Complainant is Crédit Industriel et Commercial, France, represented by MEYER & Partenaires, France.
Respondent is Domains By Proxy LLC / Stefano Claudio Pier, France.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2021. On December 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 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 Complainant on December 29, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 3, 2022.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on January 17, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 8, 2022.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on February 22, 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 BackgroundComplainant is the oldest deposit bank based in France, with operations since 1859. Complainant has over 4.7 million clients, including nearly 770,000 professionals and companies, and has over 2,000 agencies in France, and 38 elsewhere. Complainant uses the abbreviation “CIC” as a trademark for its services, and Complainant has several registered trademarks for variants on its CIC trademark (“CIC Trademark”), including with the term “mobile”. Complainant provided evidence of multiple trademark registrations for the CIC and CIC MOBILE signs, in multiple jurisdictions, including, inter alia:
- French trademark C.I.C. No. 1358524, registered on October 6, 1986;
- European Union trademark CIC No. 005891411, registered on March 5, 2008;
- European Union figurative trademark CIC No. 11355328, registered on March 26, 2013;
- European Union trademark CIC MOBILE No. 008364473, registered on February 10, 2010;
- French trademark CIC MOBILE No. 3760948, registered on August 18, 2010.
In addition, Complainant has registered several domain names incorporating its CIC Trademarks, such as
The disputed domain name
First, Complainant argues that the disputed domain name is confusingly similar to its registered CIC and CIC MOBILE trademarks.
Complainant claims being the owner of numerous trademarks, and underlines the well-known character of its trademarks citing an earlier UDRP decision in which the Panel noted the well-known nature of the CIC Trademarks (Credit Industriel et Commercial v. Mao Adnri Credit Industriel et Commercial S.A., (“CIC”) v. Mao Adnri, WIPO Case No. D2013-2143).
Complainant asserts that the disputed domain name is identical or at least confusingly similar to the trademarks CIC, CIC MOBILE and the domain names
Complainant also argues that the trademarks CIC and CIC MOBILE are entirely reproduced in the disputed domain name. Complainant also points out that the addition of the abbreviation “fr” for France to the trademarks CIC and CIC MOBILE reinforces the likelihood of confusion between its registered trademarks and the disputed domain name insofar as Complainant has its registered office in France. This could lead its clients to believe that the disputed domain name was registered by itself or with its consent, implying a new website dedicated to its mobile phone services.
Complainant further asserts that Respondent has no rights or legitimate interests in the disputed domain name. Indeed, Complainant states that it has not granted any license nor authorization to Respondent to register the disputed domain name and that there was/is no relationship of any kind between Complainant and Respondent.
Finally, Complainant concluded that Respondent registered and uses the disputed domain name in bad faith. Relying on the well-known and the strong reputation character of its trademarks, Complainant argues that Respondent could not have ignored Complainant’s trademarks at the time of registration of the disputed domain name. As a result, Complainant concludes that the disputed domain name was registered specifically because of the reputation of its trademarks. Furthermore, Complainant considered that the passive holding of the disputed domain name should be deemed as bad faith use.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs this Panel to “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”.
Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or a 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 has been registered and are being used in bad faith.
The onus of proving these elements is on Complainant.
A. Identical or Confusingly SimilarAccording to paragraph 4(a)(i) of the Policy, Complainant must prove that the disputed domain name is confusingly similar to the registered trademarks in which Complainant has rights.
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1). In this regard, Complainant has submitted evidence proving its rights in the CIC and CIC MOBILE trademarks.
Complainant and its CIC Trademarks enjoy a worldwide reputation. Complainant has been using the CIC trademark for decades in the area of banking and financial services. The Panel finds that this mark, owned by Complainant, is a well-known one and Complainant has rights in several CIC trademarks. Futhermore, this well-known trademark has been recognized in various previous UDRP decisions (Credit Industriel et Commercial S.A., Banque Fédérative du Crédit Mutuel v. Headwaters MB, WIPO Case No. D2008-1892 and Credit Industriel et Commercial S.A. v. Jeongyong Cho, WIPO Case No. D2013-1263).
