WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Credit Industriel et Commercial S.A., CM-CIC Securities v. Homeshop
Case No. D2007-0530
1. The Parties
The Complainants are Credit Industriel et Commercial S.A. and CM-CIC Securities, Paris, France, both represented by MEYER & Partenaires, France.
The Respondent is Homeshop, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <cicsecurities.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2007. On April 5, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 10, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the registrant. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2007.
The Center appointed David Levin Q.C. as the sole panelist in this matter on May 8, 2007. 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
Crédit Industriel et Commercial S.A. (hereinafter referred to as ‘the First Complainant’) is a French bank, a subsidiary of the Crédit Mutuel-CIC group. Crédit Mutuel-CIC is France’s fourth largest banking group. The Complainant has 3.6 million clients with a network of over 1,800 branches in France. It also conducts business in 37 foreign countries. It owns branches in countries such as the United Kingdom, Greece, Lebanon, Chile, Brazil, China and the United States of America for instance.
The Second Complainant is one of the subsidiaries of the First Complainant. The Second Complainant’s former trade name was ‘CIC Securities’ until 1988. The CIC group was acquired by the Credit Mutuel group (also named CM). From that time it has operated under the name of ‘CM-CIC Securities’.
CM-CIC Securities offers brokerage services on equities, bonds, options and futures and also provides direct access to all European markets. CM-CIC Securities also operates in Asia and North America as an order collector.
CIC is the acronym, the trade name and the trademark used by the First Complainant since its origin.
The First Complainant is the registered owner of a large number of trademarks consisting or including the wording “CIC” in France and abroad including: C.I.C. French nominative trademark n°1 358 524 of June 10, 1986. This trademark constitutes the renewal of a trademark filing dated June 26, 1976, registered under the No. 959 999; CIC Union Européenne de CIC International trademark n° 582446 of February 18, 1992; CM-CIC Community nominative trademark n° 003646957 of February 3, 2004; CM-CIC Community semi-figurative trademark n° 003644366 of February 3, 2004; CIC BANQUES French nominative trademark n°1682713 of July 24, 1991; CIC BANQUES International nominative trademark n°585098 of April 10, 1992, notably in force in China; CIC BANQUES International semi figurative trademark n°585099 of April 10, 1992, notably in force in China.
It is also the registrant of a number of domain names, including <cic.fr> registered on May 28, 1999 (official web portal of the First Complainant) and <cic.eu> registered on March 12, 2007.
The Second Complainant is the registered owner of a large number of trademarks in various trademark classes consisting or including the wording “CIC SECURITIES” in France and abroad including: CIC SECURITIES, French nominative trademark n° 3109052 of July 2, 2001; CIC SECURITIES and device, French semi-figurative trademark n° 31128519 of October 29, 2001; CIC SECURITIES, Community trademark n° 002331601 of August 7, 2001; and CIC SECURITIES LA BOURSE RECONTRE…, International registration n° 789214 of May 7, 2002.
It is also the registrant of two relevant domain names, <cmcicsecurities.fr> and <cm-cicsecurities.fr>.
Both of the Complainants claim to have exercised their rights in relation to the trademarks continuously since their respective registrations.
5. Parties’ Contentions
The Complainants contend that the Respondent has engaged in a pattern of bad faith conduct. Investigations on behalf of the Complainants lead them to conclude that the Respondent is in the business of registering and offering for sale domain names. They point to various facts:
(a) that a person named Seung-Nam KIM is mentioned as administrative and technical contact, in the WHOIS details, at the Homeshop address;
(b) web searches from the name of the Respondent and the email address, […]@hotmail.com, and that that email address is associated with numerous domain name registrations, for some of them alleged to be infringing trademark rights, including <deltaomega.com>, clanmac.com> and <pacersystems.com>;
(c) the Respondent and KIM Seung-Nam have already been involved as Respondents in several UDRP proceedings regarding registration and use of domain names, which resulted in orders for the transfer of the names in question: see: Longs Drug Stores California, Inc v. Seung Nam Kim, WIPO Case No. D2005-0426 and Miller Products Company v. Kim Seung-Nam C/O Homeshop, NAF No. FA0606000728794.
Further the Complainants submit that their respective trademark rights are rights which they have exercised continually since the respective registrations and that their marks have acquired worldwide fame and recognition.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable”.
