WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Credit Industriel et Commercial S.A. v. Jeongyong Cho
Case No. D2013-1263
1. The Parties
The Complainant is Credit Industriel et Commercial S.A. of Paris, France represented by MEYER & Partenaires, France.
The Respondent is Jeongyong Cho of Gwangju, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <cicstart.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2013. On July 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 2013, the Registrar transmitted its verification response to the Center by email confirming the Respondent as the registrant and provided the registrant’s contact details.
On July 17, 2013, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On July 18, 2013, the Complainant filed its request for English to be the language of the proceeding. The Respondent failed to respond.
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”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2013.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on August 21, 2013. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is one of the leading financial services groups based in France whose services include retail banking, private banking, capital development and financial banking.
The Complainant has 2,108 agencies in France, three branches, 36 representative offices worldwide and 20,779 collaborators. In 2011, the Complainant had more than 4.4 million customers including individuals, professional associations and companies.
The Complainant has several registered trademarks that include its acronym “CIC”: 1) the French trademark CIC (No. 1358525) registered on June 10, 1986; 2) the Community trademark CIC (No. 005891411) registered on May 10, 2007; 3) the International trademark UNION EUROPEENNE DE CIC (No. 581464) registered on January 23, 1992; and 4) the French trademark LES STARTS JEUNES ACTIFS CIC registered on March 25, 2005.
Moreover, the Complainant owns other domain names that incorporate the CIC trademark including <cic.fr>, <cic.eu>, <cic.mobi>, <cic-paiement.com>, and <cic-banques.mobi>.
The disputed domain name <cicstart.com> was registered on February 27, 2010 and is scheduled to expire on February 27, 2014.
5. Parties’ Contentions
The Complainant, inter alia, asserts as follows:
(i) the dominant part of the disputed domain name <cicstart.com> is confusingly similar to its trademark CIC, for it is entirely reproduced in the disputed domain name;
(ii) the disputed domain name <cicstart.com> contains the term “start” which is also a part of the Complainant’s registered trademark LES STARTS JEUNES ACTIFS, thereby increasing the risk of confusion for the Internet users;
(iii) the Respondent is in no way related to the Complainant and has never been authorized or licensed by the Complainant to use the trademark CIC as a domain name. He is not a licensee, employee, subsidiary, or a subcontractor of the Complainant;
(iv) the Respondent is using the well-known trademark CIC to attract Internet users to a parking page containing commercial links directly competing with the services of the Complainant, apparently in order to make illegitimate profit. The commercial links, which are in French, refer to targeted advertising and promote websites offering banking and financial services such as credit or savings services;
(v) the Respondent must have known the trademark of the Complainant at the time of the registration because the mark has a worldwide reputation;
(vi) the Respondent also owns a few domain names that contain well-known trademarks including <aquatools.com>, <bestformen.com> and <orangeads.com>; and
(vii) the domain name is registered for the purpose of disrupting the business of the Complainant and for illicit gain.
B. The Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
The Complaint was originally filed in English. The Registrar confirmed that the language of the registration agreement for the disputed domain name is Korean. The Respondent failed to respond in any language.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the Respondent has not objected to English as the language of the proceeding. Moreover, in a previous UDRP case, Laboratoire Nutergia v. Jeongyong Cho, WIPO Case No. D2007-1582, the Respondent waived any objection to proceeding in English by failing to respond to the Center’s notice sent in both English and Korean.
On the other hand, the Complainant is unable to communicate efficiently in Korean, and therefore, the administrative proceeding would be unduly delayed should the Complainant be required to submit all documents translated into Korean.
In the interest of efficiency of both parties, the Panel hereby decides, under paragraph 11 of the Rules, English shall be the language of the administrative proceeding.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as the Panel considers appropriate (see Rule 14(b); Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
It is undisputed that the Complainant owns trademarks that either consist of or include “CIC” in various countries.
The first part of the disputed domain, “cic,” is identical to the Complainant’s distinctive trademark CIC, and the remaining part, “start,” is merely a generic term and only a descriptive suffix, not a distinctive feature of the disputed domain name. Moreover, given the worldwide reputation of CIC as one of the leading financial groups, the trademark component CIC clearly dominates the disputed domain name, and it is likely to confuse Internet users.
The addition of a generic top-level domain (gTLD) name such as “.com” is irrelevant in determining whether the disputed domain name is identical or confusingly similar to the complainant’s trademark (see Universal Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i).
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is well established that “once a Complainant establishes prima facie showing that none of the three circumstances in paragraph 4(c) of the Policy establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see Ets Leobert, SARL v. Jeonggon Seo, WIPO Case No. D2009-0004; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant asserts that the Respondent had no intention to use the disputed domain name in connection with a bona fide offering of goods and services. The Panel notes that the Respondent used the disputed domain name containing the well-known trademark CIC to attract Internet users to a parking page with commercial links to the financial services of firms in direct competition with the Complainant. A link named “Crédit Immobilier” on the parking page, for instance, will resolve to the website of “Crédit Agricole,” a banking and insurance company in France, a direct competitor of the Complainant.
Further, the Respondent has no relationship with the Complainant. The Respondent has never been the Complainant’s licensee, employee, subsidiary or subcontractor. The Respondent has never made a legitimate commercial or fair use of the disputed domain name.
The Respondent has not submitted any response. Therefore, he has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel upholds the Complainant’s contention that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
E. Registered and Used in Bad Faith
Given that the reputation of the Complainant is worldwide, it is highly unlikely that the Respondent failed to notice the presence of the trademark CIC in the disputed domain name at the time of registration.
Further, the Panel takes note that the Respondent is a serial cyber squatter who has registered several domain names based on the registered trademarks of others and has been ordered to transfer the domain names by numerous panels (see Laboratoire Nutergia v. Jeongyong Cho, WIPO Case No. D2007-1582; Tokyu Corporation v. Jeongyong Cho, WIPO Case No. D2008-1407; Primagas Energie GmbH & Co. KG v. Jeongyong Cho, WIPO Case No. D2013-0666).
In addition, the Respondent used the disputed domain name as a parking page that hosts links to the financial services of firms in direct competition with the Complainant. This is in violation of paragraph 4(b)(iv) of the Policy, since the Respondent misleads and confuses Internet users by making them believe that the websites resolved from the links are associated with or recommended by the Complainant.
Finally, the Panel also considers that the Respondent provided a link to submit an offer for parties interested in purchasing the disputed domain name, indicating that the disputed domain name was for sale (see Annex G of the Complaint). Although an offer for sale was not made specifically to the Complainant or its competitors, and hence, does not correspond to the example of evidence in bad faith set out in paragraph 4(b)(i) of the Policy, the examples in paragraph 4(b) are expressly non-exclusive. In several cases, panels have found the offer of the disputed domain name for sale to the general public constitutes bad faith usage of the domain name (see Playboy Enterprises International, Inc. v. Tamara Pitts, WIPO Case No. D2006-0675; Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066).
In light of the foregoing evidence, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <cicstart.com> be transferred to the Complainant.
Thomas P. Pinansky
Date: August 30, 2013