Complainant owns numerous trademark registrations around the world. Complainant is in particular the owner of the following registered trademarks:
- French trademark C.I.C. No. 1358524, filed and registered on October 6, 1986, and covering and services in classes 35 and 36;
- European Union trademark CIC No. 005891411, filed May 10, 2007, and registered on March 5, 2008, and covering and goods and services in classes 9, 16, 35 and 36;
- European Union figurative trademark CIC No. 11355328, filed on November 19, 2012, and registered on March 26, 2013, and covering goods and services in classes 9, 16, 35 and 36;
- European Union trademark CIC MOBILE No. 008364473, filed on June 15, 2009 and registered on February 10, 2010, and covering goods in class 9;
- French trademark CIC MOBILE No. 3760948, filed and registered on August 18, 2010, and covering services in classes 35 and 36.
In addition, Complainant operates, among others, the following domain names reflecting its trademark in order to promote its goods and services:
As Complainant’s French and European Union trademark registrations predate the registration of the disputed domain name, the Panel finds that Complainant’s rights in the said trademarks have thus been established pursuant to the first element of the Policy.
The disputed domain name
Moreover, the inserted trademark is well-known and constitutes the dominant part of the disputed domain name, whereas the added element “fr” is merely descriptive. The amount of national and European Union trademarks in which Complainant has rights and the longstanding and worldwide presence of Complainant, sufficiently evidence the international renown of Complainant and its registered trademarks.
Further, the extension “.com” is not to be taken into consideration when examining the identity or similarity between Complainant’s registered trademarks and the disputed domain name, as it is viewed as a standard registration requirement (See section 1.11 of the WIPO Overview 3.0.). Indeed, the mere adjunction of a “gTLD” such as “.com” is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity (Virgin Enterprises Limited v. Guman Sulaen, Sulaen Company / Ivan Petrenkos / Leonid Duhar / Josh White, Build LMTD / Name Redacted, WIPO Case No. D2021-2689; Compagnie Générale des Etablissements Michelin v. Eduard Wolowitz,WIPO Case No. D2020-0801; De Beers Intangibles Limited v. Registration Private, Domains By Proxy, LLC /?? WIPO Case No. D2019-1450; Rolex S.A. v. Mr. Peter Kaeppeli, WIPO Case No. D2003-0569 and Swatch Ltd. v. Peter Kaeppeli,WIPO Case No. D2002-0956).
The addition of the geographical term “fr” to the trademark CIC MOBILE does not prevent a finding of confusing similarity. In this regard, WIPO Overview 3.0, section 1.8 establishes that the addition of terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name.
Therefore, the mere addition of the geographical suffix “fr”– referring to France – does not prevent the confusing similarity between Complainant’s trademark and the disputed domain name (Robertet SA v. Marie Claude Holler,WIPO Case No. D2018-1878; Accor v. Pierre Masson, WIPO Case No. D2018-1645; JD Sports Fashion (France) S.A.S. v. Li Dong, WIPO Case No. D2016-1984; and Sodexo v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Name Redacted,WIPO Case No. D2021-2753).
For all of the above-mentioned reasons, the disputed domain name is confusingly similar to the registered trademarks in which Complainant has rights, and therefore the condition of paragraph 4(a)(i) is fulfilled.
B. Rights or Legitimate InterestsUnder Policy paragraph 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the disputed domain name and then the burden of production, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (See WIPO Overview 3.0, section 2.1; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Domain Administrator, See PrivacyGuardian.org / Ghuilo Dhulio, WIPO Case No. D2020-2200).
Respondent is neither affiliated with Complainant in any way nor has it been authorized by Complainant to use and register its registered trademarks, or to seek registration of any domain name incorporating them. Furthermore, Respondent cannot claim prior rights or legitimate interest in the disputed domain name as the registered trademarks precede the registration of the disputed domain name with many years.
