WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crédit Industriel et Commercial and Confédération Nationale Du Crédit Mutuel v. c/o WHOIStrustee.com Limited / Pierre Carminati, sv greis limited / Catherine Forali
Case No. D2018-1164
1. The Parties
The Complainant is Crédit Industriel et Commercial of Paris, France and Confédération Nationale Du Crédit Mutuel of Paris, France, represented by MEYER & Partenaires, France.
The Respondents are c/o WHOIStrustee.com Limited of Wakefield, United Kingdom of Great Britain and Northern Ireland / Pierre Carminati, sv greis limited of Bordeaux, France and Catherine Forali of Bordeaux, France.
2. The Domain Names and Registrars
The disputed domain names <c-c.com> (<xn--cc-08s.com>), <c-c.immo> (<xn--cc-08s.immo>), <cicmobile.works>, <créditmutuel.co> (<xn--crditmutuel-cbb.co>), <créditmutuel.immo> (<xn--crditmutuel-cbb.immo>) and <créditmutuel.site> (<xn--crditmutuel-cbb.site>) are registered with 1API GmbH and the disputed domain names <cicmobile.club> and <cicmobile.immo> are registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrars”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2018. On May 25, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On May 28 and 29, 2018, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. On June 19, 2018, the Center notified the Parties in both English and French that the language of the Registration Agreement for the disputed domain names <cicmobile.immo> and <cicmobile.works> was French. On June 22, 2018, the Complainant requested for English to be the language of the proceedings, to which the Respondent did not reply. The Center sent an email communication to the Complainant on June 26, 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 June 29, 2018.
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 Respondents of the Complaint, and the proceedings commenced on July 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 1, 2018.
The Center appointed Isabelle Leroux as the sole panelist in this matter on September 5, 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 Complainants are a French banking company and a French association in banking services. The first Complainant is a longstanding French deposit bank, tracing its origin back to 1859, serving more than 4.7 million clients in France and in 38 countries in the world, and using the abbreviation form of the trade name “CIC”. The second Complainant is the central body of the French banking and insurance services group Crédit Mutuel, providing services to 12 million clients in France.
The two Complainants are members of the same French banking group Crédit Mutuel-CIC Group.
The Complainants own a large number of registered trademarks consisting of or including the sign CIC, inter alia:
- French trademark C.I.C., No.1358524, registered on June 10, 1986;
- European Union trade mark CIC, No.005891411, registered on March 5, 2008;
- European Union trade mark CIC, No.11355328, registered on March 26, 2013;
- French trademark CIC MOBILE, No.3617914, registered on December 16, 2008;
- European Union trade mark CIC MOBILE, No.8364473, registered on June 15, 2009.
The above trademarks designate the territory of France and the European Union, and cover notably services in classes 9, 16, 35 and 36.
The Complainants also own a large number of registered trademarks consisting of the sign CREDIT MUTUEL, inter alia:
- French semi-figurative trademark CRÉDIT MUTUEL, No. 1475940 of July 8, 1988, in classes 35 and 36, renewed on August 27, 2008;
- French semi-figurative trademark CRÉDIT MUTUEL, No. 1646012 of November 20, 1990 in classes 16, 35, 36, 38 (Internet services) and 41, renewed on September 15, 2010;
- European Union trade mark CRÉDIT MUTUEL, No. 9943135 of May 5, 2011 in classes 9, 16, 35, 36, 38, 41, 42, 45;
- International semi-figurative trademark CREDIT MUTUEL No. 570182 of May 17, 1991 in classes 16, 35, 36, 38 and 41, designating Benelux, Italy and Portugal, renewed on February 28, 2011.
The Complainants own respectively the following domain names:
- <cic.fr>, registered on May 28, 1999;
- <cic.eu>, registered on March 6, 2006;
- <cicbanques.com>, registered on April 5, 2006;
- <cic-mobile.fr>, registered on October 5, 2007;
- <creditmutuel.info> registered on September 13, 2001;
- <creditmutuel.org> registered on June 3, 2002;
- <creditmutuel.fr> registered on August 10, 1995;
- <creditmutuel.com> registered on October 28, 1995;
- <creditmutuel.net> registered on October 3, 1996.
The computing subsidiary of the Crédit Mutuel-CIC Group is also the owner of the domain name <cicbanques.net>, registered on October 21, 2007.
The disputed domain names include the following registrations:
- <cicmobile.immo> registered on February 14, 2018;
- <c-c.com> registered on February 24, 2018;
- <c-c.immo> registered on April 12, 2018;
- <cicmobile.works> registered on March 15, 2018 (initially registered with a privacy service);
- <créditmutuel.co> registered on April 19, 2018;
- <créditmutuel.immo> registered on April 26, 2018;
- <créditmutuel.site> registered on April 25, 2018.
