ARBITRATION AND MEDIATION CENTERADMINISTRATIVE PANEL DECISION Credit Industriel Et Commercial S.A. v. Lia Roomis Case No. D2024-2563 1.The PartiesThe Complainant is Credit Industriel Et Commercial S.A., France, represented by MEYER & Partenaires, France. The Respondent is Lia Roomis, France. 2.The Domain Name and RegistrarThe disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3.Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2024. On June 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 25, 2024, 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, PrivacyGuardian.org LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 26, 2024 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 June 28,2024. 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 July 1, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22,2024.
page 2 The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on August 12, 2024. 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 BackgroundCredit Industriel Et Commercial, in abbreviated form CIC, is the French oldest deposit bank; it was set up in 1859 by an imperial decree signed by Napoleon III. The company was nationalized in 1982 and re-privatized in 1997. Credit Industriel Et Commercial is currently a part of one of the main European banking groups, “Crédit Mutuel Alliance Fédérale”. Credit Industriel Et Commercial has itself currently more than 5,3 million clients, among them almost 946,000 professionals and businesses. More than 1,800 agencies are distributed in France and 37 abroad. Credit Industriel Et Commercial has set up and activated a website located at “www.cic.fr” (Annexes C1 and C2 of the complaint), through which its clients can be informed about the services offered by the group and also get online access to their bank accounts for managing them thanks to a specific secured interface. The Complainant is the registered owner of a large number of trademarks consisting or including the sign “CIC” in France and abroad, inter alia: -C.I.C French Trademark No. 1358524 filed on June 10, 1986, registered on November 21, 1986, in classes 35 and 36, duly renewed;-CIC European Union Trademark No. 005891411 filed on May 10, 2007, registered on March 5, 2008, in classes 9, 16, 35 and 36, duly renewed;-COMPTE CIC MOBILE French Trademark No. 4361045 filed on May 12, 2017, registered on September 1, 2017, in classes 9, 35, 36 and 38;-COMPTES/VIE CIC French Trademark No. 3435321 filed on June 16, 2006, registered on November 24, 2006, in classes 35 and 36;-CIC BANQUES International Trademark No. 585098 registered on April 10, 1992, in classes 35 and 36, duly renewed.The well-known character of the CIC trademarks has been notably recognized by WIPO panels. Therefore, the trademark CIC is undoubtedly well known. The Complainant consequently owns trademark rights and intellectual property rights on the wording “CIC” and CIC associated with descriptive wordings like “compte” referring to its activities, which are prior to the disputed domain name. The disputed domain name was created on March 7, 2024. The data on the Registrant that were disclosed identify an individual called Lia Roomi, domiciled in Paris at an address which appears to be false, since the street’s number does not exist. The Complainant is also the registrant of domain names composed with CIC: , , , , and .
page 3 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. The Complainant claims that the disputed domain name is similar to its CIC and COMPTE CIC trademarks. Several prior UDRP panels have held that, when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish identity or confusing similarity for purposes of the Policy. The trademark CIC is reproduced identically and is clearly perceivable in the disputed domain name. The addition of the element “compte” (which can stand for “account” in English) does not prevent this finding. The descriptive French wording “compte” (“account” in English), associated with the well-known CIC trademark create a risk of confusion in the Internet users’ mind. The addition of the geographical term “FR” for France “fr” (the country extension for France), location of CIC group headquarters, would not prevent, in the same way, a finding of confusing similarity. The Complainant could provide to its clients, on request, a personal online access to their banking accounts, with private login and passwords, on an online location that would be available using the disputed domain name. They can therefore believe that the domain name will resolve to a website belonging to the “CIC” Group and/or to the dedicated accounts of the Complainant’s clients. Furthermore, the likelihood of confusion is accentuated by the notoriety of the CIC trademarks and by the registration of some other trademarks by the Complainant which combine CIC with the French wording COMPTE. The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name, given the fanciful provided WhoIs data. The Respondent is not related in any way to the Complainant’s business: he is not one of its agents and does not carry out any activity for or has any business with it. The Respondent is not currently and has never been known under the wordings “cic” or “compte cic fr”, for instance as a holder of a trademark on these wordings. He is therefore not affiliated with the Complainant. No license or authorization has been granted to the Respondent to permit the use or the registration of the disputed domain name. At last, the Complainant underlines that the Respondent does not make any bona fide use – neither commercial nor noncommercial of the same, since the disputed domain name resolves to a page “error code 521”. In similar circumstances, panels have decided that the Respondent had neither rights nor legitimate interests in issuing domain name. The Complainant underlines the strong reputation and the well-known character of its CIC trademarks in relation with banking and financial services.
