WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crédit Industriel Et Commercial S.A v. Whois Agent, Whois Privacy Protection Service, Inc / Yves Massot
Case No. D2018-0169
1. The Parties
The Complainant is Crédit Industriel Et Commercial S.A of Paris, France, represented by Meyer & Partenaires, France.
The Respondents are Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America ("United States") / Yves Massot of Abidjan, Côte d'Ivoire.
2. The Domain Name and Registrar
The disputed domain name <controle-cic-banque.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 26, 2018. On January 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2018, 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 Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on February 5, 2018, 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 February 7, 2018.
The Center verified that the Complaint together with 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 Respondents of the Complaint, and the proceedings commenced on February 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on March 5, 2018.
The Center appointed Cherise Valles as the sole panelist in this matter on March 12, 2018. 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 Crédit Industriel et Commercial (abbreviated as CIC). It was established in 1859 by an imperial decree signed by Napoleon III, and is the oldest French deposit bank. It was nationalized in 1982 and re-privatized in 1997. It currently has 4.7 million clients, including almost 770,000 professionals and businesses.
The Complainant has established a website at "www.cic.fr", through which clients can access their bank accounts through a secure interface and obtain information about the services offered by the group.
The Complainant owns the following trademarks in France (registered since 1986) and abroad:
- CIC French trademark No. 1358524 [Annex D1]
- CIC European Union trademark No. 005891411 [Annex D2]
- CIC European Union trademark No. 11355328 [Annex D3]
- CIC BANQUES French trademark No. 1691423 [Annex D4]
- CIC BANQUES International trademark No. 585098 [Annex D5]
- CIC BANQUES French trademark No. 1682713 [Annex D6]
The Complainant also uses its trademarks as domain names to promote its activities. The following lists some examples of its trademarks used as domain names:
- <cic.fr> [Annex E1]
- <cic.eu> [Annex E2]
- <cicbanque.info> [Annex E3]
- <cicbanques.com> [Annex E4]
- <cicbanques.org> [Annex E5]
Euro-Information, the computing subsidiary of the Crédit Mutuel-CIC Group is also the owner of the following domain name:
- <cicbanques.net> [Annex E6]
The Complainant has used the trademarks and domain names in commerce continuously since the time of their registrations.
The disputed domain name <controle-cic-banque.com> was registered on October 17, 2016, after the Complainant had registered its trademarks and domain names containing the wording "CIC". The disputed domain name resolves to a "404 error" page.
5. Parties' Contentions
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar or identical to the Complainant's registered trademark, CIC, in light of the fact that it wholly incorporates the Complainant's mark.
The Respondents lack rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondents should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondents to use its trademark or to register any domain name that include its trademark.
The disputed domain name was registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (i.e., a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the Respondents has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondents have failed to file a response in this proceeding and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant in accordance with the Rules, paragraph 14(b).
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark.
The Complainant is the sole and exclusive owner of the trademarks for CIC alone or of trademarks including the wording "CIC".
The disputed domain name wholly incorporates the Complainant's registered CIC trademark. It differs from the Complainant's CIC mark only by the addition of the generic top level domain name "com". Previous UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark, it is sufficient to establish confusing similarity for purposes of the Policy. See, among others, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Philip Morris USA Inc. (PM USA) v. Temp Organization / Mehmet Ali Ciger, WIPO Case No. D2011-1675.
The addition of the French terms "controle" and "banque" describe the main activity of the Complainant. The Complainant is well-known for offering banking services to its clients. Moreover, generic terms such as these cannot serve as a distinguishing feature and their addition to a well-known trademark in a domain name does not eliminate the confusing similarity. The Complainant submits that such words would only strengthen the confusing similarity between the disputed domain name and the trademark as the terms "controle", "cic" and "banque" are recognized by the Complainant's customers as identifying one of the Complainant's divisions and its respective products and services. Previous UDRP panels have reached the same conclusion in similar fact situations. See, for example, Crédit Industriel et Commercial S.A v. Registration Private, Domains By Proxy, LLC, WIPO Case No. D2016-2447; Statoil ASA v. Martins Ogemdi, WIPO Case No. D2015-001.
In the light of the foregoing, the Panel finds that the disputed domain name <controle-cic-banque.com> is confusingly similar to the Complainant's registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondents lack rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondents to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a Respondent may demonstrate rights or legitimate interests in a domain name (with "you" referring to the Respondents):
"[a]ny 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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondents did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interest in the disputed domain name.
The Respondents are not commonly known by the disputed domain name or by any combination of the terms "cic", "controle", or "banque". They do not own any trademarks that incorporate or are similar or identical to the Complainant's CIC trademark or to the terms present in the disputed domain name. The Complainant has never licensed or otherwise authorized the Respondents to use its trademark or to register a domain name comprising its trademark. There is no commercial relationship between the Complainant and the Respondents which would entitle the Respondents to use or register the disputed domain name.
