WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Credit Industriel et Commercial S.A., Credit Industriel de L’Ouest v. Maison Tropicale SA
Case No. D2007-1817
1. The Parties
The Complainants are Credit Industriel et Commercial S.A., Paris, France, and Credit Industriel de L’Ouest, Nantes, France, represented by MEYER & Partenaires, France.
The Respondent is Maison Tropicale SA, Anguila, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ciccreditmonitor.net> is registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2007. On December 10, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On December 13, 2007, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the 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”), 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 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2008.
The Center appointed Francine Tan as the sole panelist in this matter on January 29, 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 15, 2008.
4. Factual Background
The first Complainant, Credit Industriel et Commercial S.A., is a French banking group tracing its origins back to 1859. Today, it has about 3.8 million retail clients, with a network of about 1990 branches in France and 11 regional banks.
The first Complainant also has an international presence with branches in Europe, Africa, the Middle East, Latin America, North America and Asia. “CIC” is the abbreviation for the name of the first Complainant and is both a trade name and trade mark that the first Complainant has used since the time it was established. The Complainant’s primary portal, “www.cic.fr”, has been active since 1999.
The second Complainant, Credit Industriel de l’Ouest, is a French banking group which was formed out of a merger between Credit Nantais (founded in 1912) and Credit de L’Ouest (founded in 1913). The second Complainant is associated with and forms a part of Credit Industriel et Commercial S.A.
On March 12, 2007, the Complainants were informed that the Respondent, an entity based in the British West Indies, registered the domain name <ciccreditmonitor.net>.
The Complainants conducted Internet searches on the name of the Respondent and its listed email address. The latter was found to be linked with numerous domain name registrations, some of which appear to be infringing trademark rights. Examples of these include <goooooogle.net>, <google-network.com>, <google-billpay.com>, <google-db.com>, <google-france.com>, etc. The Respondent was also found to have been named as respondent in several UDRP proceedings: see Credit Industriel et Commercial S.A. v. Maison Tropicale SA, WIPO Case No. D2007-0955; Shaw Industries Group Inc. and Columbia Insurance Company v. Maison Tropicale S.A., WIPO Case No. D2007-0548; Societe des Bains de Mer et du Cercle des Etrangers a Monaco v. Maison Tropicale S.A., WIPO Case No. D2007-0604; Hanover Communications Limited v. Maison Tropicale S.A., WIPO Case No. D2007-1456. In all these cases, the disputed domain names were ordered to be transferred to the complainants. The Complainants contend that these circumstances show a pattern of bad faith conduct.
The first Complainant is the registered owner of a large number of trade marks consisting of or including the letters “cic”, in France and abroad (“the CIC marks”). These include French trademark registrations for CIC, CIC BANQUES and LES CREDITS MATRISES CIC; a Community trademark registration for CM-CIC; and International registrations for CIC UNION EUROPEENNE DE CIC and CIC BANQUES. The first Complainant is also the registrant of the domain names <cic.fr> and <cic.eu>.
The second Complainant has a French trademark registration for CREDIT DUO CIC.
5. Parties’ Contentions
1. The Complainants contend that the domain name <ciccreditmonitor.net> is confusingly similar to the CIC marks in which the Complainants have rights.
1.1 The CIC marks have been continuously used in connection with the Complainants’ business since their registration. Thus, due to long and extensive use, the CIC marks have become widely known and recognized as such. The CIC mark is entirely reproduced in, and constitutes the primary and distinctive portion of, the disputed domain name. The suffix “credit monitor” is not distinctive in itself and the addition of the same in the domain name further adds to the confusion as it appears to refer to the French banking group and to describe the very services they offer: The word “credit” refers to a core business of the Complainants, i.e. the management of their clients’ credit, whilst the word “monitor” refers to the management of credit risks. Past panel decisions have established the principle that the addition of a descriptive term to the domain name which contains the trade mark in which a complainant has rights does not serve to distinguish the domain name in issue from the complainant’s trade mark. The risk of confusion is further enhanced by the fact that the Complainant is the owner of trade marks associating the term “credit” to “cic”, notably LES CREDITS MAITRISES CIC which is widely used particularly on the Internet. LES CREDITS MAITRISES CIC is used in relation to the first Complainant’s business, namely in providing its clients with a complete range of simple and flexible financing.
