ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Credit Industriel et Commercial v. Ian Beckleine Case No. D2023-3693 1. The Parties The Complainant is Credit Industriel et Commercial, France, represented by MEYER & Partenaires, France. The Respondent is Ian Beckleine, United Kingdom. 2. The Domain Name and Registrar The disputed domain name is registered with IONOS SE (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 1, 2023. On September 4, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2023, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 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 11, 2023. The Center verified that the Complaint, together with the amendment to 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 15, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 6, 2023. The Center appointed Warwick Smith as the sole panelist in this matter on October 13, 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. page 2 4. Factual Background The Complainant is the oldest deposit bank in France. It was established by an imperial decree issued by Napoleon III in 1859. It was nationalized by the French government in 1982 but re-privatized in 1997. It is now part of one of the main European banking groups, Credit Mutuel Alliance Federale. The Complainant currently has more than 5.3 million clients, including 946,000 professional or business entities. It operates over 1,800 agencies in France, and a further 37 in other countries. The Complainant's principal website is at "www.cic.fr" ("the Complainant's website"). Through the Complainant's website, the Complainant's clients are able to manage their bank accounts online, through a secured interface. The Complainant's website also provides a means by which the Complainant keeps its clients up-to-date with the various services offered by the Complainant's group. The Complainant is the registrant of a number of trade mark or service mark registrations consisting of or containing the expression "CIC". It will be sufficient for the purposes of this decision to refer to the Complainant's ownership of the word mark CIC. The Complainant registered that mark C.I.C. in France on November 21, 1986 (registration number 1358524), and mark CIC in the European Union on March 5, 2008 (registration number 005891411). The first of those registrations covers a variety of financial services in International Classes 35 and 36, including banking and exchange services and the issue of letters of credit and travelers' cheques. The European Union registration covers a number of services in International Classes 35 and 36 (including financial affairs, banking affairs, monetary affairs, foreign exchange transactions in class 36, all of which services might be provided online, including by electronic funds transfers), and certain goods in International Classes 9 and 16. The Complainant says that its CIC mark has become well-known. It refers in support to three decisions in UDRP proceedings in which separate panels have held (i) that the Complainant's marks, including its CIC mark, are "well-known" (Credit Industriel et Commerciale S.A., Banque Fédérative du Credit Mutuel v Headwaters MB, WIPO case No. D2008-1892), (ii) that the reputation of the Complainant is "worldwide", and its CIC trade mark is "well-known" (Credit industriel et Commerciale S.A. v Jeongyong, WIPO Case No. D2013-1263), and (iii) that the trade mark CIC has a "well-known character and reputation" in the field of banking and financial services (Credit Industriel et Commerciale v Mao Adnri, WIPO Case No.D2013-2143). The disputed domain name was registered on July 24, 2023. It combines the expression CIC with the term "sepa", which the Complainant explains is an abbreviation for "Single Euro Payments Area". A "SEPA" credit transfer is a secure means of payment that allows the holder of an account to transfer funds to another bank account, under the same conditions, anywhere within the "SEPA" area (primarily the European Union, but with a number of non-EU countries also included). According to the Amended Complaint, the disputed domain name does not resolve to any active website. It redirects to a webpage set up by the Registrar, at which various services offered by the Registrar are featured. However, there are active MX records for the disputed domain name, indicating that the disputed domain name is used for emails. A Google search the Complainant ran on the expression SEPA CIC, returned results that referred only to the Complainant. The Complainant says that it has not licensed anyone to use the disputed domain name, and has not given anyone permission to use its CIC mark in any manner, including in a domain name. page 3 5. Parties' Contentions A. Complainant The Complainant first contends that the disputed domain name is confusingly similar to its well-known CIC mark. Next, the Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant does not know the Respondent, and it has not granted him any permission to use its CIC mark in the disputed domain name. There is nothing to suggest that the Respondent is commonly known by the disputed domain name, and he appears to have made no use of it, whether in connection with a bona fide offering of goods or services or otherwise. Furthermore, the composition of the disputed domain name, incorporating the Complainant's CIC mark