WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crédit Industriel Et Commercial S.A. v. Alain Legoux
Case No. D2016-1073
1. The Parties
The Complainant is Crédit Industriel Et Commercial S.A. (“CIC”) of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Alain Legoux of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <cic-particuliers.info> is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2016. On May 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2016, the Registrar 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” 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 proceedings commenced on June 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2016.
The Center appointed Gerald Page as the sole panelist in this matter on June 30, 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
The following facts have not been contested:
The Complainant is Crédit Industriel et Commercial S.A. (“CIC”), a French banking group holding several registered trademarks consisting of or including “CIC”. It offers banking and financial services in France and internationally, with offices in more than 30 countries worldwide. Its main website is “www.cic.fr”.
As shown in Annexes to the Complaint, the Complainant has rights in the following trademarks:
- C.I.C., French trademark no. 135824, registered on June 10, 1986 and renewed;
- CIC, French trademark no. 5891411, registered on May 10, 2007;
- CIC BANQUES, International trademark no. 585099, registered on April 10, 1992.
The fame of the trademark CIC in has been recognized by several UDRP panels, and cannot be doubted.
As shown in Annexes to the Complaint, the Complainant holds many domain names among them the following:
The disputed domain name <cic-particuliers.info> was registered on July 24, 2015. It was therefore registered after the above mentioned trademark. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant contends, inter alia, that the three requisites of paragraph 4(a) of the Policy are met:
(i) The Complainant claims that the disputed domain name is confusingly similar to CIC’s famous registered trademarks in which the Complainant has rights and evidences its numerous trademarks and several domain names that it owns.
The disputed domain name integrally reproduces the trademark CIC. The suffix “particuliers” is added, which means “individuals” similar to “consumers” in French. Therefore, Internet users are likely to assume that the disputed domain name and the potential website which could be associated with it are owned, controlled, or approved by the Complainant. The Complainant points out that neither the suffix “particuliers” nor the generic Top-Level Domain (“gTLD”) “.info” have a distinguishing effect.
(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name: the Respondent is not related in any way to the Complainant’s business, he is not one of its agents and does not carry out any activity for, or has any business with it. No license or authorization has been granted to the Respondent to make any use, nor apply for registration of the disputed domain name.
(iii) The Complainant adds that the Respondent registered the domain name in bad faith. The Complainant is well-known in France where the Respondent lives and the combination between the trademark and the word “particuliers” aims abusively at strenghtening the Internet users’ belief that they are dealing with the Complainant’s website. The Respondent’s knowledge of the brand creates a prima facie presumption of his bad faith.
Even though the disputed domain name does not resolve to an active website, at least visibly, the Complainant invokes that this use can be considered as passive holding, which is harmful for the Complainant considering the nature of its activities. Indeed, the Complainant is constantly exposed to counterfeiting and fishing attempts and has a duty to protect its clients from these attacks. Moreover, the circumstances surrounding the registration by the Respondent show that he acted in bad faith: firstly, the address provided proved to be illegible or inaccessible and secondly, it does not seem to be his first attempt to register domain names including third-party trademarks.
The Respondent did not reply to the Complainant’s contentions. Therefore, he has not shown or even alleged any rights or legitimate interests in the disputed domain name. Neither did he challenge any of the Complainant’s submissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel has to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statement and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:
(i) That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or no legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
It is well established that the Complainant has been using the CIC trademark for decades in the area of banking and financial services, and that it has rights on several CIC trademarks. The Panel finds that this mark, owned by the Complainant, is widely known.
The protected CIC is fully present in the disputed domain name, at its beginning.
The adjunction of the term “particuliers” does not alter the risk of confusion for the Internet users as it has no distinctive force by itself. In fact, it reinforces the meaning of CIC in its frequent use for the online banking activities in France (see Crédit Industriel et Commercial v. Mao Adnri, WIPO Case No. D2013-2143). The gTLD “.info” is of no distinguishing effect.
Consequently, there is no doubt that Internet users will associate the disputed domain name with the Complainant’s business. In view of the above, the Panel concludes that <cic-particuliers.info> is confusingly similar to the Complainant’s trademark and that the Complaint satisfies the criteria defined in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant has to prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of proof, several decisions of UDRP panels have held that “although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name” (see Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; see also Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; Ets Leobert, SARL v. Jeonggon Seo, WIPO Case No. D2009-0004).
The Complainant underlines without being contradicted, that the Respondent is not related in any way to its business. There is no evidence of any license or authorization granted to the Respondent to use the disputed domain name. The Complainant has therefore established a prima facie case that the Respondent lacks rights or legitimate interests in the use of the disputed domain name.
The Respondent, through his silence, has not shown the existence of any rights or legitimate interests in respect to the disputed domain name. He has not shown either that he uses or intends to use the disputed domain name.
In similar circumstances, UDRP panels decided that the Respondent has neither rights nor legitimate interests in the domain name (see Credit Industriel et Commercial S.A. v. Jeongyong Cho, WIPO Case No. D2013-1263). The Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, bad faith should be demonstrated both for registration and use of the disputed domain name. Paragraph 4(b) of the Policy mentions “in particular but without limitation” four methods for showing bad faith registration and use of a disputed domain name.
As for the registration of the disputed domain name, considering the reputation of the trademark CIC in France where the Respondent lives (even if his address is obviously false), the Panel considers that the Respondent could not have ignored this trademark at the time he applied for the registration of the confusingly similar disputed domain name <cic-particuliers.info>.
Passive holding of a domain name is not an obstacle to a finding of bad faith.
Several UDRP panels have ruled on this issue, and it has been widely accepted that “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith” (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; see also Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. 2008-1393).
Therefore, the Panel will examine all the circumstances of the case to determine whether the Respondent is acting in bad faith.
The attempts made by the Complainant to contact the Respondent have proved futile as it seems that the Respondent intentionally provided a false address which is inaccessible at the time of the disputed domain name’s registration. It is likely that it is done in order to sidestep measures taken against him. The Panel can make such reasonable inferences, and finds that by providing an incorrect address, the Respondent did not act bona fide (see The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340).
On the other hand, the Respondent has remained mute during all the proceedings, and did not respond to the Complaint. He did not object to the Complainant’s credible submission concerning bad faith.
Moreover, the Panel notes the risk for the Complainant in the banking sector to have the disputed domain name under the Respondent’s control, which could be detrimental to its clients or its reputation.
The Panel is convinced that Respondent has registered and is using the disputed domain name in bad faith. Accordingly, it is found that the Complainant has also satisfied the requirement under paragraph 4(a)(iii) 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 name <cic-particuliers.info> be transferred to the Complainant.
Date: July 19, 2016