1.2. The disputed domain name is also confusingly similar to the trade mark CREDIT DUO CIC in which the Complainants have rights. The word “credit” and letters “cic” which form this trade mark are entirely reproduced in the domain name. The additional word “monitor” in the domain name is of no consequence to the fact that the domain name is confusingly similar to the Complainants’ trade mark. The Complainants’ clients would, as a matter of course, expect the trade mark CIC to be used in combination with a descriptive term like “credit”, and would in this case be confused into thinking that the disputed domain name is linked to the Complainants.
2. The Respondent has no rights or legitimate interests in respect of the domain name.
2.1. The Respondent is not currently nor has it ever been known by the name “ciccreditmonitor”.
2.2 The Complainants do not know the Respondent nor is the latter related to the Complainants’ business. The Complainants have never agreed to, licenzed or authorized the Respondent to use the CIC marks or to register the domain name. Previous panel decisions have ruled in such circumstances that the Respondent has no rights or legitimate interests in the domain name. (See Credit Industriel et Commercial S.A. v. Maison Tropicale SA, WIPO Case No. D2007-0955; Credit Industriel et Commercial SA v. XUBO, WIPO Case No. D2006-1268.)
2.3. The Respondent registered the domain name to take advantage of the Complainants’ reputation, by attracting Internet users to a webpage which contains numerous sponsored links, some of which relate to banking and financial products. Such use does not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy nor is it non-commercial or fair use of the domain name under paragraph 4(c)(iii).
2.4. The Respondent has not engaged in any action that shows that it has legitimate interests in the domain name.
3. The Respondent has registered and used the domain name in bad faith.
3.1. It is difficult to imagine that the Respondent did not know of the Complainants and their international reputation in the field of banking and financial services at the time it registered the domain name. (i) The first Complainant is the fourth largest banking group in France and the CIC trade mark has been well established since 1859. (ii) By registering the domain name with the addition of the word “credit”, the Respondent shows that it knew of the second Complainant’s CIC and CREDIT DUO CIC trade marks. (iii) The domain name in issue resolves to a website that offers links to French language sites which offer banking and financial services. The circumstances are such that it is highly likely that the Respondent chose the combination consisting of the CIC trade mark and the words “credit” and “monitor”, not randomly but in order to give to the domain name “a real and concrete meaning” for the Complainants’ clients and Internet users in general. (iv) The Respondent was involved in a previous domain name dispute case instituted by the first Complainant (see Credit Industriel et Commercial S.A. v. Maison Tropicale S.A., WIPO Case No. D2007-0955.). In that case, the Panel ordered that the domain names in dispute be transferred to the Complainant. This proves that the Respondent knew of the Complainants and their trade marks at the time it registered the domain name.
3.2. The Respondent’s operating of the domain name <ciccreditmonitor.net> constitutes bad faith use. (i) The Respondent’s website provides hyperlinks, notably in the French language, to third-party websites in the field of banking and financial services. (ii) The Respondent is also thereby disrupting the Complainants’ business and its activities are damaging to the Complainants’ brand image. (iii) The Respondent is not making any legitimate non-commercial or fair use of the disputed domain name. Internet users would be deceived into thinking that the domain name <ciccreditmonitor.net> is one of the Complainants’ websites dedicated to credit operations. Such conduct constitutes bad faith use. (See Societe des Bains de Mer et du Cercle des Etrangers a Monaco v. Maison Tropicale SA, WIPO Case No. D2007-0604; Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955; Shaw Industries Group Inc. and Columbia Insurance Company v. Maison Tropicale S.A. WIPO Case No. D2007-0548.)
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy prescribes that the Complainants must prove the following:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainants have 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 evidence submitted by the Complainants does show that they have rights in the CIC trade mark.
