WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crédit Industriel et Commercial S.A. v. XUBO
Case No. D2007-1732
1. The Parties
The Complainant is Crédit Industriel et Commercial S.A., Paris, France, represented by MEYER & Partenaires, France.
The Respondent is XUBO, Dazhou, China.
2. The Domain Name and Registrar
The disputed domain name <cicbanques.mobi> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2007. On November 26, 2007, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn a request for registrar verification in connection with the domain name at issue. On November 30, 2007, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 4, 2007. The Center verified that the Complaint together with the amendment to 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 December 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 31, 2007.
The Center appointed Francine Tan as the sole panelist in this matter on January 14, 2008. 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. The decision due date was extended to February 1, 2008.
4. Factual Background
The Complainant is a French banking group that was founded in 1954. Today it has about 3.8 million clients with a network of 1,990 branches in France. It also has an international presence with branches throughout the world including China where the Respondent is located. “Cic” is the abbreviation for the name of the Complainant and is a trade name and trademark that the Complainant has used since the time it was established. The Complainant’s primary portals, “www.cic-banques.fr” and “www.cic-banques.com”, have been active since 1996 and 2000, respectively.
The Complainant is also the registered owner of a large number of trademarks consisting of or including the letters “cic” (e.g. CIC BANQUES) in France and overseas including China. As a result of extensive use, the trademark CIC BANQUES has become widely known throughout the world and recognized as such. In two panel decisions, the Complainant’s CIC and CIC BANK trademarks were recognized as having goodwill and reputation. (See Crédit Industriel et Commercial v. Pneuboat Sud, WIPO Case No. DFR2004-0005; Crédit Industriel et Commercial S.A v. Yu Ming, WIPO Case No. D2005-0458).
The Complainant is the registered holder of numerous domain names including <cic.fr>, <cic-banques.fr>, <cic-banque.fr>, <cicbanque.fr>, <cic-banques.com>, <cic-banques.net> and <cic-banques.net>.
On November 2, 2007, the Complainant was informed that an entity named XUBO, apparently based in Dazhou, Sichuan, had registered, on September 26, 2007, the disputed domain name <cicbanques.mobi>. The Complainant conducted web searches on the name “Xubo” and the email address “[…]@126.com” and found that this address is associated with several domain name registrations. The investigations made by the Complainant indicated that the Respondent is actively engaged in registering domain names, many of which infringe trademark rights, for purposes of selling them at a profit through a domain name forum. A previous complaint had been filed by the Complainant against the Respondent in relation to the domain name <cicbanques.com> (see Credit Industriel et Commercial S.A. v. XUBO, WIPO Case No. D2006-1268).
5. Parties’ Contentions
1. The Complainant contends that the disputed domain name <cicbanques.mobi> is identical to its trademark CIC BANQUES. The trademark CIC BANQUES is wholly reproduced in the disputed domain name. This is a typical case of cybersquatting where the Complainant’s trademark is entirely reproduced in the disputed domain name. The omission of a space between the letters “cic” and the word “banques” is inevitable as it is not possible to put a space into the domain name. Hence, the only difference between the domain name in this case and the trademark lies in the addition of the top level domain “.mobi”. This difference, however, emanates from the technical requirements of a domain name. Previous panel decisions have established the principle that such a difference is of no consequence and therefore the domain name in this case is effectively identical to the Complainant’s trademark CIC BANQUES. (See Credit Industriel et Commercial S.A. v. XUBO, WIPO Case No. D2006-1268; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325.)
2. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name. Firstly, the Respondent is not related in any way to the Complainant’s businesses. Secondly, the Respondent is not currently nor has it been known by the name “cic banques”. Thirdly, the Complainant has not authorized or licensed the Respondent to use or apply for registration of the domain name. (See Credit Industriel et Commercial S.A. v. XUBO, WIPO Case No. D2006-1268.)
3. The Complainant submits that the Respondent has registered and used the domain name in bad faith and this is supported by the following:
(i) Previous written communications between XUBO and the Complainant in 2006 and the domain name dispute proceedings in relation to the Credit Industriel case, supra, (concerning <cicbanques.com> domain name) show that the Respondent was aware of the CIC Group and its CIC BANQUES trademarks when it applied to register the domain name <cicbanques.mobi>. In that case, the Panel concluded that the domain name <cicbanques.com> had been registered and used in bad faith.
(ii) The disputed domain name has been registered by the Respondent to take advantage of the Complainant’s reputation and divert Internet users to an inactive website which does not correspond to the Complainant’s official website. This behaviour is evidence of bad faith use and is damaging to the Complainant’s reputation as Internet users would expect the domain name to lead them to the Complainant’s website.
(iii) The passive holding of a domain name in circumstances such as these is evidence of bad faith use. (See Banque Transatlantique S.A. v. Banque Transatlantique, WIPO Case No. D2006-0557; Audi AG v. Hans Wolf, WIPO Case No. 2001-0148; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.)
(iv) The domain name <cicbanques.mobi> reproduces entirely and identically the Complainant’s trademark which is a subsisting mark in China. The Respondent has therefore registered and is using the domain name in order to create an association with the Complainant’s trademark CIC BANQUES. The Respondent is also not making any legitimate non-commercial or fair use of the disputed domain name because such use would also mislead Internet users by attracting them to a webpage that does not correspond to what they were looking for. In the Credit Industriel case, supra, the Respondent’s domain name <cicbanques.com>also led to a blank webpage.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Procedural issue - Language of the Proceedings
Paragraph 11 of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” (Italics added.)
