WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Credit Industriel et Commercial S.A. v. Perfect Privacy, LLC / Zakaria Benouda
Case No. D2017-0066
1. The Parties
The Complainant is Credit Industriel et Commercial S.A. of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“US”) / Zakaria Benouda of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <cicbanqhol.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2017. On January 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2017, 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 January 17, 2017, 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 January 19, 2017.
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 January 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2017.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on February 20, 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 the registered owner of a large number of trademarks consisting or including the sign “CIC” in France and abroad, inter alia:
CIC French trademark No. 1358524
CIC Community trademark No. 005891411
CIC BANQUES International trademark No. 585099
CIC BANQUES French trademark No. 1691423
CIC BANQUES International trademark No. 585098
CIC BANQUES French trademark No. 1682713
The Complainant is using its trademarks as domain names to promote its activities, especially the domain names <cic.fr>, <cic.eu> and <cicbanques.com>.
The disputed domain name <cicbanqhol.com> was created on December 11, 2016, using a Privacy Shield service and resolving to a website, which was the copy of the Complainant’s website.
Pursuant to the Notice of Change in Registrant Information sent by the Center to the Complainant on January 17, 2017, the Respondent, Zakaria Benouda, is an individual domiciled in France.
5. Parties’ Contentions
The Complainant explains that it uses its trademarks in commerce since the date of their registrations and it relies on previous UDRP decisions that have recognized the well-known character of the CIC trademarks (see, e.g., Credit Industriel et Commercial S.A., Banque Fédérative du Credit Mutuel v. Headwaters MB, WIPO Case No. D2008-1892 regarding the domain name <ciccms.com>; Credit Industriel et Commercial S.A v. Jeongyong Cho, WIPO Case No. D2013-1263 regarding the domain name <cicstart.com>; and Credit Industriel et Commercial v. Mao Adnri, WIPO Case No. D2013-2143 regarding the domain name <cic-particuliers.com>).
The Complainant further asserts that the CIC trademark is undoubtedly well-known in the sense of Article 6 bis of the Paris Union Convention and that it owns trademark rights and intellectual property rights on the wordings CIC and CIC BANQUE/BANQUES, which are prior to the disputed domain name.
The Complainant claims that the disputed domain name <cicbanqhol.com> is identical or at least confusingly similar to the trademarks CIC and CIC BANQUES.
Firstly, the trademark CIC is identically reproduced in the disputed domain name.
Secondly, the associated term “banq” describes the core business activity of the Complainant. The Complainant is indeed known for offering banking and financial services since numerous years.
The Complainant furthermore argues that neither the mere addition of a descriptive wording like “banq”, nor the addition of the final letters “HOL”, which by their final position are not taken into account, are not sufficient to distinguish the disputed domain name from the Complainant’s CIC and CIC BANQUES trademarks.
Such terms would even only strengthen the likelihood of confusion between the disputed domain name and the trademark.
Absence of legitimate rights or interest
The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name <cicbanqhol.net>.
The Respondent is not related in any way to the Complainant’s business: it is not one of its agents and does not carry out any activity for, or has any business with it.
The Respondent is not currently and has never been known under the wording “cic” or “cic banqhol”.
No license or authorization has been granted to the Respondent to make any use or apply for registration of the disputed domain name.
Moreover, the disputed domain name <cicbanqhol.com> resolves to a website which reproduces the semi-figurative trademark CIC and looks like one of the official websites of the Complainant. This cannot be considered as a bona fide offering of goods or services or a noncommercial use.
Considering these elements, the Complainant contends that the Respondent has no right and no legitimate interest in the disputed domain name <cicbanqhol.com>.
Bad faith registration
Given the well-known character of the CIC trademark, it creates a prima facie presumption that the Respondent registered the domain name for the purpose of selling it to the Complainant or one of its competitors, or that it was indented to be used in some way to attract for commercial gain users to the website by creating a likelihood of confusion with the Complainant’s mark.
The Respondent could not have ignored the reputation of the brands CIC and CIC BANQUES at the time it registered the disputed domain name. Further, there is no doubt that the Respondent wanted to refer to the Complainant in registering the domain name at stake.
Furthermore, the Respondent has anonymously registered the disputed domain name. Moreover, the Respondent has already been involved in a number of UDRP cases because of registering domain names reproducing or incorporating trademarks of third parties.
