The Complainant is Credit Industriel et Commercial, France, represented by MEYER & Partenaires, France.
The Respondent is Gloria Weis, Benin. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Web Commerce Communications Limited dba WebN (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2019. On July 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 2019, 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 July 17, 2019.
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 July 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2019.
The Center appointed Olga Zalomiy as the sole panelist in this matter on August 14, 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 is a French bank that owns well-known CIC trademarks. The Complainant owns the following trademark registrations:
- French trademark registration for the CIC (word) mark, No. 1358524, registered on June 10, 1986;
- European Union trademark registration for the CIC (word and design) trademark, No. 11355328, registered on March 26, 2013;
- French trademark registration for the CIC BANQUES (word) trademark, No. 1682713, registered on July 24, 1991;
- French trademark registration for the CIC (word and design) trademark, No. 3961726, registered on March 8, 2013.
The Domain Name was registered on May 5, 2019. The Domain Name resolves to an online banking website. The website associated with the Domain Name displays the Complainant’s logo. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is a French bank with most offices in France and 38 in other countries. The Complainant claims that the Domain Name is identical or confusingly similar to the Complainant’s trademark. The Complainant states that it is the owner of CIC word and word and design trademark registrations in various jurisdictions. The Complainant argues that it is a standard practice to disregard applicable generic Top-Level Domain (“gTLD”) from comparison between a disputed domain name and a trademark. The Complainant claims that the Domain Name incorporates the Complainant’s CIC word trademark in its entirety. The Complainant argues that the addition of the descriptive term “bankonline”, which may be recognized by the Complainant’s customers as an identification of the Complainant’s services, does not negate confusing similarity between the Complainant’s trademark and the Domain Name. The Complainant contends that the Domain Name is also similar to the Complainant’s domain names ˂˃ and ˂˃, which reinforces the confusion. The Complainant argues that the confusion is accentuated by the notoriety of the CIC trademarks. The Complainant claims that the Domain Name is confusingly similar to its CIC and CIC BANQUES trademarks.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that the Respondent is not sponsored by or affiliated with the Complainant. The Complainant claims that the Complainant has not licensed, authorized or permitted the Respondent to register domain names incorporating the Complainant’s trademark, so the Respondent’s use of the Domain Name is not bona fide or legitimate. The Complainant submits that the Respondent is not commonly known by the Domain Name, which confirms that she has no rights or legitimate interests in the Domain Name. The Complainant argues that the Domain Name’s use to direct to an online banking website that displays the Complainant’s word and design CIC trademark, creates an impression of an affiliation with the Complainant, confirms the Respondent’s lack of rights or legitimate interests in the Domain Name.
The Complainant states the Domain Name was registered and is being used in bad faith. The Complainant claims that by registering the Domain Name that incorporates the Complainant’s well-known CIC and CIC BANQUES trademarks, the Respondent demonstrated that she registered the Domain Name for the purpose of selling it to the Complainant and that it is likely that the Domain Name was intended to be used to attract Internet users to the Respondent’s website for commercial gain by creating likelihood of confusion with the Complainant’s trademarks. The Complainant argues that it is unlikely that the Respondent was not aware of the Complainant’s trademark at the time when she registered the Domain Name, because the Respondent used the Complainant’s logo on her website. The Complainant contends that by reproducing the Complainant’s CIC trademark in conjunction with the descriptive wording “bankonline” and an imitation of the Complainant’s CIC BANQUES trademark is an indication of bad faith per se.
The Complainant claims that the Respondent is using the Domain Name in bad faith because the Domain Name directs to a website displaying the Complainant’s word and design CIC BANQUES trademark that creates the misleading impression of an affiliation with the Complainant. The Complainant contends that the Respondent’s website displays information about “CIC BANK ONLINE” and describes its financial services, which shows that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating likelihood of confusion between the Complainant’s CIC mark and the Respondent’s website. The Complainant submits that the Respondent’s use of a privacy service to hide her identity, is another evidence of bad faith. The Complainant claims that the Respondent’s use of the privacy shield to hide her identity supports conclusion of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of these elements regarding the Domain Name:
(i) the Domain Name is 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under the first UDRP element, the Complainant must prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Under section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. The Complainant satisfied the standing requirement in this case by submitting evidence of ownership of the CIC and CIC BANQUES trademarks.
The Domain Name consists of the Complainant’s CIC trademark, a hyphen, the words “bank” and “online”, and the gTLD “.com”. “Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”1 Because the CIC and CIC BANQUES2 trademarks are recognizable within the Domain Name, neither the addition of the descriptive terms “bank” or “online”, nor the addition of a hyphen would prevent a finding of confusing similarity under the first element.3 “The applicable gTLD in a domain name […] is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”4 For these reasons, the Panel finds that the Domain Name is confusingly similar to the Complainant’s CIC and CIC BANQUES trademarks.
Thus, the Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests
First, the Respondent has not been using the Domain Name in connection with a bona fide offering of goods or services. The Complainant contends that it did not authorize the Respondent to use the Complainant’s CIC trademark in any manner.
Second, the Complainant alleges, and the Respondent does not contradict, that the Respondent has not been commonly known by the Domain Name. The Respondent provided no evidence that the Respondent owns trademark registrations or registered a business under the Domain Name. The WhoIs information on file shows that the Respondent identified herself as Gloria Weis, which is different from the Domain Name.
Third, the Respondent’s use of the Domain Name is not fair, because “it falsely suggests affiliation with the trademark owner”.5 The nature of the Domain Name itself suggests affiliation between the Complainant and the Respondent because the Domain Name, which contains the Complainant’s well-known trademark and the descriptive term “bank” and “online”, directs to the website that offers online banking services. In addition, the Respondent’s website displays the Complainant’s logo.
The Panel, therefore, finds that the Complainant has made out a prima facie case in respect to the Respondent’s lack of rights or legitimate interests in the Domain Name. Once a complainant has made out the prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name.6 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.7 Because the Respondent failed to rebut the Complainant’s prima facie case, the Complainant has satisfied the second element of the UDRP. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
The Panel finds that the Respondent registered the Domain Name in bad faith. The evidence on file shows that the Complainant’s trademark is well-known. It is wellestablished that mere registration of a domain name that is confusingly similar to a well-known mark by an unaffiliated entity is evidence of bad faith8 .
Bad faith registration also may be found where, like here, a domain name, incorporates the complainant’s mark and descriptive terms9 .
The Panel also finds that the Respondent is using the Domain Name in bad faith. The Respondent is trying to capitalize on the goodwill of the Complainant’s trademark by using the Domain Name to attract, for commercial gain, Internet users to the Respondent’s website by creating likelihood of confusion with the Complainant’s marks as to the affiliation or endorsement of either the Respondent or its website. By using the Domain Name, incorporating the Complainant’s well-known trademark and which composition mirrors composition of the Complainant’s own domain names, to direct to an online banking website displaying the Complainant’s logo, the Respondent is profiting from the impression of affiliation between the Domain Name and the Complainant.
Therefore, the Panel finds that the Domain Name were registered and is being used in bad faith. The third element of the UDRP has been proved. 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.
Olga Zalomiy
Sole Panelist
Date: August 28, 2019
1 Section 1.7, WIPO Overview 3.0.
2 “Banques” means “banks” in French.
3 Section 1.8, WIPO Overview 3.0.
4 Section 1.11.1, WIPO Overview 3.0.
5 See section 2.5.1, WIPO Overview 3.0.
6 Section 2.1, WIPO Overview 3.0.
7 Id.
8 Section 3.1.4, WIPO Overview 3.0.
9 Section 3.2.1, WIPO Overview 3.0.
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