WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CM-CIC Asset Management v. Private Registrant, Digital Privacy Corporation / Jonathan Richardson
Case No. D2016-2390
1. The Parties
The Complainant is CM-CIC Asset Management of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Private Registrant, Digital Privacy Corporation of Vista, California, United States of America / Jonathan Richardson of Barcelona, Spain.
2. The Domain Name and Registrar
The disputed domain name <cm-assetmanagement.com> is registered with 101domain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2016. On November 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 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 November 30, 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 December 5, 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 proceedings commenced on December 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2016.
The Center appointed Evan D. Brown as the sole panelist in this matter on January 9, 2017. 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 subsidiary of the Crédit Mutuel-CIC Group and is a well-known firm providing asset management services in France and other parts of Europe. The Complainant owns several trademark registrations for variations of the mark CM-CIC ASSET MANAGEMENT, including European Union Trademark No. 013319447 issued on May 5, 2011 and European Union Trademark No. 003646957 issued on September 5, 2005 for CM-CIC. The Respondent registered the disputed domain name on August 1, 2016, but has not established an active website using the disputed domain name.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is 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 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 provided evidence of its various trademark registrations, including registrations which predate the registration of the disputed domain name. On the basis of these registrations, the Panel is satisfied that the Complainant has rights in its marks, including the mark CM-CIC ASSET MANAGEMENT.
The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The absence of the “CIC” portion of the Complainant’s mark in the disputed domain name does not meaningfully differentiate the disputed domain name from the Complainant’s mark for the purposes of the Policy. The disputed domain name includes the “cm” prefix which, since it is the first part of the Complainant’s mark, can be considered the dominant portion of the mark for comparison purposes. And one looking at the disputed domain name could reasonably connect its dominant “cm” portion with the Complainant’s parent company and the well-known mark CRÉDIT MUTUEL.
B. Rights or Legitimate Interests
The Complainant will be successful under this element of the UDRP if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and if that prima facie showing remains unrebutted by the Respondent. In this case, there are several indicators concerning the Respondent’s lack of rights or legitimate interests. The Respondent is not commonly known by the disputed domain name, nor is there any evidence in the record showing the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. These assertions establish the Complainant’s prima facie case. The Respondent has not answered the Complainant’s assertions, and, seeing no basis in the record to overcome the Complainant’s prima facie showing, the Panel finds that the Complainant has satisfied this second UDRP element.
C. Registered and Used in Bad Faith
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and, nevertheless registered a domain name in which it had no rights or legitimate interest. See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320. The Complainant is well known and has registered trademarks. The Respondent has registered the disputed domain name imitating the Complainant’s trademarks. This cannot be a coincidence. On the contrary, this constitutes evidence that the Respondent knew about the Complainant and its trademarks at the time of registration of the disputed domain name.
Given these circumstances, taking into account all of the above, the Panel cannot conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complainant has succeeded on this third element of the UDRP.
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 <cm-assetmanagement.com> be transferred to the Complainant.
Evan D. Brown
Date: January 23, 2017