Bad faith use
The disputed domain name resolves to a website having the appearance of the official website of the Complainant, which reproduces its semi-figurative trademark CIC as well as its slogan “CIC, Construisons dans un monde qui bouge”.
On this website displaying in French, what appears to be a false bank located in Paris, the Respondent proposes to its clients similar banking and financial services to those of the Complainant, the real banking group CIC. It is also mentioned that the Internet users are on a 100% secured space, which contributes to make them believe that they are visiting one of the trusted websites of the Complainant.
The “contact” email address provided on this website incorporates the Complainant’s trademark CIC. As these contact details may be mistaken for being those of the Complainant, Internet users could communicate their personal details, which could be potentially later used in a fraudulent way by the Respondent.
It is very plausible to imagine that the disputed domain name <cicbanqhol.com> was registered for and is intended to be used for emailing purpose. The Complainant underlines here that email servers have been activated for the disputed domain name.
From this perspective, the Respondent is able to send and receive emails through any address with the “@cicbanqhol.com” suffix, for illegitimate purposes such as spamming, or phishing, to the detriment of the Complainant.
The Complainant would like to point out the fact that, as a banking group, it has to continuously face counterfeiting/phishing attempts. Therefore, the Complainant has to prevent any new websites that give the false impression of being connected to the Complainant and to protect in the meantime its clients from counterfeiting and fraud.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To prevail in the proceedings under the Policy, the Complainant must show that the three requirements set forth in paragraph 4(a) of the Policy are met. Those requirements are:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Likewise, under paragraph 4(c) of the Policy, the Respondent can demonstrate its rights and legitimate interests in the disputed domain name in its response to the Complaint by demonstrating, among others, the circumstances mentioned under this paragraph of the Policy.
A. Identical or Confusingly Similar
The Complainant has clearly established its registered rights in the CIC and CIC BANQUES trademarks.
The Panel also recognizes that the CIC trademark is a well-known trademark.
The disputed domain name <cicbanqhol.com> is composed of the well-known CIC trademark, to which the terme “banqhol” is added.
This term clearly refers to the term “banque” which is included in the CIC BANQUES trademarks owned by the Complainant, and which designates the activity of the Complainant.
Replacing the letters “ue” by the letters “hol” does not exclude any likelihood of confusion.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The condition of paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
As set forth by paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name 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 domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent did not respond to the Complaint. Consequently it did not provide any evidence or circumstances to establish that it has rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy.
In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s absence of rights or legitimate interests in the disputed domain name.
The Respondent has not been licensed or authorized to use the CIC and CIC BANQUES trademarks or to register the disputed domain name.
The Respondent did not make a fair or noncommercial use of the disputed domain name. On the opposite, the Respondent used a privacy shield service to register the domain name and then used it to resolve to an obviously infringing website copying the official Complainant’s website and reproducing the Complainant’s trademarks.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by an Administrative Panel to be evidence of bad faith registration and use of a domain name. It provides that:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant has demonstrated the well-known character of its CIC and CIC BANQUES trademarks.
The Respondent, who is domiciled in Paris, could not ignore the Complainant’s rights in the CIC and CIC BANQUES trademarks when it registered the disputed domain name <cicbanqhol.com>.
The Panel finds that the disputed domain name was registered in bad faith with the Complainant in mind, to make a commercial gain and disrupting the Complainant’s activity.
The Respondent is using the disputed domain name to resolve to an infringing website dedicated to banking services and offering the Internet users to contact the bank via an email address incorporating the Complainant’s trademark.
The Panel furthermore finds that the Complainant has submitted proof that the disputed domain name <cicbanqhol.com> has MX servers that enable the Respondent to use it for creating and using email addresses composed with “@cicbanqhol.com”. These email addresses can, according to the Panel, be used for any purposes and notably for spamming or phishing purposes, to obtain banking and personal data from the Complainant’s customers and to misuse these data.
The use of the disputed domain name to resolve to an infringing website, together with the technical configuration of the disputed domain name in order to be able to create and use email addresses, is, according to the Panel, proof that the Respondent aimed at creating a likelihood of confusion with the Complainant’s trademarks in order to mislead Internet users, and especially the Complainant’s clients, for commercial gain.
The Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, in the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.
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 <cicbanqhol.com> be transferred to the Complainant.
Date: March 6, 2017