ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Credit Industriel et Commercial v. Fernando Carrillo Marroquin Case No. D2023-3685 1. The Parties The Complainant is Credit Industriel et Commercial, France, represented by MEYER & Partenaires, France. The Respondent is Fernando Carrillo Marroquin, Guatemala. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 1, 2023. On September 1, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2023, the Registrar transmitted by email to the Center its verification response disclosing the registrant and contact information for the disputed domain name, which differed from the named Respondent (REDACTED FOR PRIVACY, Domain By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 7, 2023, 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 September 8, 2023. 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 September 11, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2023. The Respondent sent email communications on September 11 and 12, 2023. The Center then sent an email putting forward a possible settlement, on September 12, 2023. The Complainant did not request for a suspension of the proceedings and the Respondent failed to submit a formal response. Accordingly, the Center notified the Commencement of the Panel Appointment Process on October 11, 2023. page 2 The Center appointed Iris Quadrio as the sole panelist in this matter on October 18, 2023. 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 the oldest French deposit bank - operating since 1859 - and is currently part of one of the main European banking groups, "Crédit Mutuel Alliance Fédérale". In fact, the Complainant has currently more than 5.3 million clients, including almost 946,000 professionals and businesses and more than 1,800 agencies distributed in France and 37 abroad. The Complainant is the owner of the trademark CIC and C.I.C. in many jurisdictions, including France Reg. No. 1358524 for C.I.C. in cl. 35 and 36, registered November 21, 1986; European Union Intellectual Property Office (EUIPO) Reg. No. 005891411 for CIC in cl. 9, 16, 35, and 36, registered March 5, 2008; and European Union Intellectual Property Office (EUIPO) Reg. No. 11355328 for CIC in 9, 16, 35, and 36. The Panel has confirmed that the referred registrations are currently active and have been timely renewed. Likewise, the Complainant asserts to have online presence in Internet through, among others, its primary website "www.cic.fr" registered in 1999 which includes information on the services offered by the Complainant and where clients can get online access to their bank accounts. Lastly, the disputed domain name was registered on July 25, 2023, and resolves to a pay per click website containing links to other providers of financial and banking services (as per Annex F to the Complaint). Also, MX records have been set up for the disputed domain name (as per Annex H to the Complaint). 5. Parties' Contentions A. Complainant The Complainant claims that the disputed domain name is confusingly similar to the trademark CIC on which the Complainant has prior rights. The Complainant contends that the Respondent has no rights or legitimate interest in respect of the disputed domain name, nor is he related in any way to the Complainant. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant's trademark CIC or apply for registration of the disputed domain name. More specifically, the Complainant alleged that the Respondent has not used and/or has no demonstrable intention to use the disputed domain name except to create a likelihood of confusion with the Complainant's trademark. In fact, the Complainant claims that the Respondent has selected the disputed domain name only to intentionally lead Internet users to believe they are accessing the Complainant's website. Additionally, the Complainant demonstrated that the disputed domain name is associated with MX servers and therefore may be used for fraudulent purposes. Finally, the Complainant requests the Administrative Panel appointed in this administrative proceeding that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant's contentions. page 3 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that: (i) the disputed domain name is identical or confusingly similar with a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interest in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has trademark rights in the CIC mark by virtue of various trademark registrations. As set forth in Section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. The Panel considers that the disputed domain name is confusingly similar to the Complainant's CIC trademark since it fully includes the trademark CIC. While the addition of other terms here "online", may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy as set forth in Section 1.8 of WIPO Overview 3.0. Moreover, the ".com" generic Top-Level Domain ("gTLD") is viewed as a standard registration requirement and is generally disregarded under the first element of the confusing similarity test, as set forth in section 1.11.1 of WIPO Overview 3.0. Therefore, the extension ".info" must be ignored when comparing the disputed domain name with the trademark CIC. Based on the above, the Panel finds that the disputed domain name is confusingly similar to the trademark CIC on which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses: (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. page 4 Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name (Section 2.1 of WIPO Overview 3.0). Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name and if the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The Complainant has claimed not to have authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the CIC trademark nor there is any other evidence in the file suggesting that the Respondent has or could have rights or legitimate interest in the disputed domain name. Also, the Complainant has prior rights in the CIC trademark which clearly precede the Respondent's registration of the disputed domain name. Likewise, and as further discussed under Section 6. C of this Decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent's use of the disputed domain name appears to be merely intended to benefit from the Complainant's reputation by leading Internet users to believe that the site to which the disputed domain name relates is an official site of the Complainant. Hence, as established in section 2.5 of WIPO Overview 3.0: "Fundamentally, a respondent's use of a domain name will not be considered 'fair' if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant's mark is often central to this inquiry." In fact, the Respondent sent informal communications by email on September 11 and 12, 2023 in which he alleged not to be interested in owning the disputed domain name and that he would make it available upon its expiration date. Given these circumstances, the Panel finds that the Complainant has made out a prima facie case. Having made such prima facie case, the burden of production then shifted to the Respondent to refute the Complainant's assertion or to demonstrate bona fide use of the disputed domain name. The Respondent has not submitted a formal response to the Complaint, and the Panel is unable to consider any reasonable basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (see Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Panel therefore finds that the Respondent has no rights or legitimate interest in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy contains a non-exhaustive list of factors evidencing registration and use in bad faith. Among others, it states that it is sufficient to support a finding of bad faith the fact that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the website or location or of a product or service on the website or location. In such connection, the Complainant has submitted evidence to support that the trademark CIC is widely known and was registered and used many years before the Respondent registered the disputed domain name. When registering the disputed domain name, the Respondent has targeted the Complainant's trademark CIC to generate confusion among Internet users and benefit from the Complainant's reputation. Indeed, the Complainant has demonstrated that when searching for "cic online info" on Google, all the results lead to the Complainant. page 5 Furthermore, the fact that the disputed domain resolves to a pay-per click website containing links to other providers of financial services, means that the Respondent did not have any bona fide or legitimate purpose to use the disputed domain name. This, coupled with the fact that the links offer services competing with those of the Complainant, leads this Panel to conclude that the use of the disputed domain name encompassing the Complainant's trademark in its entirety with the term "online" to obtain click-throughrevenue amounts to a bad faith use (see Crédit Industriel et Commercial S.A. v. Super Privacy Service LTD c/o Dynadot / S Jon Grant, WIPO Case No. D2020-1099; Iflscience Limited v. Domains By Proxy LLC / Dr Chauncey Siemens, WIPO Case No. D2016-0909) Finally, the Complainant proved that MX records have been set up for the disputed domain name, which would enable the Respondent to send emails. In the circumstances, this further supports a finding of bad faith. In view of the above given reasons, the Panel finds that the Respondent has registered and used the disputed domain name 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, , be transferred to the Complainant. /Iris Quadrio/ Iris Quadrio Sole Panelist Date: November 1, 2023
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