The above disputed domain names were registered by an individual located in Bordeaux, France.
The disputed domain name <cicmobile.club> was registered on April 2, 2018, by another individual located in Bordeaux, France.
The disputed domain names are now inactive.
5. Parties’ Contentions
(i) The Complainants contend that the disputed domain names are identical to the trademark registrations of the Complainants, since the disputed domain names reproduce identically the CIC, CIC MOBILE and CREDIT MUTUEL trademarks in which the Complainants have rights.
(ii) The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
In particular, the Complainants submit that the Respondents are not related in any way to the Complainants, and are not currently or have ever been known under the wordings of “CIC”, “CIC Mobile” and “Crédit Mutuel”, and no license or authorization has ever been granted to the Respondents by the Complainants.
(iii) The Complainants contend that the disputed domain names were registered in bad faith. The Complainants submit that their trademarks are well known and the Respondents knew or should have known the existence of the Complainants’ rights.
The Complainants further contend that the disputed domain names are being used in bad faith. The Complainants submit that the disputed domain names used to be activated for phishing purposes. Moreover, the disputed domain name <cicmobile.works> used to resolve to a website of a third party, which accounts for another evidence of bad faith use.
(iv) The Complainants request transfer of the disputed domain names.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1. Preliminary Matter: Consolidation
Before addressing the three elements of the Policy, the Panel must first address a procedural issue, namely whether to accept in the present procedure a complaint by two Complainants against three distinct Respondents.
The question of the multiplicity of marks, domain names, complainants and respondents being consolidated in one single complaint has been addressed in previous UDRP decisions. Panels have held that “when a complainant (or, as in this case, a group of closely related entities) are seeking redress against a single respondent and their complaint is based on the same set or similar sets of facts and on the same legal basis, it seems appropriate to allow them to proceed in this way”, see, L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Lancôme Parfums Beauté et compagnie and L’Oréal v. Din Mont and Yunleng Mercyk, WIPO Case No. D2016-1721.
Members of the same group of companies may constitute an “entity” for the purposes of initiating a UDRP proceeding. See Lancôme Parfums Et Beauté Et Compagnie, Laboratoire Garnier Et Compagnie, L’Oréal S.A. v. Cong Ty Co Phan Phununet, WIPO Case No. D2010-0603; L’Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie. v. Spiral Matrix, WIPO Case No. D2006-0869.
In the present proceeding, the two Complainants are members of the same French banking group Crédit Mutuel-CIC Group. Thus, the Panel accepts that they may constitute an “entity” for the purpose of the proceeding.
Paragraph 3(c) of the Policy provides that “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Paragraph 10(e) of the Rules provides that “[a] Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”.
Paragraphs 3(c) of the Policy and 10(e) of the Rules are not mutually exclusive. Panels have the authority to order the consolidation of multiple domain name disputes under paragraph 10(e) of the Rules in all circumstances involving differently named domain name holders. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654.
Section 4.11.2 of WIPO Overview 3.0 further provides that where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
In the present case, the Complaint was filed against three Respondents.
Regarding the registrant of the disputed domain name <cicmobile.club>, the Complainants contends that this Respondent is another identity of the registrant of the disputed domain names, given that (1) they both have the same postal addresses in Bordeaux, France, (2) the Registrar is the same as the one of the disputed domain names <cicmobile.immo>, (3) the administrative contact is also the same as the disputed domain name <cicmobile.immo>.
In view of the above elements, the Panel finds that it has been demonstrated that the registrant of the disputed domain name <cicmobile.club>, is under common control with the registrant of the remaining disputed domain names.
Consequently, considering the facts in the present case, the Panel accepts the Complaint filed against all three Respondents in the present proceeding.
6.2 Preliminary Matter: Language of the Proceeding
The Complaint was filed in English.
The Complainants did not provide Registration Agreements. However, they argue that the Registration Agreements are available in German and in English. In fact, the language of the Registration Agreement for the disputed domain names <cicmobile.immo> and <cicmobile.works> is French.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
In the present case, the Panel takes into account the circumstances of the proceedings, including, but not limited to:
(i) the Center sent case-related communications to the Parties in both French and English;
(ii) the Respondents did not submit an objection to the Complainant’s request that English be the language of the proceeding or any other reply in the present proceeding;
(iii) although the Registrars are located in Germany, the websites of the Registrars are available in English; and
(iv) the Respondents have registered several other domain names, also the subject of these proceedings, for which the language of the Registration Agreements is English.
In the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides that the language of the proceeding be English and the decision be rendered in English.
6.3 Procedural Aspects
The Panel notes that the Respondents are formally in default pursuant to paragraphs 5(f) and 14(a) of the Rules because no response was received from the Respondents within the time limit set by the Policy and the Rules.
