WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crédit Industriel et Commercial v. hentz olivie / Domain Privacy Service Fbo Registrant
Case No. D2016-0438
1. The Parties
The Complainant is Crédit Industriel et Commercial of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is hentz olivie of la garde, France / Domain Privacy Service Fbo Registrant of Utah, United States of America.
2. The Domain Name and Registrar
The disputed domain name <conseiller-cic.com> is registered with FastDomain, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 4, 2016. On March 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2016, the Registrar 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 the Complainant on March 11, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 16, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on March 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 11, 2016.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on April 22, 2016. 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
Crédit Industriel et Commercial, the Complainant, is a French banking group created in 1859 known by its initials "CIC", and is part of the largest banks in France. The Complainant's activities primarily consist of banking and credit services for private persons, professionals and companies.
The Complainant is the owner of numerous trademarks matching or incorporating the initials "CIC", including the following ones:
- French Trademark C.I.C. No. 1358524, dated June 10, 1986, duly renewed and designating services in classes 35 and 36.
- European Union Trademark CIC No. 005891411, filed on May 10, 2007, registered since March 5, 2008 and covering goods and services in classes 9, 16, 35 and 36.
- International Trademark CIC BANQUES + DESIGN No. 585099, dated April 10, 1992, duly renewed and covering services in classes 35 and 36.
The Complainant is also the owner of several domain names, such as:
- <cic.fr> registered on May 28, 1999 and duly renewed,
- <cic.eu> registered on March 6, 2006 and duly renewed.
The disputed domain name <conseiller-cic.com> was registered on December 1, 2015 and resolves to a parking page.
5. Parties' Contentions
Firstly, the Complainant contends that the disputed domain name is confusingly similar to its CIC trademark since this trademark is entirely reproduced in the disputed domain name. Indeed, the Complainant states that it is the owner of numerous and "undoubtedly well-known" CIC trademarks, that it also uses in domain names to promote its activities.
According to the Complainant, the prefix "conseiller" is a French word meaning "advisor". Furthermore, the Complainant argues that it uses this term in connection with its services on its own website. Thus, it deems that the mere addition of this generic or even evocative term does not prevent the likelihood of confusion and rather enhances it, especially to French people who understand this word.
Besides, the Complainant also asserts that the generic Top-Level Domain (gTLD) ".com" should not be taken into consideration. The Complainant argues that the mere addition of a gTLD to a well-known trademark does not confer any distinctive character to a domain name.
Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect to the disputed domain name.
The Complainant asserts that the Respondent is not related in any way to its business. The Complainant mentions that no license or authorization has been granted to the Respondent to use or apply for registration of the disputed domain name and that the Respondent has never been known under the name "Conseiller CIC" nor "CIC".
The Complainant asserts that the disputed domain name resolves to a website featuring pay-per-click links related to the Complainant's business as well as to competitors'. Consequently, the Complainant claims that the disputed domain name <conseiller-cic.com> is clearly used to attract Internet users to the Complainant's competitors' websites.
Thirdly, the Complainant contends that the disputed domain name is registered and used in bad faith.
In the Complainant's views, there is no doubt that the Respondent registered the disputed domain name in consideration of the well-known character of the CIC trademark in France. The Complainant also states that the generic term "conseiller", combined with the CIC trademark constitutes a wording enhancing the likelihood of confusion between the disputed domain name and the Complainant's rights in the trademark CIC. In consequence, Internet users would be – according to the Complainant – more likely to click on the links or to navigate on the pay-per-click website.
The Complainant alleges that the Respondent uses the disputed domain name in bad faith, namely to divert Internets users to a webpage on which hyperlinks are featured, the majority of them being linked to the Complainant's field of activities (banking and credit services).
Thus, the Complainant claims that the disputed domain name might mislead Internet users and that its use will tarnish the reputation of the CIC brand since Internet users are not expecting to arrive on a pay-per-click page but to a page related to the Complainant.
The Complainant asserts that the use of the disputed domain name for a parking program demonstrates that the Respondent is seeking to attract, for commercial gain, users to its pay-per-click website. Such use is unfair according to the Complainant, which claims that it disrupts its business and is evidence of bad faith.
The Complainant states that even if the Respondent claimed that the activity of the disputed domain name was not under its control, but due to a parking program or any other affiliation program, the latter would still be responsible for this content. Furthermore, the Complainant argues that the fact that the Respondent earned money or not through the use of the disputed domain name has not to be taken into consideration, the mere likelihood to make money being sufficient, according to the Complainant, to prove intention to make commercial gain.
Therefore, the Complainant requests the Panel to order that the disputed domain name <conseiller-cic.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions and is therefore in default.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns valid CIC trademarks, including in France, where both the Complainant and the Respondent are located.
