WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Credit Industriel et Commercial S.A. v. John White, CMCIC
Case No. D2017-0485
1. The Parties
The Complainant is Credit Industriel et Commercial S.A. of Paris, France, represented by MEYER & Partenaires, France.
The Respondent is John White, CMCIC of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <cmcic-marketsolutions.com> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2017. On March 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2017, 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 April 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2017.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on May 10, 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 Credit Industriel et Commercial S.A. (in abbreviated form CIC) was set up in 1859, nationalized in 1982 and re-privatized in 1997. It has many agencies distributed in France and abroad and provides banking and financial services to a large number of clients.
The Complainant has set up an activated website located at “www.cic.fr” through which its clients can be informed about the services offered by the group and also have access to their bank accounts.
The Complainant is the owner of a number of trademark registrations consisting in or containing the sign “CIC” in France and abroad, inter alia: CM-CIC MARKET SOLUTIONS French trademark No. 4196135 dated July 10, 2015 in Nice classification classes 16, 35, 36, 38 and 41. Also, French trademark CM-CIC No. 3268115 dated January 16, 2004; French trademark CM-CIC No. 3267901 dated January 15, 2004; CM-CIC EUIPO trademark registration No. 3646957 dated February 3, 2004; CM-CIC EUIPO trademark No. 3644366 dated February 3, 2004; CIC French trademark No. 1358524 dated June 10, 1986 and CIC EUIPO trademark registration No. 5891411 dated May 10, 2007.
To promote its business the Complainant is using its trademarks as domain names, such as: <cmcicmarketsolutions.com>, <cmcicmarketsolutions.fr> and <cmcicmarketsolutions.eu>.
The disputed domain name <cmcic-marketsolutions.com> was registered on March 21, 2016 and currently does not relate to an active website.
5. Parties’ Contentions
The Complainant asserts (i) that the disputed domain name <cmcic-marketsolutions.com> is identical or confusingly similar to the marks mentioned above in which the Complainant has rights; (ii) that the Respondent has no rights of legitimate interests in respect of the disputed domain name and (iii) that the Respondent has registered and uses the disputed domain name in bad faith.
The Complainant claims that no license or authorization has been granted to the Respondent to apply for registration or use of the disputed domain name and that the Whois contact details of the registrant of the disputed domain name are clearly fictitious and are further impersonating the Complainant’s British subsidiary in London “CM-CIC”: neither the person to contact, the email address or the phone number are related to this company or to the Complainant.
The strong reputation and well-known character of the Complainant’s trademarks CIC and CM-CIC has been previously demonstrated. Panels in previous cases have acknowledged that the Complainant’s trademark CIC is a well-known mark.
The Complainant is running specific web portals at “www.cic.fr” and “www.cmcics.com” dedicated to their banking business for the first one and to their specific marketing activities under the name “CM-CIC MARKET SOLUTIONS” for the second one.
The Complainant’s business is present in 50 countries, including the United Kingdom where the Respondent seems to be located.
The Complainant asserts that the disputed domain name <cmcic-marketsolutions.com> has been “opportunistically” registered by the Respondent on March 21, 2016 following the public launching of the Complainant’s trademark CM-CIC MARKET SOLUTIONS made on January 1, 2016 at “www.cmcocs.com” and which has been registered since July 2015.
Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name registered by the respondent 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.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel considers that under the Policy the disputed domain name <cmcic-marketsolutions.com> is identical or confusingly similar to the trademark CM-CIC MARKET SOLUTIONS in which the Complainant has rights.
The Complaint’s trademark is totally included in the disputed domain name. The hyphens between the letters CM and CIC in the trademark and between “cmcic” and “marketsolutions” in the disputed domain name are clearly insufficient to avoid confusion.
Also, the distinctive element in the disputed domain name “cmcic” is almost identical to the Complainant´s trademark CM-CIC and confusingly similar to the Complainant’s well-known trademark CIC. The additional words “market solutions” in the disputed domain name are not sufficient to avoid confusion.
Following what has become the consensus view among UDRP panels (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2) the Panel shall disregard the generic suffix “.com” under the confusing similarity test.
Therefore, the Complainant has succeeded on this first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second element that the Complainant must prove pursuant to paragraph 4(a)(ii) of the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of production then shifts to the respondent to come forward evidence to demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Complainant has not in any way granted the Respondent rights to use its marks, and is in no way affiliated with the Respondent. Neither has the Respondent asserted any rights or legitimate interests in the disputed domain name. This is sufficient for the Panel to conclude that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. See GGG Filmproduktion und Vertrieb e.K. v. E4 Group and Frank Jensen, WIPO Case No. D2006-1177. Thus, the burden of production has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.
Additionally, there is no evidence that the Respondent is commonly known as or identified by “cmcic-marketsolutions”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
In view of the foregoing, and in absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The well-known character of the Complainant’s trademarks CIC has been recognized by panels in prior cases (see Crédit Industriel Et Commercial S.A. v. Alain Legoux, WIPO Case No. D2016-1073 (<cic-particuliers.info>); Crédit Industriel Et Commercial S.A v. Jeongyong Cho, WIPO Case No. D2013-1263 (<cicstar.com>) and Crédit Industriel Et Commercial S.A (“CIC”) v. Mao Adnri (<cic-particuliers.com>).
The disputed domain name <cmcic-marketsolutions.com> includes the Complainant’s well-known CIC and CM-CIC trademarks as the most distinctive features therein. It is also almost identical to the trademark CM-CIC MARKET SOLUTIONS in which the Complainant has rights. Clearly, this suggests to Internet users a relation with the Complainant, which does not exist. Therefore, the Panel considers that the Respondent registered the disputed domain name with the intention to create a false association between the disputed domain name and the Complainant’s trademarks.
Moreover, the so called “passive holding” of a domain name does not per se eliminate a finding of bad faith. In this connection the Panel refers to the relevant section of the “WIPO Overview 2.0” which reads as follows:
“3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder (passive holding)?
Consensus view: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In view of the cumulative circumstances of the case, and in absence of a rebuttal by the Respondent, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of its case.
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 <cmcic-marketsolutions.com> be transferred to the Complainant.
Miguel B. O’Farrell
Date: May 19, 2017