Complainant is Credit Industriel et Commercial S.A. of Paris, France, represented by MEYER & Partenaires, France.
Respondent is PrivacyProtect.org of Moergestel, Netherlands and Angelina Fashion Accessories Ltd / Rajeev Joshi of New Delhi, India.
The disputed domain name <insurance-cic.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2009. On December 8, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On December 9, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 and contact information in the Complaint. The Center sent an email communication to Complainant on December 10, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 15, 2009. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2010. On December 17, 2009, Complainant filed a request for suspension and on December 18, 2009 the proceedings were suspended until January 17, 2010 to allow the parties to explore settlement options. On January 15, 2010, Complainant filed a request for revival, and on January 18, 2010 the proceedings were re-instituted and the parties were advised that the new due date for Response was February 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 9, 2010.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on February 16, 2010. 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 trademark upon which the Complaint is based is CIC. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the CIC trademark around the world, including French nominative trademark No. 1358524 of June 10, 1986; Community nominative trademark No. 005891411 of May 10, 2007; and European Union International trademark No. 582446 of February 18, 1992. Complainant has also registered a number of trademarks combining the word CIC with other terms, including the French nominative trademark No. 98743410 of July 27, 1998 for ASSURANCES CIC.
According to the documentary evidence and contentions submitted, the Complainant is a French banking group founded in 1859. Complainant has today over 2,000 branches in France and many others in different countries in Europe, Africa, Asia, Latin America and North America, and has a presence in 50 countries around the world. Complainant's group offers services in the areas of private banking, capital development, financial banking and network support trades. Complainant's Internet main website is hosted at “www.cic.fr”. The word CIC is the acronym of Complainant's corporate name, used in commerce since 1859.
The Panel accepts Complainant's contentions that CIC trademark is a well-known trademark in the sense of the Article 6bis of the Paris Convention, and notes that the fame of the CIC trademark has been recognized in other WIPO UDRP decisions: Confederation Nationale du Credit Mutuel and Credit Industriel et Commercial S.A. v. Trabaja Jovcrn, Zeb Fi Tarmatek, WIPO Case No. DLC2009-0002; Credit Industriel et Commercial S.A, CM-CIC Securities v. Homeshop, WIPO Case No. D2007-0530; Credit Industriel et Commercial SA., CM-C1C Securities v. Click Cons. Ltd., WIPO Case No. D2007-1323.
The disputed domain name was originally registered on September 5, 2009 through an entity known as PrivacyProtect.org and located in the Netherlands. Upon receipt of the Center's request for registrar verification, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com advised that the underlying registrant is Angelina Fashion Accessories Ltd, Rajeev Joshi.
Complainant contends that the domain name <insurance-cic.com> is confusingly similar to the Complainant's mark because (i) the suffix <.com> is irrelevant in the comparison, (ii) the disputed domain name is wholly reproducing Complainant's trademark CIC, (iii) the addition of the word “insurance” would not eliminate the identity or at least the similarity because it is a descriptive word, and (iv) the word “insurance” refers to one of the main activities of Complainant.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent is not related to Complainant and does not carry out any business for Complainant, (ii) Respondent is not commonly known by the words CIC or “Insurance CIC” and has not been licensed or authorized by Complainant to register the disputed domain name, and (iii) Respondent has not engaged in any action that shows that Respondent has rights to or legitimate interests in the disputed domain name.
Finally, Complainant contends that Respondent registered the disputed domain name in bad faith because (i) Respondent would necessarily have been aware of the existence of Complainant and its reputation, when it registered the disputed domain name, (ii) Respondent has chosen the combination of the well-known trademark CIC and the wording “insurance”, which describes one of the main activities of Complainant, in order to give to the disputed domain name a real and concrete meaning for internet users and Complainant's clients on the web, when trying to access CIC's website, and (iii) therefore, the disputed domain name was registered primarily for the purpose of conducting phishing attacks against Complainant.
In addition, Complainant argues that Respondent uses the disputed domain name in bad faith because (i) the passive holding of a domain name is also considered as a bad faith use, (ii) Respondent has provided no evidence whatsoever of any actual or contemplating good faith use of the domain name, and (iii) the registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
Respondent did not reply to Complainant's contentions.
The consensus view is that respondent's default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
Therefore, the Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
The domain name <insurance-cic.com> incorporates the CIC mark in its entirety. In this type of combination it is clear that the CIC trademark stands out, including because CIC is separated from the word “insurance” by a dash, and leads the public to think that the disputed domain is somehow connected to the owner of the registered trademark.
Previous UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r.l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282. That is particularly true where the disputed domain name incorporates a well-known trademark, as in the instant case.