in its entirety together with a term associated with the Complainant's business, carries a risk of implied affiliation. In those circumstances, the Complainant has provided sufficient prima facie proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Respondent has failed to rebut that prima facie proof. Finally, the Complainant contends that the disputed domain name was registered, and is being used, in bad faith. As for bad faith registration, the Complainant has previously demonstrated the strong reputation and the well-known character of its CIC mark, and previous UDRP panels have held on multiple occasions that the mere registration of a domain name that is identical or confusingly similar to a well-known or widelyknown trade mark by an unaffiliated entity may be sufficient to create a presumption of bad faith, as the respondent knew or should have known that its disputed domain name would be identical or confusingly similar to the complainant's trade mark.1 The Respondent could not have been unaware of the reputation of the Complainant's CIC mark when he registered the disputed domain name. In addition to the renown of that mark, the Respondent's use of the banking expression "SEPA" in the disputed domain name makes it clear that the Respondent intended Internet users to identify "CIC" as a commercial entity associated with the provision of SEPA bank payments. The Respondent clearly knew of, and intended to refer to, the Complainant. On the issue of bad faith use of the disputed domain name, the Complainant relies on the doctrine of "passive holding" of a domain name in bad faith.2 In addition, the Complainant contends that the active MX records for the disputed domain name suggest the likelihood that the Respondent may use the disputed domain name to engage in fraudulent email or phishing activities. B. Respondent The Respondent did not reply to the Complainant's contentions. 1 Credit Industriel et Commerciale SA v Alain Rudolfd and Anne Jammen; WIPO Case No. D2023-0819. 2 The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third edition ("WIPO Overview 3.0") refers to the consensus view of UDRP panelists that, in appropriate circumstances, non-use of a disputed domain name will not prevent a finding of bad faith use by "passive holding" of the domain name. Panels will consider the totality of the circumstances in each case, but the following factors may point towards a finding of bad faith use by passive holding: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or provide any evidence of actual or contemplated good faith use, (iii) the respondent's concealing its identity or its use of false contact details, and (iv) the implausibility of any good faith use to which the domain name may be put. page 4 6. Discussion and Findings Under paragraph 4(a) of the Policy, a Complainant is required to establish each of the following: (i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (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 The Complainant has proved this part of the Amended Complaint. The Complainant is the registered proprietor of the word mark CIC in France and in the European Union. Those registrations are sufficient to establish rights in that mark for the purposes of paragraph 4(a)(i) of the Policy. The question under this part of the Policy is whether the disputed domain name is confusingly similar to the Complainant's CIC mark. The disputed domain name includes the Complainant's CIC mark without alteration. The mark is preceded by a hyphen and the expression "sepa", which is a term commonly used in the European banking industry. The consensus view of UDRP panels on the issue of confusing similarity where a complainant's mark is incorporated within a disputed domain name, is described as follows in WIPO Overview 3.0":3 "Where the relevant trade make 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." In this case, the CIC mark is clearly recognizable within the disputed domain name. The mark is separated from the term "sepa" by a hyphen, and that separation effectively invites the reader to focus separately on the two components of the disputed domain name. 4 One of those components is, of course, the expression "CIC". The addition of the term "sepa" in the disputed domain name, being a term used in the very business field in which the Complainant operates, does not prevent a finding of confusing similarity. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy set out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy. The circumstances are: (i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or 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; or (ii) Where [the respondent] (as an individual business or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or 3 WIPO Overview 3.0 at section 1.8. 