WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Credit Industriel et Commercial v. Heng Zhong
Case No. D2014-1696
1. The Parties
The Complainant is Credit Industriel et Commercial of Paris, France, represented by Meyer & Partenaires, France.
The Respondent is Heng Zhong of Malden, Massachusetts, United States of America.
2. The Domain Names and Registrars
The disputed domain name <cicnice.com> is registered with DomainsForMe.ca Inc. The disputed domain name <cic-strasbourg.com> is registered with YourJungle, Inc. (collectively referred to as the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2014. On September 30, 2014, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 7, 2014, the Registrars transmitted by email to the Center their 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” 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 the Respondent of the Complaint, and the proceedings commenced on October 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2014.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 31, 2014. 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.
4. Factual Background
The Complainant is a French financial group, owner amongst others, of the CIC trademark registered in France on June 25, 1975, and successively renewed under No. 1358524 as well as of the Community Trademark No. 005891411 for CIC, registered on March 10, 2008.
The disputed domain names <cicnice.com> and <cic-strasbourg.com> were registered on November 28, 2013.
5. Parties’ Contentions
The Complainant claims to be one of the most important banking groups of France, its trademark being famous or at least undoubtedly well-known under the terms of art. 6 bis of the Paris Convention.
According to the Complainant, the disputed domain names are confusingly similar to the Complainant’s notorious trademark since they incorporate the mark in its entirety and the addition of the geographic terms “Strasbourg” and “Nice” which refer to French cities are not relevant and do not have any impact on the overall impression of the dominant part of the name CIC, instantly recognizable as a world famous trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent has no relationship with the Complainant and has not received any license or permission to register the Complainant’s trademark in the disputed domain names;
(ii) to the best of Complainant’s knowledge the Respondent is not commonly known by the disputed domain names; and
(iii) the Respondent failed to show any potential rights or legitimate interests in the disputed domain names by not responding the cease-and-desist letter that the Complainant sent by the Complainant prior to filing the Complaint.
As to the registration of the disputed domain names in bad faith, the Complainant asserts that the choice of the names show that the Respondent knows to some extent the French language and French geography, which would make it even less plausible for the Respondent not to be aware of the Complainant and its well-known mark.
Furthermore, given that the Respondent is using the disputed domain names in connection with parked pay-per-click websites, which direct Internet users to Complainant’s competitors, the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain, but rather is misleadingly diverting consumers for its own commercial gain.
Moreover, according to the Complainant, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites, the Respondent has intentionally attempted for commercial purposes to attract Internet users to its websites to the products and services available there, consequently tarnishing the trademark CIC.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:
(i) the disputed domain names are 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 interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain names transferred to it, according to paragraph 4(i) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the trademark CIC.
The Complainant’s mark is entirely reproduced in the disputed domain names and the addition of the geographic terms “Strasbourg” and “Nice”, in this Panel’s point of view, does not sufficiently distinguish the disputed domain names from the trademark. On the contrary, the disputed domain names possibly lead a certain portion of Internet users into thinking that the websites relating to them might refer to the Complainant or one of its local branches or subsidiaries.
For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain names. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, despite not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that no authorization, license, permission or consent was granted for the use of CIC in the disputed domain names, nor is the Respondent an agent of the Complainant.
Also, the absence of any registered trademarks or trade names corresponding to the disputed domain names, or any possible link between the Respondent and the domain names, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain names, corroborate with the indication of the absence of a legitimate interest.
The Respondent is using the disputed domain names in connection with parked pay-per-click websites, which direct Internet users to Complainant’s competitors. The Respondent is therefore not making a legitimate noncommercial or fair use without intent for commercial gain, but as the Complainant rightly points out is misleadingly diverting consumers for its own commercial gain.
Another element to be taken into account is the absence of any reply to the warning letter and respective reminder sent to the Respondent (Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145; Dr Ing. h.c. F. Porsche AG v. Spiral Matrix et al., WIPO Case No. D2005-0890; Societe des Hotel Meridiens v. Spiral Matrix et al., WIPO Case No. D2005-1196; PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of a domain name, with 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 location or of a product or service on the website or location.
In this case, the disputed domain names were registered long after the Complainant secured its trademark rights. Moreover, the use of the disputed domain names in connection with parked pay-per-click websites that provided links to Complainant’s competitors, characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning revenues from the advertisements and links that solely exist in view of the association with the Complainant’s trademark.
Such use, in this Panel’s view, constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s notorious trademark, thus capitalizing on the fame of the Complainant’s CIC mark by creating a likelihood of confusion in Internet users who likely believe that the disputed domain names are either connected, endorsed or authorized by the Complainant.
For the same reasons as those stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.
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 names <cicnice.com> and <cic-strasbourg.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: November 14, 2014