Complainant is Credit Industriel et Commercial S.A. of Paris, France, represented by MEYER & Partenaires, France.
Respondent is Noori net of the Republic of Korea.
The disputed domain name <cices.com> (the “Disputed Domain Name”) is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2010. On May 7, 2010, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the Disputed Domain Name. On May 10, 2010, the Registrar 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 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”).
On May 10, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. Complainant submitted its request that English be the language of the proceeding in its comment which was received by the Center on May 12, 2010. Respondent did not respond to the Center's Language of Proceeding notification.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 17, 2010. In its email concerning the Notification of Complaint and Commencement of Administrative Proceeding, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available, and also advised the parties that in accordance with paragraph 11 of the Rules, the panel would have the authority to determine the language of the proceeding.
In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 7, 2010.
The Center appointed Andrew J. Park as the sole panelist in this matter on June 15, 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.
Complainant owns trademark rights, as well as the goodwill, associated with the CIC brand for financial and banking services. In France alone, CIC has a network of 2,164 branches and 4.2 million clients. Complainant focuses its business on private banking, capital development, financial banking and network support trades. Complainant has a worldwide business presence including in Europe (15 branches), Africa (4 branches), Latin America (5 branches), North America (1 branch), Asia (12 branches), Australia and the Near East (3 branches). In all, CIC conducts business in fifty countries throughout the world. CIC is the acronym, trade name, and trademark used by Complainant since its inception in 1859.
Complainant has been operating its business at “www.cic.fr” since 2000, and also owns the following additional domain names: <cic.fr>, <cic.eu>, <cic.asia>, <cic.mobi>, and <cic-bank.com>. The Disputed Domain Name was registered on August 6, 2008.
Complainant is the owner of the following trademarks that consist of or include the mark CIC, each of which is asserted in this case, in at least one or more of International Classes 9, 16, 35, 36 and 41 relating to Complainant's business:
- CIC, French Nominative Trademark No. 1358524, registered November 28, 1986, renewal of deposit operated on June 25, 2976, French CIC, Trademark No. 959999;
- CIC, Community Trademark No. 005891411, registered March 5, 2008;
- CIC Union Européenne de CIC, International Trademark No. 582466, registered February 18, 1992;
- CIC BANQUES, French Nominative Trademark No. 1682713, registered December 27, 1991;
- CIC BANQUES, International Registration No. 585098, registered April 10, 1992;
- CM-CIC, French Nominative Trademark No. (04)3267901, registered June 18, 2004.
Complainant argues that: (i) the Disputed Domain Name is identical or confusingly similar to a mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. Regarding the first element, Complainant contends that the Disputed Domain Name incorporates Complainant's CIC trademark in its entirety, subject to the addition of the letters “ES,” which is the country code for Spain. Complainant contends that the addition to the Disputed Domain Name of the letters “ES” and the generic top-level domain suffix “.com” do not affect whether the domain name is confusingly similar or identical for purposes of the Policy. Complainant also points out that the Disputed Domain Name is identical to the acronym for one of Complainant's subsidiaries, CIC Epargne Salariale, which is also used on Complainant's websites. Thus, Complainant contends that the Disputed Domain Name is confusingly similar to its CIC trademarks.
Regarding the second element, Complainant contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Specifically, Complainant contends that Respondent is not related in any way to Complainant's business, is not one of Complainant's agents, and does not carry out any activities for or have any business with Complainant. Complainant also states that Respondent has not been commonly known by the name “CIC” or “CICES.” Complainant further states that it has not given Respondent any license to use Complainant's trademarks including the mark CIC, or to make any use of or register the Disputed Domain Name. Complainant also claims that Respondent intends to sell the Disputed Domain Name, and this is indicated on the website to which the Disputed Domain Name resolves. Complainant claims this is further evidence of Respondent's lack of a right or legitimate interest in the Disputed Domain Name.
Regarding the third element, Complainant states that its CIC trademark has a strong reputation, and has been well-known in the banking and financial services fields since at least 1991. Accordingly, Respondent, must have been aware of Complainant's trademark rights when it registered the Disputed Domain Name. Complainant points out that it conducts business in the Republic of Korea with a local office in Goyang, and that it also has a strong presence in Spain with a local office in Madrid, all of which would have been known to Respondent. As to bad faith use, Complainant relies on the strength of its reputation for the presumption that Respondent registered the Disputed Domain Name to attract, for commercial gain, Internet users to the website to which this domain name resolves. Complainant states that Respondent is using the Disputed Domain Name to resolve to a parked webpage that generates revenue for Respondent through pay-per-click advertising. Complainant claims that by clicking on these links, Internet users are redirected to websites of Complainant's competitors in the financial field. Complainant submits that Respondent's use of the website corresponding to the Disputed Domain Name creates a likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the website.
As further evidence of bad faith use, Complainant submits that Respondent has offered to sell the Disputed Domain Name for EUR 3,000 through the private domain name brokerage SEDO. Complainant thus claims that the Disputed Domain Name was registered or acquired by Respondent primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to Complainant, or to a competitor of Complainant, for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the Disputed Domain Name.
