The Complainant is Credit Industriel et Commercial S.A of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is debordo, Network Team of lokossa, Mono, Benin. 2. The Domain Names and Registrar
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2018. On November 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 22, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2018.
The Center appointed José Ignacio San Martín Santamaría as the sole panelist in this matter on January 7, 2019. 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, in abbreviated form CIC, is the oldest French deposit bank.
The Complainant is the proprietor of several trademark registrations consisting or including the sign “CIC” in France and abroad, inter alia:
- CIC French trademark No. 1358524 registered on June 10, 1986
- CIC European Union Intellectual Property Office (“EUTM”) registration No. 5891411 registered on May 10, 2007
- CIC EUTM registration No. 11355328 registered on November 19, 2012
- CIC BANQUES French trademark No. 1691423 registered on September 5, 1991
- CIC BANQUES International trademark No. 585098 registered on April 10, 1992
The disputed domain names were registered on August 31, 2018 and September 7, 2018 and are supposedly currentlyactive for a website offering bank services in French called “CIC-GESTION”. The disputed domain names resolve to phishing websites, where the Respondent collects sensitive personal data such as the name or the email address of individual persons through the contact form. 5. Parties’ Contentions A. Complainant
- The Complainant Credit Industriel et Commercial, in abbreviated form CIC, is the oldest French deposit bank. The bank has currently more than 4.7 million clients and more than 2,000 agencies in France and other jurisdictions.
- The Complainant is the owner of the above mentioned CIC and CIC BANQUES trademark registrations in France and abroad.
- The disputed domain names incorporate the Complainant’s trademark CIC. Accordingly, the disputed domain names are identical or confusingly to, the Complainant’s trademark, as recognized in other similar cases of the Center also referred to CIC trademark.
- There is no evidence of any rights or legitimate interests use in the disputed domain names by the Respondent. The Respondent apparently does not own any trademark right and has not been commonly known by the disputed domain names. No license or authorization has been granted to the Respondent to make any use of its trademark or register a domain name that includes its Trademark.
- The adoption of the disputed domain names can only be to trade off the Complainant’s goodwill and reputation, in view of the well-known character of its CIC trademarks for banking services. The added terms “gestion”, “finance-bk” are generic expressions related to banking services.
- The disputed domain names are respectively pointing to almost identical websites offering banking and financial solutions/services, suggesting a link with the Complainant.
As a consequence, the Complainant requests that the disputed domain names be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy and 15 of the Rules, the Panel shall grant the remedies requested if the Complainant proves that:
(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 and
(iii) The disputed domain names have been registered and are being used in bad faith.
Pursuant to paragraph 4(a) of the Policy and 15 of the Rules, for this purpose the 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. A. Identical or Confusingly Similar
The Complainant has trademark rights in France and the European Union for CIC and variations thereof in relation to banking services. Evidence of the well-known character of this trademark has been filed.
The disputed domain names wholly incorporate the Complainant’s trademark CIC with additional expressions as “gestion” (management in French), “finance-bk”, that can be considered as generic or descriptive in relation to banking and financial activities.
As stated in Crédit Industriel et Commercial v. Manager Builder, Builder Manager,WIPO Case No. D2018-2230:
“The disputed domain name incorporates the CIC trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term “banks”, which even is the English translation of the French term “banques” as it is reflected in Complainant’s CIC BANQUES trademark, does not avoid the confusing similarity arising from the incorporation of Complainant’s CIC trademark in the disputed domain name.”
The Panel therefore finds that the disputed domain names are confusingly similar to the Complainant’s trademarks as provided under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain names. Having done so, the burden of production shifts to the Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests (see WIPO Overview 3.0, section 2.1). Given that the Respondent has defaulted, it has not met that burden.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent’s website cannot be considered as a bona fide offering of services or fair use, since the website can mislead the consumers into believing that they are accessing the Complainant’s website. Indeed, the website does not contain any disclaimer or clarification allowing the Internet user to know that it is not the website of the Complainant, owner and user of the well-known trademark CIC in the banking sector.
In summary, the Panel finds that the paragraph 4(a)(ii) set forth in the Policy is present. C. Registered and Used in Bad Faith
According to paragraph 4(b)(iv) of the Policy, registration or use of a domain name will be considered in bad faith when:
“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”.
The Complainant’s CIC trademark is well-known precisely in relation to banking and financial services, well before the registration of the disputed domain names, as recognized in several UDRP decisions (Credit Industriel et Commercial S.A., Banque Fédérative du Credit Mutuel v. Headwaters MB,WIPO Case No. D2008-1892; Credit Industriel et Commercial S.A. v. Jeongyong Cho,WIPO Case No.
D2013-1263, or Credit Industriel et Commercial v. Mao Adnri,WIPO Case No. D2013-2143).
The Respondent’s registration of the disputed domain names wholly incorporating the Complainant’s trade mark is, in the Panels view, indicative of bad faith, since the disputed domain names resolve to websites relating to the same activities as the Complainant’s website.
As mentioned in Andrey Ternovskiy dba Chatroulette v. Alexander Ochki,WIPO Case No. D2017-0334:
“It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain names could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see
AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327)”.
Furthermore, the Panel finds that the Respondent’s websites do not contain any disclaimers of the financial institution that allegedly provides services through that website, which certainly does not correspond to the guarantees that the financial authorities usually require of this type of entity. This can also be an indication of bad faith (FINANCIERA CONFIANZA S.A.A. v. Carlos Mario Quintero Rueda,WIPO Case No. D2017-1937).
The Panel finds that the disputed domain names were registered and are being used in bad faith by the Respondent in accordance with paragraph 4(b) of the Policy. In the light of the above, the Panel finds that the Complainant has established registration and use of the disputed domain names in bad faith and concludes that paragraph 4(a)(iii) of the Policy is satisfied. 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.
José Ignacio San Martín Santamaría
Sole Panelist
Date: January 15, 2019
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