There is no evidence that Respondent is commonly known by the disputed domain name or the CIC MOBILE trademark, in accordance with paragraph 4(c)(ii) of the Policy. As the disputed domain name is confusingly similar to Complainant’s well-known registered trademarks that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.
Respondent is not authorized or licensed in any way by Complainant to use its registered trademarks, or to seek registration of any domain name incorporating them. In previous decisions, UDRP panels found that in the absence of any license or permission from Complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed (Virgin Enterprises Limited v. Guman Sulaen, Sulaen Company / Ivan Petrenkos / Leonid Duhar / Josh White, Build LMTD / Name Redacted WIPO Case No. D2021-2689; Linklaters LLP v. WhoisGuard Protected / Cindy Smith, WIPO Case No. D2019-0941; LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).
Finally, there is no evidence that Respondent, before any notice of this dispute, was using or had made 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, in accordance with paragraph 4(c)(i) of the Policy.
As mentioned, the disputed domain name which incorporates Complainant’s trademark points to an inactive webpage. Such passive holding of the disputed domain name cannot constitute a bona fide offering of goods and services under the Policy (See Philip Morris USA Inc. v. Gabriel Hall, WIPO Case No. D2015-1779). As Respondent is not actively using the domain name, there is no legitimate use that would give rise to a legitimate right or interest in the domain name (see Société Nationale des télécommunications: Tunisie Telecom v. Isamel Leviste,WIPO Case No. D2009-1529). Hence, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Given Complainant’s goodwill and its international renown, as well as the nature of the disputed domain name which is confusingly similar to the latter’s registered trademarks, the Panel finds that there is no plausible circumstance in which Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights. In addition, Respondent fails to show any intention of noncommercial or fair use of the disputed domain name.
Therefore, the Panel considers that Complainant has made a prima facie case showing Respondent’s lack of rights to or legitimate interests in the disputed domain name. As Respondent has failed to respond, the latter fails to rebut the prima facie case established by Complainant.
Considering the above circumstances, the Panel finds, on the balance of probabilities, that Respondent has no rights or legitimate interests in respect of the disputed domain name and the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithTo fulfill the third requirement of the Policy, Complainant must prove that the disputed domain name was registered and used in bad faith.
1) Registration in bad faithBad faith can be found where Respondent “knew or should have known” of Complainant’s trademark rights and, nevertheless registered a domain name in which they had no rights or legitimate interests (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320 and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). The Panel considers Complainant’s registered trademarks well-known (Credit Industriel et Commercial v. Mao Adnri Credit Industriel et Commercial S.A., (“CIC”) v. Mao Adnri, WIPO Case No. D2013-2143). Given Complainant’s worldwide presence and its trademark registrations all around the world, the Panel finds it strongly unlikely that Respondent was not aware of Complainant’s rights in said trademark. Besides, previous UDRP panels have also 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” (See section 3.1.4 of the WIPO Overview 3.0).
The Panel finds it implausible that Respondent was unaware of Complainant when it registered the disputed domain name.
Firstly, Complainant is well-known as mentioned above due to international presence. Secondly, the composition of the disputed domain name
Thirdly, Complainant’s registered trademark registrations significantly predate the registration date of the disputed domain name. In this regard, previous UDRP panels have established that knowledge of Complainant’s trademarks, at the time of registration of a disputed domain name proves bad faith registration (Alstom v. Domain Investments LLC,WIPO Case No. D2008-0287; NBC Universal Inc. v. Szk.com, WIPO Case No. D2007-0077). Furthermore under paragraph 2 of the Policy, it is established that when someone registers a domain name, “he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party”. It means that it was Registrant’s duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering said domain name (Compagnie Gervais Danone contre Gueorgui Dimitrov / NETART, WIPO Case No. D2009-0901; Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002‑0806; Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000‑1397).
A quick CIC or CIC MOBILE trademark search would have revealed to Respondent the existence of Complainant and its trademark. Respondent’s failure to do so is a contributory factor to its bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling, WIPO Case No. D2008-0226). Even supposing that Respondent was not aware of the possibility of searching trademarks online before registering a domain name, a simple search via any search engine using the keyword CIC MOBILE demonstrates that all first results relate to Complainant’s products.