Respondent did not reply to Complainant's contentions.
The registration agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, 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, i.e., Korean. However, as noted above, Complainant upon receiving the Language of Proceeding notification from the Center submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules.
In adopting a language other than that of the registration agreement, the Panel has to exercise its discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432. Based on (1) the English language content of Respondent's website at the Disputed Domain Name; and (2) Respondent's offer to sell the Disputed Domain Name using an English language website to broker the sale, it does not appear Respondent has any difficulty comprehending and communicating in English. As a prior panel has determined, if an entity conducts activities in English, it is difficult for that entity to object if someone complains about such activities in English. Burger King Corporation v. Burger King S.R.L., WIPO Case No. DRO2008-0012. Furthermore, the Panel is mindful of the fact that a decision in Korean would not be readily comprehensible by Complainant and would therefore likely require it to expend resources to translate the same. In light of these circumstances, the Panel concludes that it will (1) proceed in line with the Center's preliminary decision to accept the Complaint as filed in English; and (2) issue a decision in English.
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent's Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that Respondent's Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made by a complainant, a respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
In the present matter, as Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all of Complainant's reasonable factual allegations as true. The Panel may also draw appropriate inferences from Respondent's default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
The case record contains ample evidence to demonstrate Complainant's rights in the registered CIC trademarks. Indeed, prior WIPO UDRP panels have noted Complainant's worldwide reputation in the finance and banking center. See Credit Industriel et Commercial S.A., CM-CIC Securities v. Homeshop, WIPO Case No. D2007-0530 (“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.”); Credit Industriel et Commercial S.A., CM-CIC Securities v. Click Cons. Ltd, WIPO Case No. D2007-1323 (“Whereas the word ‘securities' is of a descriptive character, the combination with the acronym ‘CIC' shows that the Respondent intentionally chose the Domain Name in dispute in order to make use of the Complainants' reputation in the finance and banking sector.”).
The Panel also determines that the Disputed Domain Name is confusingly similar to Complainant's CIC marks. The test for determining for confusing similarity involves a direct comparison of a complainant's trademark and the textual string which comprises the domain name. In this case, the addition of the country code “ES” does not diminish the confusingly similar nature of the Disputed Domain Name. See Credit Industriel et Commercial S.A. v. Demand Domains, Inc., WIPO Case No. D2009-1184 (“The suggestion that the term ‘escic' might be read by an Internet user as the Complainant's mark combined with the county code for Spain does not strike the Panel as inherently improbable or fanciful.”). Additionally, the Panel notes that it is well-established that the top-level domain name suffix (e.g., “.com”) is not generally taken consideration when assessing identity or confusing similarity. Accordingly, the Panel finds that Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made 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) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial 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. If the circumstances are sufficient to constitute a prima facie showing by Complainant of an absence of rights or legitimate interests on the part of Respondent, the evidentiary burden shifts to Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
Complainant has not authorized Respondent to use its CIC trademarks in any respect. There is also no evidence that Respondent is commonly known by the Disputed Domain Name, and thus paragraph 4(c)(ii) of the Policy appears to be inapplicable in this case. Further, Respondent's use of the Disputed Domain Name to provide sponsored links to paid advertising is not use of the Disputed Domain Name in connection with a bona fide offering of goods or services. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319; Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093. Finally, there is no evidence that Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name. Based on the unrefuted evidence submitted with the Complaint, the Panel finds that Respondent is not making fair use of Complainant's trademark, but is using the mark to attract Internet users to Respondent's website and then providing links to other sites having little or nothing to do with Complainant.
This combination of circumstances sufficiently establishes Complainant's prima facie case so that the evidentiary burden shifts to Respondent to prove that it has rights or legitimate interests in respect of the Disputed Domain Name. Respondent has not filed a Response and has therefore failed to satisfy its burden. Having searched the record, the Panel finds no circumstances that would indicate such rights or legitimate interests, as described in paragraph 4(c) of the Policy, or otherwise. Complainant has therefore prevailed on this part of its Complaint.
Paragraph 4(a)(iii) of the Policy requires that Complainant establishes both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a 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 registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's 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 registrant's website or location or of a product or service on the registrant's website or location.
Complainant has submitted evidence that Respondent registered the Disputed Domain Name to sell, rent or otherwise transfer it to Complainant. Paragraph 4(b)(i) of the Policy. Respondent is also presumably deriving a financial benefit from web traffic diverted through the Disputed Domain Name to linked websites via the website to which the Disputed Domain Name resolves. The Panel therefore also accepts that Respondent has intentionally attracted Internet users to its website or other online locations for commercial gain through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. See Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462. Respondent, by use of the Disputed Domain Name, is also drawing Internet users away from Complainant's websites to its own website and thus potentially damaging Complainant's business. Accordingly, the Panel finds that Respondent registered the Disputed Domain Name primarily for the purpose of attracting Internet users to another site by creating confusion and this is evidence of bad faith under paragraph 4(b)(iv) of the Policy. For the foregoing reasons, the Panel finds that Complainant has satisfied the third element of the Policy.
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 <cices.com> be transferred to Complainant.
Andrew J. Park
Dated: June 29, 2010