The Complainant is Crédit Industriel et Commercial S.A., France, represented by MEYER & Partenaires, France.
The Respondent is Ulrike Berg, Germany.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2021. On November 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2021, 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 November 29, 2021 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 December 1, 2021.
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 December 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2021.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on January 12, 2022. 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 BackgroundThe Complainant is CREDIT INDUSTRIEL ET COMMERCIAL S.A., in abbreviated form CIC, a limited company registered under the laws of France. Founded 1859, the company was nationalized in 1982 and re-privatized in 1997, before the holding Fédération du Crédit Mutuel Centre Est Europe became the majority shareholder of CIC.
The Complainant has currently more than 4.7 million clients, among them almost 770,000 professionals and businesses. More than 2,000 agencies are located in France and 38 abroad. The Complainant has set up and activated a website located at “www.cic.fr”, through which its clients can be informed about the services offered by the group and also have online access to their bank accounts for managing them thanks to a specific secured interface.
The Complainant is owner of a large number of trademarks consisting of or including the sign “CIC” in France and abroad, inter alia:
- “CIC” French trademark No. 1358524 registered on June 10, 1986
- “CIC” European Union (“EU”) trademark No. 005891411 registered on May 10, 2007
- “CIC” EU trademark No. 11355328 registered on November 19, 2012
- “CIC BANQUES” International trademark No. 585099 registered on April 10, 1992
- “CIC BANQUES” French trademark No. 1691423 registered on September 5,1991
- “CIC BANQUES” International trademark No. 585098 registered on April 10, 1992
- “CIC BANQUES” French trademark No. 1682713 registered on July 24, 1991.
The Complainant and its affiliates use these trademarks as domain names to promote its activities, inter alia:
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The disputed domain name was registered November 7, 2021 and does not resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant claims the disputed domain name is similar to its trademarks CIC and CIC BANQUES. The generic Top-Level Domain (“gTLD”) “.info” does not affect the confusing similarity. “CIC” is identically reproduced in the disputed domain name. The added term “banque” is a direct reference to the Complainant’s core activity. The sole distinctive part of the disputed domain name is the trademark CIC.
The term “banque” associated with the well-known trademark CIC creates a risk of confusion for Internet users, because they will believe that the disputed domain will resolve to a website belonging to the Complainant’s group.
The Complainant furthermore alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not related in any way to the Complainant’s business nor has ever been known under the wordings CIC or BANQUE CIC. The Complainant has not granted a license or authorization to anyone to make any use or apply for registration of the disputed domain name.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name is highly confusingly similar to the well-known trademarks CIC and CIC BANQUES. In similar cases, panels have decided that the notoriety of a complainant’s trademark creates a prima facie presumption that the respondent registered the domain name for the purpose of selling it or to attract commercial gain by creating likelihood of confusions with marks. The same prerequisite is given in this case. The Respondent made the choice of associating the trademark CIC with the dictionary French word “banque” which directly refers to the main field of activity of the Complainant. It is therefore a clear indication that the Respondent necessarily had the Complainant’s trademark in mind when it registered the disputed domain name. Even if the disputed domain name does not resolve to an active website, only a bad faith use is conceivable due to the bad faith registration, the incorporation of the entire trademarks and the reputation of these trademarks.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a 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 (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s CIC and CIC BANQUES trademarks, in which the Complainant has established rights through registration and use.
The disputed domain name incorporates the entirety of the Complainant’s trademark CIC preceded by only the term “banque”. Section 1.8 of the WIPO Overview 3.0 reads: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” “Banque”, the French word for bank, is a descriptive term, and does not prevent a finding of confusing similarity with the trademarks “CIC”.
Comparing the disputed domain name to the trademark CIC BANQUES, only the order of the words was reversed and the “s” in “BANQUES” was deleted. Section 1.9 of the WIPO Overview 3.0 reads: “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Under the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant.”
CIC BANQUES is clearly recognizable in the meaning of section 1.9 despite the modification.
In addition, gTLDs are generally disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD (see section 1.11 of the WIPO Overview 3.0).
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (see section 2.1 of the WIPO Overview 3.0). The Panel notes that the Respondent did not submit a response.
The Complainant makes its prima facie case by demonstrating without contradiction that it has not authorized or granted a license to the Respondent to use its marks and that the Respondent has not been commonly known by the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Complainant’s trademarks are well-known in the field of banking and financial services, which is evident by the decade-long use and the number of customers. This conclusion has already been reached by previous panels (seeWIPO Case No. D2016-2447 Crédit Industriel et Commercial S.A v. Registration Private, Domains By Proxy, LLC concernant
Section 3.2.2 of the WIPO Overview 3.0 reads: “Knew or should have known: Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The reputation of the trademarks, the fact that the disputed domain contains a direct reference to the Complainant's core business with the term “banque” indicate that the Respondent was aware of the Complainant’s trademarks. The failure of the Respondent to react in any way to the procedure reinforces the impression that there is no bona fide registration.
The Panel therefore finds that the disputed domain was registered in bad faith.
The disputed domain name does not resolve to an active website. Section 3.3 of the WIPO Overview 3.0 states that “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”.
The bad faith registration, combined with the clear reference to the Complainant's core business, the failure to submit a response and the lack of plausibility for a bona fide use lead to the conclusion of a bad faith use.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Christian Gassauer-Fleissner
Sole Panelist
Date: January 27, 2022