The trademark CIC is also reflected through the registration and use of domain names by the Complainant. For instance, the domain names <cic.eu> and <cic.fr> are registered and used by the Complainant for its offer of banking and credit services.
In the present case, the disputed domain name <conseiller-cic.com> entirely reproduces the Complainant's trademark CIC.
Previous UDRP panels have held that when a domain name entirely incorporates a complainant's registered trademark, this fact might be sufficient to establish confusing similarity for purposes of the Policy (see e.g. RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059 or Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150).
Besides, the sequence "CIC" is preceded by the generic term "conseiller", meaning "advisor" in French, followed by a dash. This term belongs to the lexical field of the Complainant's activities, namely banking and credit services. In this regard, the Complainant has shown that it uses the word "conseiller" in relation with its activities. For instance, a rubric on the Complainant's website "www.cic.fr" is precisely called "Un conseiller vous appelle" ("An advisor calls you").
Therefore, the addition of this generic term does not dispel the confusing similarity. On the contrary, it enhances the risk of confusion since it is a French word commonly used in relation with the Complainant's field of activity.
Furthermore, the presence of a dash is irrelevant. Former UDRP panels have stated that a dash in a domain name "add[s] no distinctiveness whatsoever" (see e.g., Dr. Grandel GmbH v. West End Internet Services, WIPO Case No. D2005-0853).
Finally, it is well established that the top-level domain name, as ".com" in the present case, should be disregarded to assert whether or not the disputed domain name is identical or confusingly similar to a complainant's trademark (see e.g., Diamonique Corporation v. Foley Services, WIPO Case No. D2007-0893).
In view of the above, the Panel considers that the Complainant has proved that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Prior UDRP panels have stated that it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of proof to the Respondent (see e.g. Crédit Industriel et Commercial S.A. v. Zabor Mok, WIPO Case No. D2015-1432).
In the present case, the Complainant has made a prima facie showing that the Respondent does not benefit from a license or authorization granted by the Complainant to use the trademark CIC. Moreover, there is no business relationship between the Complainant and the Respondent and the Respondent is not commonly known under the name "CIC".
Furthermore, the Respondent has not filed a response to the Complainant's contentions to try to demonstrate a possible right or legitimate interest in the disputed domain name.
Finally, the disputed domain name is resolving to a parking page, a use which is not in the nature of conferring in itself rights or legitimate interests in the domain name. Although at this date the sponsored links present on the webpage "www.conseiller-cic.com" are not in relation with the Complainant's field of activity, it used to be, at the time the Complaint was filed. Therefore, the Panel finds that there is no bona fide offering of goods and services by the Respondent.
The Respondent has not provided evidence of the circumstances set in paragraph 4(c) of the Policy. Consequently, the Panel considers that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant must also show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of registration and use of a domain name in bad faith.
As stated above, the disputed domain name incorporates identically the Complainant's CIC trademark, which is a reference to the initials of the Complainant's name, Crédit Industriel (et) Commercial.
Besides, the disputed domain name incorporates the French word "conseiller" (meaning "advisor"), frequently used in connection with banking and credit services since customers have access to an advisor to manage their accounts and respond to their questions.
Furthermore, the Respondent is located in France, where the Complainant mainly deploys its activities. Previous UDRP panels have already recognized the reputation of the Complainant in France (see e.g. Crédit Industriel et Commercial S.A. v. Zabor Mok, WIPO Case No. D2015-1432).
Moreover, the Respondent had originally registered the disputed domain name under a WhoIs proxy service. Numerous UDRP decisions have already considered that a deliberate concealment of identity and contact information may be a further indication of registration in bad faith (see e.g. Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729 and Moneycorp Limited v. Diverse Communications, WIPO Case No. D2001-0725).
In consideration of the above-mentioned elements, the Panel concludes that the Respondent has registered the disputed domain name in bad faith.
The disputed domain name resolves to a parking page with sponsor links which used to be related to the Complainant's activities at the time the Complaint was filed, namely links such as "banque commerciale" ("commercial bank") or "CIC", reproducing the Complainant's trademark.
The fact that these sponsor links directed Internet users to offers from competitors of the Complainant are evidence of bad faith use of the disputed domain name by the Respondent (see e.g. Villeroy & Boch AG v. Whois Data Shield/Hong Kong Names LLC, WIPO Case No. D2008-1300).
In any case, the use of a domain name to intentionally attract Internet users to a website for commercial gain, in an effort to trade on the Complainant's reputation, is evidence of bad faith registration and use (see e.g. "Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057).
Consequently, the Panel finds that the Respondent also 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 <conseiller-cic.com> be transferred to the Complainant.
Date: May 4, 2016