Considering the worldwide reputation of Complainant’s Company and registered trademarks, the Panel finds it very unlikely that Respondent was unaware of the existence of Complainant and its trademark at the time of registration of the disputed domain name. It is most likely to be believed that Respondent registered the disputed domain name based on the notoriety and attractiveness of Complainant’s trademark to divert Internet traffic to its website. Hence, Respondent has not demonstrated that the registration of the disputed domain name was done in good faith.
Therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith.
2) Use in bad faithThe disputed domain name directs to an inactive page. There is no evidence of advertising, promotion or display to the public of the disputed domain name, and no positive action being undertaken by Respondent in relation to the disputed domain name. Furthermore, the state of inactivity does not mean that the disputed domain name is used in good faith. On the contrary, passive holding does not preclude a finding of bad faith: “A principle widely adopted by panels since shortly after the inception of the UDRP has been to examine all the surrounding circumstances in which a disputed domain name may appear to be, or is claimed to be, held passively without any evident usage or purpose” (Cleveland Browns Football Company LLC v. Andrea Denise Dinoia, WIPO Case No. D2011-0421).
Whereas section 4(b) of the Policy sets out various criteria which are evidence of registration and use of a domain name in bad faith under the Policy which are non-exclusive, UDRP panels have historically found that there can be a finding of registration and use in bad faith where there is passive use of a well-known trademark in a domain name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.
D2000-0003, and Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).
Under the passive holding doctrine, bad faith use is more likely when Respondent passively holds the disputed domain name, especially when the disputed domain name incorporates a famous trademark (see e.g., Hugo Boss Trade Mark Management GmBH & Co. KG, et al. v. Private Registration/George Kara, WIPO Case No. D2015-0666). Similarly, reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith.
It seems that Respondent is attempting to benefit from the fame of Complainant’s registered trademarks and it appears more likely than unlikely that Respondent’s primary motive in registering and using the disputed domain names was to capitalize on or otherwise take advantage of Complainant’s trademark rights, through the creation of initial interest of confusion. Also, it is likely that Respondent registered the disputed domain name to prevent Complainant from using their trademarks in the disputed domain name. This type of conduct may constitute evidence of Respondent’s bad faith (L’Oréal v. Chenxiansheng, WIPO Case No. D2009-0242).
Previous UDRP panels have also 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” (See section 3.1.4 of the WIPO Overview 3.0). Besides, UDRP panels may take judicial notice of the repute of a trademark within their personal knowledge where it cannot reasonably be contested (See section 4.8 of the WIPO Overview 3.0.).
It is most likely to be believed that Respondent has no legitimate interest or rights in the disputed domain name. The fact for Respondent to choose a domain name virtually identical to Complainant’s trademarks and official domain names to direct Internet users to an inactive page cannot amount to a good faith use of the disputed domain name (Courtney Kellogg v. Vance Larson, WIPO Case No. D2007-0085 and RuggedCom, Inc. v. LANstore, Inc, WIPO Case No. D2005-0760).
Given Complainant’s goodwill and international renown, as well as the nature of the disputed domain name which is confusingly similar to the latter’s registered trademarks, the Panel finds it impossible to conceive a plausible circumstance in which Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights. It appears rather obvious that Respondent has registered and used the disputed domain names with full knowledge of Complainant’s prior rights. The addition of the geographical term “fr” was not made in order to make a difference, but rather to add words that could well be connected to the business of Complainant.
Therefore, as passive holding evidences bad faith registration and use (Union InVivo v. Name Redacted, WIPO Case No. D2020-1188) the Panel finds that the disputed domain name has been registered and is used in bad faith (Linxens Holding v. Benoit Bevis,WIPO Case No. D2017-1997; Bouygues S.A. v. Rafael Vivier, WIPO Case No. D2019-1401; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003and CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400).
In light of the above, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under 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
Nathalie Dreyfus
Sole Panelist
Date: March 8, 2022