ARBITRATION AND MEDIATION CENTER PANEL DECISION Crédit Industriel et Commercial S.A. v. Reanud Henry Case No. DEU2023-0018 1. The Parties Complainant is Crédit Industriel et Commercial S.A. of France, represented by MEYER & Partenaires, France. Respondent is Reanud Henry of France. 2. The Domain Name, Registry and Registrar The Registry of the Disputed Domain Name is the European Registry for Internet Domains ("EURid" or the "Registry"). The Registrar of the Disputed Domain Name is NETIM. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 5, 2023. On June 5, 2023, the Center transmitted by email to the Registry a request for registrar verification in connection with the Disputed Domain Name. On June 6, 2023, the Registry transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the "ADR Rules") and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the "Supplemental Rules"). In accordance with the ADR Rules, Paragraph B (2), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 6, 2023. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was July 26, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 27, 2023. The Center appointed Nathalie Dreyfus as the sole panelist in this matter on August 2, 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 ADR Rules, Paragraph B(5). page 2 4. Factual Background Complainant is the French deposit bank Crédit Industriel et Commercial, set up in 1859 by imperial decree signed by Napoléon III. Crédit Industriel et Commercial is part of the European banking group "Crédit Mutuel Alliance Fédérale". Crédit Industriel et Commercial demonstrates its ownership over many trademarks consisting or including the sign "CIC" in France and abroad, among which: - European Union Trademark CIC No. 005891411 registered on March 5,2008, for goods and services in classes 9, 16, 35, 36; renewed. - European Union Trademark CIC No. 011355328 registered on March 26, 2013, for goods and services in classes 9, 16, 35, 36; renewed. - French Trademark CIC No. 1358524 dated October 6, 1986, for goods and services in classes 35 and 36; renewed. As part of its business activities, Crédit Industriel et Commercial 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 access and manage their bank accounts online. The Disputed Domain Name was registered on March 22, 2023 with the registrar NETIM and resolves to a Registrar parking page. 5. Parties' Contentions A. Complainant First and foremost, Complainant alleges the Disputed Domain Name is confusingly similar to the CIC trademark as it includes Complainant's trademarks in its entirety. Complainant states that the mere adjunction of the terms "sepa" and "groupe" is not sufficient to distinguish the Disputed Domain Name from the CIC trademark. Complainant argues that, on the contrary, the terms "sepa" and "groupe" associated with the well-known trademark CIC creates a risk of confusion in the Internet user's mind. Complainant argues further by saying that the word "sepa" is an acronym for "Single Euro Payments Area", a generic word in the banking world. Complainant believes that the addition of the word "sepa" therefore cannot serve as a distinguishing feature. In addition, Complainant believes that the word "group" is a generic term that does not add distinctiveness to the Disputed Domain Name. Furthermore, Complainant states that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Complainant affirms that no licence or authorization has been granted to Respondent to make any use of or apply for registration of the Disputed Domain Name. Complainant also argues that the Disputed Domain Name is not being actively used, as it directs to the holding page of the Registrar. Complainant concludes that this use of the Disputed Domain Name could not be regarded as a bona fide offering of goods and services nor a legitimate noncommercial or fair use pursuant to ADR Rules Paragraph B(1)(b)(10)(i)(B). page 3 Moreover, Complainant adds that the well-known character of the CIC trademark has been notably recognized by previous Uniform Domain Name Dispute Resolution Policy ("UDRP") panels at the Center (see Credit Industriel et Commercial S.A., Banque Fédérative du Credit Mutuel v. Headwaters MB, WIPO Case No. D2008-1892 for ). Finally, Complainant states that the Disputed Domain Name has been registered and used in bad faith. Complainant argues that, given the well-known character of the CIC trademark, customers could assume that the Disputed Domain Name will resolve to a website belonging to Complainant and dedicated to its activities. Complainant believes that the association of the words "sepa", "groupe" and CIC has been purposely done in order to create an affiliation with Complainant. Complainant argues further by pointing out that the word "sepa" aims the European banking area, and that the acronym "cic" designates Complainant. Complainant argues further by implying that Complainant and its affiliates are often referred to as "Groupe CIC", which would underline a higher level of likelihood of confusion and similarity to the Disputed Domain Name, in its use of the word "groupe". Therefore, it appears to Complainant that the Disputed Domain Name has been registered for the sole purpose to confuse the Internet users into thinking that it will provide access to an official website of Complainant. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings According to Paragraph B(11)(d)(1) of the ADR Rules, that Complainant must demonstrate the following in order to obtain a decision that the Disputed Domain Name registered by Respondent will be revocated or transferred to Complainant: (i) the Disputed Domain Name is identical or similar to the name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law; and, (ii) the Disputed Domain Name was registered by Respondent without any rights or legitimate interests in the Disputed Domain Name; or (iii) the Disputed Domain Name was registered or is being used in bad faith. A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law According to Paragraph B(11)(d)(1)(i) of the ADR Rules, Complainant must prove that the Disputed Domain Name is identical or confusingly similar to a name in respect of which a right is recognised or established by the national law of a Member State and/or European Union law. Complainant has filed and registered the CIC trademarks in France and European Union. The Disputed Domain Name includes Complainant's trademark in its entirety. The Panel agrees with Complainant that the Disputed Domain Name reproduces the CIC trademark, with the only differences being the addition of the words "sepa" and "groupe" as well as the dash between each words, which do not prevent the confusing similarity (see Association des Centres Distributeurs E. Leclerc - ACD Lec v. caramelle morgana, WIPO Case No. DEU2021-0022 ) page 4 Moreover, the country code Top-Level Domain ("ccTLD") ".eu" is not taken into consideration when examining the identity or similarity as it is viewed as a standard registration requirement. For the aforementioned reasons, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant CIC trademark under Paragraph B(11)(d)(1)(i) of the ADR Rules. B. Rights or Legitimate Interests Complainant must first make out a prima facie case showing that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name, and then the burden of production shifts to Respondent to come forward with evidence of rights or legitimate interests. If Respondent fails to do so, Complainant is deemed to have satisfied Paragraph B(11)(d)(1)(ii) of the ADR Rules. In the present case, Respondent did not submit arguments in response to the Complaint. In line with previous UDRP decisions1, it is sufficient for Complainant to make prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name, in order to shift the burden of production of evidence to Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2005-1094; Belupo d.d. v. WACHEM d.o.o, WIPO Case No. D2003-0455). Respondent has not filed any Response to the Complaint and therefore has not alleged any facts or elements to justify rights or legitimate interests in the Disputed Domain Name. Moreover, Complainant maintains that Respondent is not related in any way to its business and that no license or authorization has been granted to Respondent to make any use, nor apply for registration of the Disputed Domain Name. Furthermore, the Disputed Domain Name appears to remain unused, as it resolves to the holding page of the Registrar. The nature of the Disputed Domain Name is such that it carries a risk of implied affiliation with Complainant. (see LEGO Juris A/S v. PHU C.N.O. Justyna Niedzielska, WIPO Case No. DEU2021-0001 ). Thus, the Panel finds that Respondent has failed to demonstrate any rights or legitimate interest in the Disputed Domain Name pursuant to Paragraph B(11)(d)(1)(ii) of the ADR Rules. C. Registered or Used in Bad Faith According to Paragraph B(11)(d)(1)(iii) of the ADR Rules, Complainant must prove that the Disputed Domain Name was registered or is being used in bad faith by Respondent. The Panel shares the holdings of previous UDRP panel decisions which have recognized the CIC trademarks as well-known (see Credit Industriel et Commercial v. Mao Adnri Credit Industriel et Commercial S.A., ("CIC") v.Mao Adnri, WIPO Case No. D2013-2143 regarding domain name ) The Panel holds that Respondent knew or must have known about the well-known CIC trademarks when registering the Disputed Domain Name. The addition of the related terms to Complainant's business "sepa" and "groupe" in the Disputed Domain Name could not be chosen randomly. The nature of the Disputed Domain Name is such that it carries a risk of implied affiliation with Complainant as it reproduces the trademark associated with words "sepa" and "groupe" related to the field of banking. The word "sepa" aims the European banking area, and the acronym "cic" refers to Complainant. Moreover, Complainant is often referred to as "Groupe CIC" in order to designates its different activities, which creates additional similarity and risk of confusion. 1 Considering the substantive similarities between the ADR Rules and the UDRP, the Panel also refers to UDRP case law and analysis, where appropriate. page 5 The association of the words "sepa", "groupe" and "cic" has therefore undoubtedly been purposely done in order to create a connection between Complainant and the Disputed Domain Name. Hence, in view of the Panel, Respondent deliberately chose the Disputed Domain Name to mislead the Internet users who are searching for the banking services of Complainant. This registration is sufficient evidence that Respondent was clearly aware of the business activities of Complainant, and that the registration of the Disputed Domain Name was done in bad faith. The apparent lack of so-called active use of a domain name (passive holding) does not prevent such finding of bad faith use. Finally, the presence of an email server linked with a domain name reproducing Complainant's trademark generates a risk of illegitimate use of the Disputed Domain Name by falsely impersonating Complainant, thus misleading potential consumers as to the origin of the email address illegitimately associated with the Disputed Domain Name. Thus, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith according to Paragraph B(11)(d)(1)(iii) of the ADR Rules of the Policy. 7. Decision For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant2. Nathalie Dreyfus Sole Panelist Date: August 14, 2023 2 The remedy sought is transfer of the Disputed Domain Name to Complainant. As Complainant is established in France, it satisfies the general eligibility criteria for registration of the Disputed Domain Name set out in Article 3 of Regulation (EU) 2019/517. The decision shall be implemented by the Registry within thirty (30) days after the notification of the decision to the Parties, unless the Respondent initiates court proceedings in a Mutual Jurisdiction, as defined in Paragraph A(1) of the ADR Rules.
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