However, the Panel finds that this does not mean that the remedies requested should automatically be awarded. The Panel will have to establish whether the Complainants’ case meets the requirements of paragraph 4(a) of the Policy. See LEGO Juris A/S v. NyunHwa Jung, WIPO Case No. D2012-1233; Charabot SA v. Name Redacted, WIPO Case No. D2018-0339.
Paragraph 4(a) of the Policy requires the Complainants to prove each of the following elements in order to obtain relief:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) The Respondents have 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.
These elements will be examined in turn below.
6.4 Substantive Matters
A. Identical or Confusingly Similar
The Complainants provided evidence that they have rights in the CIC, CIC MOBILE, and CREDIT MUTUEL trademarks, which designate France, well before the Respondents registered the disputed domain names.
This satisfies the Panel that the Complainants have registered trademark rights in the CIC, CIC MOBILE, and CREDIT MUTUEL trademarks for the purposes of the Policy.
According to Section 1.11.1 of the WIPO Overview 3.0, the applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Consequently, the Panel finds that the disputed domain names reproduce identically the CIC, CIC MOBILE and CREDITMUTUEL trademarks in which the Complainants have rights, and therefore the disputed domain names are identical to the trademark registrations of the Complainants. The inclusion of a non-Latin accented letter in the disputed domain name does not alter the Panel’s finding on this element.
Thus, the Complainants have satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainants submit that there is no business relationship existing between the Complainants and the Respondents and no license or authorization has ever been granted to the Respondents by the Complainants.
The Complainants further provided evidence that the Respondents are not commonly known under the wordings “CIC” or “CIC Mobile” and “Crédit Mutuel”.
According to the above elements and the case file, the Panel finds that the Complainant has established a prima facie case that the disputed domain names are not used in connection with a bona fide offering of goods or services and no legitimate noncommercial or fair use is made of the disputed domain names.
By not submitting a Response, the Respondents offered no information on what rights or legitimate interests they may have in the disputed domain names. Thus the Panel finds no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain names and thus the requirement under paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Complainants submitted evidence that their trademarks CIC and CREDIT MUTUEL are well known in connection with their services, in particular, online banking services.
Previous UDRP panels have also recognized the well-known character of these trademarks (Credit Industriel et Commercial S.A., Banque Fédérative du Credit Mutuel v. Headwaters MB, WIPO Case No. D2008-1892; Credit Industriel et Commercial S.A v. Jeongyong Cho, WIPO Case No. D2013-1263; Confederation Nationale du Credit Mutuel v. Philippe Marie, WIPO Case No. D2010-1513).
It has been proven to the Panel’s satisfaction that the Complainants’ trademarks are well known, registered and present in the European Union, notably in France, where the Respondents are allegedly located. The Panel accepts that the Respondents could not reasonably claim to be ignorant of the Complainants’ activities.
The Complainants provided evidence that the disputed domain names used to resolve to phishing websites, which were shut down after being reported to the competent authorities and to the hosting company.
The Complainants further demonstrated that email servers have been configured on some of the disputed domain names such as <créditmutuel.site>, aiming to deceive Internet users to believe they were dealing with the Complainants.
As indicated in section 3.1.4 of the WIPO Overview 3.0, the use of a domain name for per se illegitimate activity such as phishing schemes is manifestly considered evidence of bad faith. Previous UDRP panels have found that the use of a domain name that is likely to be confused with the complainant’s mark for purposes of a phishing scheme constitutes bad faith registration and use. See PCL Construction Holdings Ltd. v. Chye Ling, WIPO Case No. D2012-2498; National Westminster Bank plc v. Adeolu Ajai, WIPO Case No. D2014-1826.
Accordingly, this Panel finds that the intention of the Respondents to take undue advantage of the Complainants’ trademarks has been demonstrated.
Moreover, the Complainants provided evidence that the disputed domain name <cicmobile.works> used to resolve to a website of a third party called “CIC Consulting Partner GmbH”, while the official website site of the third party is registered under another domain name.
In the absence of a Response from the Respondents, the Respondents offered no information on the intention of such use. The Panel therefore finds that the redirection to a third-party website could be considered as another indication of bad faith use.
Lastly, the Panel notes that the disputed domain names are now inactive. In any event, the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding (WIPO Overview 3.0, section 3.3).
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been 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 names <cicmobile.club>, <cicmobile.immo>, <cicmobile.works>, <c-c.com> (<xn--cc-08s.com>) and <c-c.immo> (<xn--cc-08s.immo>) be transferred to the first Complainant Crédit Industriel et Commercial and that disputed domain names <créditmutuel.immo> (xn--crditmutuel-cbb.immo>), <créditmutuel.co> (<xn--crditmutuel-cbb.co>) and <créditmutuel.site> (<xn--crditmutuel-cbb.site>) be transferred to the second Complainant Confédération Nationale du Crédit Mutuel.
Date: September 29, 2018