIPO Case No. D2014-1839.
Further, as discussed in section C below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that the Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
According to the unrebutted assertions of the Complainant, its CIC trademark is widely used in commerce well before the registration of the disputed domain name in June 2018. The disputed domain name incorporates the Complainant’s trademark and descriptive words in addition to the relevant gTLD. The website to which the disputed domain name resolved included at some point the Complainant’s trademark and imitated the Complainant’s official website. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name.
The descriptive terms “mon-compte”, that mean “my account” in French, forming part of the disputed domain name suggests some connection with the goods and services associated to the Complainant’s trademark CIC and support a conclusion that the Respondent registered the disputed domain name with knowledge of the Complainant’s CIC and COMPTE CIC MOBILE trademarks. The website now associated with the disputed domain name contains links to the Complainant competitors. All these support a finding of bad faith registration. See MasterCard International Incorporated v. Capital Conservator Group LLC,WIPO Case No. D2009-1051.
With regard to the use of the disputed domain name, the Complainant adduced evidence that currently the disputed domain name is used as a parking page that hosts links to the financial services of firms in competition with the Complainant. The provisions of paragraph 4(b)(iv) of the Policy have a direct bearing in this case, since the Respondent misleads and confuses Internet users by making them believe that the websites resolved from the links are associated with or recommended by the Complainant. For a similar finding see Credit Industriel et Commercial S.A. v. Jeongyong Cho,WIPO Case No. D2013-1263; Intesa Sanpaolo S.p.A. v. Whois Privacy Protection Service, Inc./ Ferdinando Santovito,WIPO Case No. D2014-0104.
In addition, in accordance with the evidence put forward by the Complainant and not refuted by the Respondent, before the filing of this Complaint, the disputed domain name resolved to a web page where the trademark of the Complainant was displayed, and personal information was requested from the customers (name, address, phone number). In line with similar decisions, this Panel considers that the Respondent tried to attract Internet users for commercial gain by “phishing”, that is a form of Internet fraud that aims to steal valuable personal information, and that these actions constitute bad faith registration and use pursuant to the Policy (see Halifax Plc. v. Sontaja SanduciWIPO Case No. D2004-0237; MasterCard International Incorporated v. Capital Conservator Group LLC ,WIPO Case No. D2009-1051; Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa,WIPO Case No. D2006-0614; Intesa Sanpaolo S.p.A. v. Whois Privacy Protection Service, Inc./ Ferdinando Santovito, supra; Groupama, S.A. v. Club Web, Best France,WIPO Case No. D2017-0631).
The Panel considers that under such circumstances, the Respondent has intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with the trademark of the Complainant. The website created the false impression to be an official support service website of the Complainant.
The Complainant also argued that the email servers are activated on the disputed domain name in order to enable the Respondent to send potentially fraudulent emails ending with “@” and as the Respondent has no legitimate connection to the Complainant’s business, this would amount to a further inference of bad faith. As held by other UDRP panels in similar situations, “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”. See Confederation Nationale du Credit Mutuel v. Fernand Macia / Registration Private / Domains By Proxy, LLC / DomainsByP,WIPO Case No. D2015-1699.
The following factors were also considered by the Panel as indicative of bad faith registration and use of the disputed domain name:
- the Respondent’s lack of response to the Complaint. See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210;
- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy;
- the well-known character of CIC trademarks – as held for example in Credit Industriel et Commercial S.A., Banque Fédérative du Credit Mutuel v. Headwaters MB,WIPO Case No. D2008-1892; Credit Industriel et Commercial v. Mao Adnri,WIPO Case No. D2013-2143; Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. The Respondent provided no explanations for which he registered the disputed domain name.
Furthermore, the Respondent availed of a privacy shield service to protect his identity. While the use of a privacy shield is not necessarily objectionable in itself, in the present case it contributes to the accumulation of elements pointing to bad faith registration and use. See Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler,WIPO Case No. D2016-1357.
The Panel concludes that the disputed domain name was 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.
Mihaela Maravela
Sole Panelist
Date: September 26, 2018
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