The addition of the descriptive term “insurance” does not affect a finding that the disputed domain name is confusingly similar to the CIC mark. It has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive mark is to be considered confusingly similar to the mark. See, e.g., Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253. In addition, the Panel notes that prior UDRP panels have held that the combination of the CIC mark with other generic terms can be considered as identical or confusingly similar. See, e.g., Credit Industriel et Commercial S.A., Credit Industriel de L'Ouest v. Maison Tropicale SA, WIPO Case No. D2007-1817.
The likelihood of confusion between the disputed domain name and the CIC trademark is reinforced by the fact that insurance is one of the areas of business in which Complainant is engaged, and Complainant has registered and used for years the trademark ASSURANCES CIC.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
Therefore, the Panel finds that the <insurance-cic.com> domain name is clearly confusingly similar to the CIC trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
The Panel is convinced that Complainant had done enough to establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, and by defaulting Respondent has failed to provide the Panel with any evidence of Respondent's rights to or legitimate interests therein. In addition, none of the three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the disputed domain name (Paragraph 4(c) of the Policy) shows a result in favor of Respondent.
In fact, the disputed domain name is not the name of Respondent or the name by which Respondent is commonly known, and the disputed domain name is not Respondent's trade name or service mark. The Panel accepts Complainant's contentions that Respondent has not been licensed or authorized by Complainant to register and use the disputed domain name or the CIC trademark.
Paragraph 4(c)(i) of the Policy provides that a respondent's rights or legitimate interests in a domain name for the purposes of Paragraph 4(a)(ii) would be demonstrated if “before any notice of the dispute, your use of, or demonstrable preparations to use, the domain name … in connection with bona fide offering of goods and services.” Paragraph 4(c)(iii) further provides that respondent's rights to or legitimate interests in a domain name for the purposes of Paragraph 4(a)(ii) would be demonstrated by “making a legitimate […] fair use of the domain name, without intent for commercial gain to misleadingly divert consumers […].”
Complainant argues that disputed domain name was first used to resolve to a sole webpage, on which only the domain name <insurance-cic.com> was mentioned, and it now leads to an inactive website, mentioning that “the website has been considered as fraudulent and was therefore shut down”. Pursuant to an independent survey conducted by the Panel by attempting to access the Respondent's website on February 26 and 28 2010, the Panel verified that Respondent's domain name currently does not resolve to any web page. Therefore, the Panel finds that Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
In short, Complainant has satisfied its burden of providing sufficient evidence that Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of Paragraph 4(a)(ii) of the Policy is met.
In view of the particulars of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of Complainant and of its trademark CIC when Respondent registered the disputed domain name. That finding is reinforced by the fact that Respondent chose to combine the word “CIC” with “insurance”, a term which describes one of the areas of business in which Complainant is engaged, Complainant having registered and used for years the trademark ASSURANCES CIC.
As a matter of fact, in the case of a domain name so obviously connected to a widely known mark and product, its use by someone with no legitimate interest in respect of the registered domain name may constitute what has been called as “opportunistic bad faith”. See SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Perfumes Christian Dior v. Javier Garcia Quintas and Christian Dior. net, WIPO Case No. D2000-0226; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
The Panel does not consider necessary to address the issue of whether or not Respondent registered the disputed domain name primarily for the purpose of conducting phishing attacks against Complainant since there is no evidence on record of such intention. The Panel finds it most likely that the domain name was created and registered by Respondent in an intentional attempt to benefit from the goodwill of Complainant's trademark for financial gain.
The circumstance that the domain name <insurance-cic.com> has apparently been inactive does not affect a finding of bad faith use of the disputed domain name. The facts of the case show an evasive and wrongful conduct on the part of Respondent.
First, because the use of a proxy registration service to avoid disclosing the name and contact details of the real party in interest, in similar circumstances, is consistent with an inference of bad faith in registering and using a domain name. Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.
Second, because the consensus view in the WIPO URDP Panel decisions has been that “[t]he lack of active use of the domain name does not as such prevent a finding of bad faith”, and that a panel must examine such circumstances as “complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 3.2). See Telstra Corporation Limited v. Nuclear Marshmallos, WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Net Power, Inc., WIPO Case No. D2000-0022; J. García Carrión, S.A. v. María José Catalán Frias, WIPO Case No. D2000-0239; Bayer Aktiengesellschaft v. Henrik Monssen, WIPO Case No. D2003-0275; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483; MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2008-0702.
The Panel is of the opinion that, under appropriate circumstances, passive holding evidences bad faith use. In the instant case all the facts referred to above are present and, therefore, the Panel concludes that the disputed domain name is being used in bad faith.
Therefore, the Panel finds that the requirement of Paragraph 4(a)(iii) of the Policy is 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 <insurance-cic.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Dated: March 1, 2010