The Respondents registered the disputed domain name many years after the Complainant filed for registration of its CIC and related trademarks referenced in Section 4 above. The Respondents cannot claim to have been using the CIC trademark without having been aware of the Complainant's rights to it. This suggests that the Respondents' interests cannot have been legitimate.
The disputed domain name is not being used in connection with bona fide offerings of goods or services.
It is difficult to conceive of any use to which the disputed domain name could be put either now or in the future that would not infringe the Complainant's rights (or cause confusion, given that the disputed domain name is confusingly similar to the Complainant's registered mark and name).
In similar circumstances, UDRP panels have decided that the respondents in those cases did not have any rights or legitimate interests in the disputed domain name. See, Confédération Nationale du Crédit Mutuel v. Whoisguard Protected, Whoisguard, Inc. / Isabelle Garcia, Crédit Mutuel Fiable,
WIPO Case No.
D2017-0214; Swatch AG v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2016-1370.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the Respondent has 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 the Respondents has engaged in a pattern of such conduct;
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on its website or location.
Previous panels have held that the Complainant's mark and reputation spread far beyond France. See, for example, Crédit Industriel et Commercial S.A., Banque Fédérative du Crédit Mutuel v. Headwaters MB; WIPO Case No. D2008-1892; Crédit Industriel et Commercial S.A v. Jeongyong Cho, WIPO Case No. D2013-1263; and Crédit Industriel et Commercial v. Mao Adnri Crédit Industriel et Commercial S.A., WIPO Case No. D2013-2143.
Therefore, the Complainant asserts that the trademark "CIC" is well-known in the sense of Article 6 bis of the Paris Convention.
The Complainant's CIC trademark was registered long before the disputed domain name, and the Complainant is widely known in France and globally as CIC. The Respondents must have been aware of the existence of the Complainant's rights in the trademark CIC when registering the disputed domain name, especially given the inclusion of the word "banque" which could reasonably be interpreted to relate to the Complainant when incorporated into a domain name including the Complainant's CIC mark.
The Complainant emphasizes the strong reputation and the well-known character of its trademarks CIC and CIC BANQUES related with banking and financial services. The disputed domain name is confusingly similar to the well-known trademarks CIC and CIC BANQUES.
In similar cases where the prior trademark was well-known, panels have decided that the notoriety of a complainant's trademark "creates a prima facie presumption that the Respondents registered the domain name for the purpose of selling it to Complainant or to 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 Complainant's mark". See Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020.
The Respondents appear to have registered this domain name precisely because they knew about the
well-known character of the trademarks CIC and CIC BANQUES. The act of reproducing the trademark CIC with the descriptive wordings "controle" and "banque", and the trademark CIC BANQUES with the descriptive wording "controle" as a reflection of the banking/financial goods or services it renders is an evidence of bad faith registration per se. See, for example, Confédération Nationale du Crédit Mutuel v. Whoisguard Protected, Whoisguard, Inc. / Isabelle Garcia, Crédit Mutuel Fiable, WIPO Case No. D2017-0214; Siemens AG v. Gokhan Yagci, WIPO Case No. D2015-1690.
The Complainant also claims that the Respondents' use of the disputed domain name constitutes bad faith.
The disputed domain name resolves to a "404 error" page edited by Google Inc. [Annex F]. According to Wikipedia, a 404 error is a Hypertext Transfer Protocol (HTTP) standard response code, in computer network communications, to indicate that the client was able to communicate with a given server, but the server could not find what was requested.
The website hosting server will typically generate a "404 Not Found" web page when a user attempts to follow a broken or dead link. The Complainant contends that such use of the disputed domain name constitutes bad faith use, as "passive holding".
As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 3.5, there is consensus about "passive holding" as follows: "From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding."
The Complainant submits that such "passive holding" of the disputed domain name constitutes bad faith because of the strong and well-known reputation of the Complainant's trademarks that are reproduced in the domain name and the absence of actual or contemplated good faith use by the Respondents (reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith). See, for example, Accor, So Luxury HMC v. Youness Itsmail, WIPO Case No. D2015-0287; Crédit industriel et commercial S.A. v. Registration Private, Domains By Proxy, LLC., WIPO Case No. D2016-2447.
Furthermore, the Complainant contends that the Respondents have configured the MX server associated with the disputed domain name in order to be able to send emails ending with "@controle-cic-banque.com". As the Respondents have no legitimate connection to the Complainant's business, that would amount a further inference of bad faith.
In the light of the foregoing, the Panel finds that the Complainant has established registration and use of the disputed domain name in bad faith and concludes that paragraph 4(a)(iii) of the Policy is satisfied.
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, <controle-cic-banque.com>, be transferred to the Complainant.
Date: March 26, 2018