page 4 In similar cases where the prior trademark was well-known, 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 to Complainant or to one of its competitors, or that it was indented to be used in some way to attract for commercial gain users to the website by creating a likelihood of confusion with Complainant’s mark”, see for example Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020. The Complainant claims that the Respondent could not have ignored the reputation of the CIC trademarks at the time it registered the disputed domain name: It contends that Respondent has registered the disputed domain name precisely because it knew the well-known character of these trademarks. The Respondent has registered this domain name precisely because he knew the well-known character of the trademarks CIC. This knowledge is also shown by the addition of the country extension for France (“.FR”) and the French term “compte”. The use of the CIC trademark with the descriptive French wording “compte” (“account” in English) means that the disputed domain name can be used to access to a dedicated CIC account and space. In addition, the contact details as disclosed specify that the Respondent is pretending to be located in Paris (in France), where the Complainant has its main business and is specifically well-known. This is further evidence of Respondent’s previous knowledge of the CIC trademark The disputed domain name is not being actively used by the Respondent and does not resolve to any active web page with substantive content. It indeed redirects to an “error code 521” webpage. The Complainant contends that this visible non-use of the domain name constitutes bad faith use as “passive holding”. As stated in previous cases and in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 3.3, there is a consensus view about “passive holding”: “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 that 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.” Combined to the following supplemental circumstances, the Complainant claims that the passive use of the disputed domain name should be considered as bad faith use: The domain name incorporates identically the Complainant’s well-known CIC trademark with the addition of the descriptive French wording “compte” (“account” in English) that directly refers to the Complainant’s activities in the banking sector, The domain name highly imitates the Complainant’s trademarks COMPTE CIC MOBILE, According to this similarity and to this reputation, it is very implausible that the Respondent may use this domain name in any good faith given that Complainant’s never gave any authorization to anyone to register and use this domain name
page 5 Respondent’s identity is private It is implausible to consider any good faith use to which the domain name may be put, The registration of the disputed domain name is a bad faith registration, as demonstrated above In light of the above, the only conclusion that can be drawn by the Complainant is that Respondent, knowing of the name, fame and reputation of Complainant and its trademarks, has deliberately chosen to appropriate that name and reputation for the purpose of what appear to be fraudulent purposes. Considering these elements, the Respondent has not registered and is definitely not using the disputed domain name in good faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It is well accepted that the first element functions primarily as a standing requirement. The standing (or 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. The Complainant has shown rights in respect of its CIC and COMPTE CIC MOBILE trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Although the addition of the terms (here, “compte”, what means “account” in English, together with the two letters geographical code “fr” for France) to the CIC trademark 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. WIPO Overview 3.0, section 1.8. In addition, the disputed domain name is composed with two elements of the COMPTE CIC MOBILE trademark and is therefore also confusingly similar to this trademark. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the Respondent’s use 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) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
page 6 (iii) the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of the disputed domain name. For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the Respondent has registered, or the respondent 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your 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 respondent’s website or location or of a product or service on the respondent’s website or location. In the present case, the Panel is of the opinion that the Respondent, who is an individual claiming to be domiciled in Paris, was well-aware of the Complainant’s rights on the well-known CIC trademark when it decided to register the disputed domain name, which amounts to registration in bad faith. WIPO Overview 3.0, section 3.2.2.
page 7 Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. The current non-use of the disputed domain name does not prevent a finding of bad faith use. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that 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, and (iii) the Respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). In this case, the Panel notes the distinctiveness and the reputation of the Complainant’s trademark, the Respondent’s concealment of its identity, the choice to provide false contact details, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy. 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 /Marie-Emmanuelle Haas/ Marie-Emmanuelle Haas Sole Panelist Date: August 26, 2024
Full & Egal Universal Law Academy