As to whether the domain name is confusingly similar to the Complainants’ CIC marks, the Panel agrees that it is. It has been well established in many panel decisions that the inclusion of the generic top-level domains (in this case, “.net”) is irrelevant to the issue at hand and regard must be paid to the primary portion of the domain name. Further, the Panel finds that the mere combination of the generic terms “credit” and “monitor” to the CIC trade mark in the domain name does not take away the overall impression that the domain name is connected to the Complainants. In fact, in the context of the specific business the Complainants are engaged in, the potential for confusion is increased by the inclusion of the words “credit” and “monitor”/”creditmonitor”. The entire combination of the CIC mark with the said generic words also suggests or gives the impression that the Complainants have sponsored or endorsed the website. (See America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184; Pepsico, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696.)
In the circumstances, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainants.
B. Rights or Legitimate Interests
The Panel finds that the Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name. Firstly, there is no evidence that the Respondent has been known by the domain name or that it has acquired rights to the use of the CIC trade mark. Secondly, there is no evidence that the Complainants ever authorized the Respondent to use the CIC trade mark or to register the domain name. Neither has the Respondent shown legitimate non-commercial or fair use of the domain name. Instead, the sponsored links on the Respondent’s website support the Complainants’ contention that the Respondent is, for commercial gain, misleadingly diverting Internet users and the Complainants’ clients to its website and those of the Complainants’ competitors. Such use does not constitute a bona fide offering of goods or services. (See Shaw Industries Group Inc. and Columbia Insurance Company v. Maison Tropicale S.A.¸ WIPO Case No. D2007-0548.)
In coming to its decision, the Panel has taken note of the fact that the Respondent has been named as respondent in an earlier domain name dispute case instituted by the first Complainant (Credit Industriel et Commercial S.A. v. Maison Tropicale S.A., WIPO Case No. D2007-0955). Further, the Respondent’s failure to rebut the allegations made in the Complaint allows the Panel to infer that the Respondent has no rights or legitimate interests.
The Panel is accordingly satisfied that paragraph 4(a)(ii) of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists examples of circumstances which would constitute evidence of bad faith registration and use:
(1) registration for the primary purposes of selling, renting or otherwise transferring the domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of out-of-pocket costs directly related to the domain name; or
(2) registration for the purpose of preventing the trademark owner from having its trade mark as a domain name (provided there is a pattern of such conduct); or
(3) registration for the primary purpose of disrupting the business of a competitor; or
(4) an intentional attempt 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 other online location.
In this case, the Panel finds that bad faith on the part of the Respondent is borne out by the following facts. There can be very little doubt in the circumstances of this case that the Respondent was aware of the Complainants and their CIC marks when it registered the domain name and created a website without any bona fide offering of goods or services but in which sponsored links to the websites of competitors of the Complainants are offered. This is an instance of opportunistic bad faith on the part of the Respondent as it involves the use of a well-established trade mark in combination with other generic words within the domain name, which describe or are suggestive of the very kind of services offered by the Complainants. It would be confusing to Internet users and customers of the Complainants. The Panel agrees that an inference of bad faith can be made where a website with a confusingly similar domain name is used by the respondent to provide “sponsored links” to external websites of the competitors of a complainant. (See DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070.)
The circumstances of this case therefore fall squarely within paragraph 4(b) of the Policy, as what can be seen is “an intentional attempt [by the Respondent] 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 other online location”. There also appears to be a pattern of bad faith conduct. The Complainants pointed out that the Respondent has been party to other domain name dispute proceedings brought against it by the first Complainant and other third parties. In the cases identified in the Complaint, the domain names were ordered by the respective panelists to be transferred to the complainants as the Respondent was found to have registered and used the domain names in bad faith.
Taking all of the aforesaid into account, the Panel is accordingly satisfied that paragraph 4(a)(iii) of the Policy has been established.
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 <ciccreditmonitor.net> be transferred to the Complainants.
Date: February 15, 2008