4 Top-Level Domains such as ".com" are not normally taken into account in the comparison that is required by paragraph 4(a)(i) of the Policy. The gTLD is a technical requirement of registration, and is not normally considered to have legal significance in applying paragraph 4(a). page 5 (iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly direct consumers or to tarnish the trade mark or service mark at issue. WIPO Overview 3.0 states the following on the burden of proof under paragraph 4(a)(ii) of the Policy: "While 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 disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element." In this case, the Respondent has elected not to respond to the Complaint, and the issue is whether the Complainant has made out a sufficient prima facie case that the burden of production should shift to the Respondent. If the Complainant's evidence does meet the prima facie case standard, the Respondent's failure to file a Response means that the Complainant must succeed on this part of the Amended Complaint. The Panel is satisfied that the Complainant has provided sufficient prima facie evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name. First, the disputed domain name is confusingly similar to the Complainant's CIC mark, and the Complainant has not authorized the Respondent to use that mark, whether in a domain name or for any other purpose. Secondly, there is nothing to suggest that the Respondent might have a right or legitimate interest in the disputed domain name under any of the subparagraphs of paragraph 4(c) of the Policy. The Respondent has not produced evidence that he is using the disputed domain name in connection with any bona fide offering of goods or services, or that he has made any demonstrable preparations to do so (paragraph 4 (c)(i) of the Policy), and the only hits returned on the Google search run by the Complainant on "SEPA CIC" referred to the Complainant. There is nothing to suggest that the Respondent is or might have been commonly known by the disputed domain name (paragraph 4(c)(ii) of the Policy), and it appears that he has not been making any legitimate noncommercial or fair use of the disputed domain name under paragraph 4(c)(iii). Indeed, on the evidence produced, he has not been making any use of the disputed domain name. Those matters in combination are sufficient to establish a prima facie case under paragraph 4(a)(ii) of the Policy. In the absence of any Response, the Complainant has therefore made out its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy, the following circumstances, without limitation, are deemed (if found by the Panel to be present) to be evidence of the registration and use of a domain name in bad faith: (i) Circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or (ii) The holder has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or page 6 (iii) The holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) By using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the holder's website or location or of a product or service on the holder's website or location. Those circumstances are not intended to provide an exhaustive list of the circumstances that will qualify as bad faith registration and use. Other cases, that may not fall clearly within any of the subparagraphs of paragraph 4(b) of the Policy, may be found to constitute bad faith registration and use in appropriate circumstances.5 In some UDRP decisions, panels have found that the mere registration of a domain name that is identical or confusingly similar to a well-known or widely-known trade mark by an unaffiliated entity may be sufficient to create a presumption of bad faith, as the respondent knew or should have known that its domain name would be identical or confusingly similar to the complainant's trade mark (see, for example, the recent decision in Credit Industriel et Commerciale SA v Rudolfd and Jammen, to which the Complainant referred. The case was concerned with the domain name , and the panel was content, in the absence of any response, to apply the presumption just referred to.) Whether or not that presumption applies in this case, on the evidence that has been produced the Panel considers it more likely than not that the Respondent was aware of the Complainant and its CIC mark when he registered the disputed domain name, and that he proceeded with the registration in bad faith. First, the only likely meaning of the expression "sepa" on the available evidence, is that put forward by the Complainant - "Single Euro Payments Area". That is a clear reference to the payments system which bank customers can use to make cashless Euro payments via credit transfer and direct debit, within the European Union (and in certain other countries). Secondly, the Respondent appears to reside at Port Talbot in the United Kingdom (officially part of the European Union until January 2020), and his use of the expression "sepa" in the disputed domain name makes it clear that, whether or not he had been a user of the SEPA payments system, he was at least aware of it. Thirdly, the Complainant is a well-known European bank that offers SEPA services to its customers.6 Fourthly, the Complainant is the owner of the (well-known) mark CIC in the European Union. Having regard to that combination of facts, the possibility that the Respondent may have chosen to create a new domain name that combined the expressions "sepa" and "cic", without any prior knowledge of the Complainant as a provider of SEPA payment services under the CIC mark, is remote enough that, in the Panel's view, it can be discounted. The disputed domain name is confusingly similar to the Complainant's CIC mark, and in the absence of any Response the Panel infers that the Respondent probably registered the disputed domain name with the intention of creating the false impression that any website at (or email transmitted from a server linked to) the disputed domain name would be a website (or email) created or authorized by the Complainant. In the Panel's view, any such registration is more likely than not to have been made in bad faith. 