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(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 domain name under challenge can be viewed as similar both to the trademark of the First Complainant with the addition of the word ‘securities’ and to trademarks of the Second Complainant, in each case with the addition of the suffix ‘com’. There are numerous decisions of Panels which have determined that the addition of a top-level domain suffix can be ignored when assessing similarity. The Panel has been referred to Credit Industriel et Commercial S.A. v. XUBO, WIPO Case No. D2006-1268 concerning <cicbanques.com> where the Panel held that “… the mere addition of the generic top level domain name indicator, “.com” to the name CIC BANQUES does not affect domain name being recognized as identical with trademark CIC BANQUES”. The Panel considers it appropriate to ignore the suffix for the purpose of considering this issue.
The word ‘securities’, however, is not merely a descriptive element of the business of the First Complainant but has a meaning and conveys an impression of an area of commercial activity. In the circumstances, had the present complaint been made by the First Complainant alone it might have been more difficult to establish that the domain name was confusingly similar to its mark. However the Second Complainant holds marks which are identical to the disputed domain name, save for a space between the words “CIC’ and ‘Securities’. The removal of the space by the Respondent to create a composite word ‘cicsecurities’ does nothing to lessen the confusing similarity which the Panel finds established. The Panel refers to and follows the decision of Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 which determined that the elimination of a space, given constraints of domain name system, has no legal significance.
The Panel determines that the domain name <cicsecurities.com> is confusingly similar to the trademark of the Second Complainant.
B. Rights or Legitimate Interests
The Respondent has never registered “cicsecurities” as a trademark, never acquired any common law trademark rights to this word, nor been commonly known by the domain name. The Panel accepts that the Complainants have the rights in relation to trademarks set out above in Paragraph 4 and that these rights are rights which they have exercised continually since the respective registrations and that their marks have acquired worldwide fame and recognition. It also finds that no authority, licence or other right or interest has been granted to the Respondent for or in connection with any of the said trademarks.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests. The Respondent has failed to show any one of the circumstances under paragraph 4(c) of the Policy. In addition, the Panel relies upon Paragraph 14(b) of the Rules and infers that the Respondent knew of Complainants’ marks when it registered <cicsecurities.com> and that it has no rights or legitimate interests in the said domain names.
C. Registered and Used in Bad Faith
The Panel makes no finding on the evidence that the Respondent is a company which is in the business of registering and offering for sale domain names registered in breach of trademark rights held by other persons or companies. Nor is it necessary for it to come to a conclusion that the Respondent is associated with a person who may be in such a business. The Panel did not need to consider these issues in the present case in order to come to a decision in favour of the Complainants.
The Complainants undertake business in the Republic of Korea, the country where the Respondent is located. Given the worldwide reputation of the Complainants the Panel is prepared to draw the inference, in the absence of material from the Respondent, that the Respondent, or those directing its activities, knew of the reputation and marks of the Complainants and were seeking to obtain a commercial advantage by registering the domain name.
The registration of a domain name similar to the Complainant’s trademark is evidence of bad faith registration.
The webpage of the Respondent includes the notice that “this domain is for sale”. However there is no evidence of the price being asked for the domain name transfer and therefore the Complainants have failed to establish that Respondent acquired or registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants for valuable consideration in excess of out-of-pocket costs in violation of Paragraph 4(b)(i) of the Policy.
The Complainants have established to the satisfaction of the Panel that the domain name <cicsecurities.com> reverts to a website with several hyperlinks exclusively in French in several fields, among which are three hyperlinks in the financial field which point to links related to the Complainants’ competitors’ websites (including <cetelem.fr>, <ingdirect.fr>, <symphonis.fr>, <fortuneo.fr>, <unifinance.net>, <gmf.fr>, <direct-assurance.fr>, <mediatis.fr>, <sofinco.fr>, cofidis.fr>, <123credit.com>, etc.). The Panel infers from the language of the linked websites and the subject matter contained in them that the Respondent is intending to obtain a commercial advantage by having some of the legitimate customers of the Complainants unwittingly diverted to the websites of competitors. This is bad faith use.
Based on this evidence, the Panel concludes that the Respondent registered and used the domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cicsecurities.com> be transferred to the Second Complainant, CM-CIC Securities.
David Levin Q.C.
Dated: May 22, 2007