The language of the registration agreement in this case is Chinese. The Complaint was, however, submitted in English and the Complainant requested that the proceedings take place in the English language.
On this issue, the Complainant submitted that the spirit of paragraph 11 of the Rules is to ensure fairness in the language selection by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred, the possibility of delay in the proceedings in the event translations are required, etc. In the Credit Industriel case, supra, in deciding that English would be the language of the administrative proceedings, the rationale the Panel gave for its decision was as follows:
“It is obvious from the email communications between the parties the Respondent has sufficient ability to communicate in the English language. On the other hand, the Complainant is not able to communicate in Chinese and therefore, if the Complainant were required to submit all documents in Chinese, the administrative proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation.”
In this case, the circumstances are such that although the language of the proceedings should have been in Chinese as stipulated in the Rules, the discretion of the Panel is called upon to allow the proceedings to be in English on the following grounds:
(a) The Respondent has registered many domain names including the one in dispute in Latin characters, and some of these comprise English descriptive terms.
(b) It is also apparent from the previous communications exchanged between the parties that the Respondent has sufficient ability to communicate in the English language.
(c) The Panel in the Credit Industriel case, supra, (which proceedings involved the same parties hereto) decided, in similar circumstances, that English should be the language of the proceedings.
(d) The Complainant, on the other hand, is not able to communicate in Chinese and therefore, if the Complaint had to be submitted in Chinese, the administrative proceedings would be unduly delayed and the Complainant would have to incur substantial translation costs.
The Panel is satisfied that the circumstances in this case justify a departure from the general rule that the proceedings should be in the language of the registration agreement. It is evident that the Respondent is capable of understanding and communicating in English and would not be prejudiced by the proceedings being in the English language. It would be more expedient for the proceedings to be in English when weighed against the need for Chinese translations to be prepared, which would delay and increase the costs of the proceedings. The Panel therefore agrees that the proceedings should be in the English language.
6.2. Substantive issues
Paragraph 4(a) of the Policy stipulates that in order to succeed in its claim, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no difficulty in finding in this case that the domain name is identical to the Complainant’s trademark CIC BANQUES as the top level “.mobi” is irrelevant to the consideration of this first issue, and this principle is well established in many Panel decisions.
B. Rights or Legitimate Interests
In terms of the second requirement under paragraph 4(a) of the Policy, the Panel finds that the Complainant has made out a prima facie case. The burden therefore falls on the Respondent to show that it has rights or legitimate interests in the domain name. In this regard, paragraph 4(c) of the Policy provides the following examples of circumstances which, if found to be proved, would demonstrate the Respondent’s rights or legitimate interests to the domain name:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent has, however, not responded to the Complaint filed in these proceedings. In not doing so, the Panel is confined to considering the evidence presented by the Complainant and is also entitled to “draw such inferences [from the Respondent’s default] as it considers appropriate” (paragraph 14(b) of the Rules). The Panel notes that in the earlier case brought by the Complainant against the Respondent in connection with the Credit Industriel case, supra, concerning the domain <cicbanques.com>, although no formal Response was submitted by the Respondent, an email communication was filed with the Center. Notwithstanding the assertions made therein by the Respondent, the Panel held that the Respondent had not proven any of the circumstances provided in paragraph 4(c) of the Policy and there was no plausible indication that the Respondent has rights or legitimate interests in the disputed domain name.
In the case before the Panel, there is no evidence upon which the Panel may make a finding that the Respondent has rights or legitimate interests in the domain name. In fact, the only logical inference that can be drawn from the Respondent’s default and repeated conduct in registering a domain name containing the very same trademark of the Complainant which was the subject of the dispute in WIPO Case No. D2006-1268 is that this is a typical case of cybersquatting.
The Panel therefore finds that the Complaint satisfies the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of bad faith registration and use. This list is not exhaustive and includes:
(i) registration for the primary purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) registration for the purpose of preventing the owner of the trademark from reflecting the mark in a corresponding name, provided the Respondent has engaged in a pattern of such conduct; or
(iii) registration primarily for the purpose of disrupting the business of a competitor; or
(iv) intentionally attempting, through the use of the domain name, to attract for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location.
The Panel finds that the circumstances referred to in paragraph 4(b)(i) of the Policy are applicable to the present case. The evidence submitted with the Complaint indicates that the Respondent is trading in domain names. On the DomainChat forum, the Respondent posted a sample list of close to 20 domain names that it had registered and was offering for sale. Further, the following remarks were added in the posting: “I am in trouble with a name: cicbanques.com, a French name, a big bank’s domain name. I will be fined. Please help me to give some general ideas about the price as I want to sell them for the penalty.”
Having known of the Complainant’s rights and reputation in the trademark CIC BANQUES and been party to the administrative proceedings of the Credit Industriel case, supra, the Respondent’s act of once again registering the same domain name in relation to a different top level domain is clear evidence of bad faith use and registration. Earlier panel decisions have also established the principle that the registration of a domain name that is obviously connected with a well-known trademark by someone who has no connection whatsoever with the trademark suggests opportunistic bad faith. (See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.)
In the premises, the Panel concludes that the third requirement of paragraph 4(a) of the Policy has been met.
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 <cicbanques.mobi> be transferred to the Complainant.
Date: February 1, 2008