5 Aria Foods Ambg v. Michael Guthrie, M. Guthrie Building Solutions WIPO Case No. D2016-2213; and Tetra Laval Holdings & Finance S.A. v. Evelyn Bryant, Glen Cleaning, WIPO Case No. D2022-4264. 6 One of the webpages on the Complainant's website is headed: "SEPA Base Mandats", followed by text advising customers how they can manage their SEPA payment orders in complete security. page 7 Paragraph 4(a)(iii) of the Policy also requires the Complainant to prove that the disputed domain name is being used in bad faith. That might be thought to create a difficulty where no actual use has been made of a disputed domain name. However, UDRP panels have consistently held that mere passive holding of a disputed domain name may constitute bad faith use of that domain name, if certain factors are present. The consensus view of WIPO UDRP panels on the issue of "passive holding" (that is, registration with no subsequent active use), is summarized in WIPO Overview 3.0 as follows:7 "From the inception of the UDRP, panelists 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. While panelists will look at the totality of the circumstances in each case, factors which have been 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." Each of those factors does appear to be present in this case. On the first factor, the Complainant has built up a very substantial reputation in France and around the world in the field of banking and financial services over a period in excess of 160 years. It appears that it has used the CIC mark in providing those services for at least the last 37 of those years, and previous UDRP panels have referred to the Complainant's CIC mark as "well-known"8, and to the Complainant's reputation as "worldwide".9 The Panel considers that the Complainant has shown that its CIC mark enjoys a strong reputation, and a relatively high degree of distinctiveness. On the second factor, the Respondent has failed to submit any Response, or to suggest by any other means any good faith use to which the disputed domain name might be put. On the third factor, the Registrar's WhoIs database available to the Complainant did not disclose the Respondent's name and contact details: they showed the registrant as "Redacted for Privacy". The Respondent's identity was therefore concealed when the disputed domain name was registered (his name and contact details were only disclosed, by the Registrar, when the Center sent its usual verification request to the Registrar). On the fourth of the listed factors, the Panel finds it extremely difficult to conceive of any good faith use the Respondent might make of the disputed domain name. The use of the expression "sepa" in the disputed domain name immediately suggests that any website at the disputed domain name will be concerned in some way with the SEPA payments system used in the banking system in Europe, and the Complainant, who is a significant player in that market, is then identified in the disputed domain name by the use of its CIC mark. The result is that many Internet users who are familiar with the Complainant and its banking and financial services will inevitably but mistakenly assume that any online activity at or from the disputed domain name (website or emails) will be undertaken or authorized by the Complainant. It is difficult to imagine that any website could be created at the disputed domain name without causing deception or confusion of that sort, and the active MX records for the disputed domain name do suggest that the Respondent's intention may have been to use the disputed domain name for emails. But if that was his intention, the difficulty of imagining any good faith use remains. Inevitably, a number of people receiving an email from an email address at the disputed domain name would assume, from the use of the Complainant's CIC mark and the 7 WIPO Overview 3.0, section 3.3. 8 Credit Industriel et Commerciale SA v Headwaters MB; WIPO Case No. D2008-1892. 9 Credit Industrial et Commerciale SA v Jeongyong; WIPO Case No. D2013-1263. page 8 banking term SEPA in the sender's address, that the email must have come from the Complainant or from some entity associated with the Complainant. In those circumstances, any emails from an address at the disputed domain name would likely be sent for phishing or other fraudulent purposes, as the Complainant submits. In the absence of a Response, there do not appear to be any countervailing or other relevant considerations to take into account on the "passive holding" issue. The Panel therefore concludes that the disputed domain name has been (passively) used by the Respondent in bad faith. For the reasons set out above, the Complainant has satisfied both the bad faith registration and bad faith use elements of paragraph 4(a)(iii) of the Policy. The Complainant having satisfied each of the three elements of paragraph 4(a) of the Policy, there will be an order transferring the disputed domain name to the Complainant. 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. /Warwick Smith/ Warwick Smith Sole Panelist Date: October 27, 2023
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