Complainant is Credit Industriel et Commercial S.A, France, represented by MEYER & Partenaires, France.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / VETUR LOAN, Collosal inc, Benin. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2020. On March 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2020, 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 Complainant on March 19, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 23, 2020. 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 Respondent of the Complaint, and the proceedings commenced on March 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 15, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on April 20, 2020. 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 Complainant is a deposit bank based in France, established in 1859. Complainant has more than 4.7 million clients, and has more than 2,000 agencies in France and 38 others around the world. It is the owner of various trademark registrations for its CIC and CIC BANQUES trademarks (“CIC Marks”) including: - French registration number 1358524 CIC, registered on June 10, 1986; Complainant also utilizes its CIC Marks in various domain names it owns and operates, such as The disputed domain name Complainant alleges that the disputed domain name is confusingly similar to Complainant’s CIC Marks because it reproduces identically and entirely the CIC trademark and is essentially identical to the CIC BANQUES Mark. Complainant argues that the addition of the generic or descriptive term “assurances” is not only insufficient to distinguish the disputed domain name from Complainant’s CIC Marks but actually contributes to the likelihood of confusion in Internet users’ minds. The term “assurances” is one of the core services Complainant offers under its CIC Marks, which could lead Internet users to believe that the disputed domain name belongs to Complainant. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent is not affiliated or associated with Complainant and has never been authorized or licensed to make use of its CIC Marks. Moreover, Complainant alleges that Respondent has never been commonly known by the disputed domain name. Lastly, Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith. Complainant argues that Respondent’s passive holding of the disputed domain name does not prevent a finding of bad faith. Complainant argues that Respondent must have had knowledge of Complainant’s CIC Marks at the time it registered the disputed domain name due to the CIC Marks’ international notoriety, and Respondent’s clear targeting of Complainant’s CIC Marks. Complainant also alleges that Respondent used a proxy service to conceal its identity. Lastly, Complainant argues that the evidence of record shows no conceivable good faith basis for the registration and use of the disputed domain name. Therefore, this Panel, according to Complainant, should find that Respondent registered and is using the disputed domain name in bad faith despite its inactive status. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Furthermore, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3, states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the CIC and CIC BANQUES trademarks through its French, European Union, and International registrations. With Complainant’s rights in the CIC and CIC BANQUES trademarks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) in which each domain name is registered) is identical or confusingly similar to Complainant’s CIC Marks. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. Here, Complainant’s CIC mark is fully incorporated in the disputed domain name. The disputed domain name is also virtually identical to Complainant’s CIC BANQUES mark, merely omitting the letter “s” from the word “banques”. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s CIC Marks. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name: (i) before any notice 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 (as an individual, business or other organization) 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. In this case, the Panel finds that Complainant has made out a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the CIC Marks in any way. Furthermore, there is no evidence on record indicating that Respondent is using the disputed domain name in connection with any bona fide offering of goods or services, nor making legitimate noncommercial or fair use of it. There is also no evidence on record showing that Respondent has been commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent does not have rights or a legitimate interest in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence showing its widespread use and numerous registrations of the CIC Marks which long predate Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the CIC Marks when it registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s marks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4, see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Here, the disputed domain name completely incorporates the CIC trademark and essentially replicates the CIC BANQUES trademark. The inclusion of the descriptive term “assurances”, which is one of the core services offered by Complainant under its CIC Marks, further reflects an attempt by Respondent to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. Furthermore, from the inception of the UDRP, previous panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Some of the factors that UDRP panels have considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Id. Here, the disputed domain name incorporates Complainant’s CIC trademark and almost entirely replicates its CIC BANQUES trademark. Both of these marks clearly enjoy worldwide recognition, as previous UDRP panels have recognized. 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; Credit Industriel et Commercial v. Mao Adnri,WIPO Case No. D2013-2143. The worldwide notoriety of Complainant’s CIC Marks, along with Respondent’s failure to submit a response and the implausibility of any good faith use to which the disputed domain name can be put, makes the passive holding doctrine applicable in this case. For these reasons, the Panel finds that Respondent’s registration and use of the disputed domain name were 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 Brian J. Winterfeldt
- European Union registration number 005891411 CIC, registered on March 5, 2008; and
- International registration number 585098 CIC BANQUES, registered on April 10, 1992.
Sole Panelist
Date: April 22, 2020
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