WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Credit Industriel et Commercial S.A. v. Sarah Morine

Case No. D2018-1492

1. The Parties

The Complainant is Credit Industriel et Commercial S.A. of Paris, France, represented by MEYER & Partenaires, France.

The Respondent is Sarah Morine of Paris, France.

2. The Domain Names and Registrar

The disputed domain names <cicbanque.online> and <cicsecure.online> are registered with Uniregistrar Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2018. On July 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 5, 2018, 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 July 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 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 Complainant is a French banking group tracing its origin back to 1859, serving more than 4.7 million clients in France and in 38 countries in the world. The abbreviation form of the trade name of the Complainant is “CIC”.

The Complainant is the owner of 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 BANQUES”), No.1691423, registered on September 5, 1991;

- French trademark CIC BANQUES, No.1682713, registered on July 24, 1991.

The above trademarks designate the territory of France and cover notably services in classes 35 and 36, including banking business, banking services, credit or debit card services and security brokerage.

The Complainant owns the following domain names:

- <cic.fr>, registered on May 28, 1999;

- <cic.eu>, registered on March 6, 2006;

- <cicbanque.info>, registered on November 11, 2007;

- <cicbanques.com>, registered on April 5, 2006;

- <cicbanques.org>, registered on November 21, 2007;

- <cicbanques.net>, registered on November 21, 2007.

The Complainant’s domain name <cic.fr> resolves to its website “www.cic.fr” through which its clients can have online access to their bank accounts via a secured interface platform.

The Respondent is an individual based in Paris, France and registered the disputed domain names <cicbanque.online> and <cicsecure.online> on February 4, 2018.

The disputed domain name <cicsecure.online> used to resolve to a phishing website, attempting to acquire sensitive information of the Complainant’s clients. The disputed domain names are now inactive.

5. Parties’ Contentions

A. Complainant

(i) The Complainant contends that the disputed domain names <cicbanque.online> and <cicsecure.online> are confusingly similar to the trademark registrations of the Complainant, since the disputed domain names reproduce the CIC and CIC BANQUES trademarks in which the Complainant has rights.

The Complainant further contends that the associated French terms “banque” and “secure” describe the core activity of the Complainant, which is secure online banking services. Moreover, these terms are generic and the association of these terms to the Complainant’s trademarks will create a risk of confusion.

(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

In particular, the Complainant submits that the Respondent is not related in any way to the Complainant, and is not currently or has ever been known under the wordings “CIC” or “CIC banque” or “CIC secure”, and no license or authorization has ever been granted to the Respondent by the Complainant.

(iii) The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant submits that its trademarks are well known and the Respondent knew or should have known the existence of the Complainant’s rights.

The Complainant further states that the association of descriptive terms describing banking services with its trademarks creates a likelihood of confusion, which demonstrates the bad faith of the Respondent to register the disputed domain names for the purpose of attracting Internet users to its websites.

Moreover, the Complainant contends that the disputed domain name <cicsecure.online> used to resolve to a phishing website, attempting to acquire sensitive information of the Complainant’s clients, which accounts for another evidence of use in bad faith.

Finally, the Complainant contends that the non-use of the disputed domain names is “passive holding”, which also constitutes bad faith use.

(iv) The Complainant requests that the disputed domain names be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The Complainant submits to the language of the Registration Agreement, which is in English.

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. Hence, the Panel decides that the language of the proceeding be English and the decision be rendered in English.

6.2 Procedural Aspects

The Panel notes that the Respondent is formally in default pursuant to paragraphs 5(f) and 14(a) of the Rules because no response was received from the Respondent 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 Complainant’s 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 Complainant 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 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.

These elements will be examined in turn below.

6.3 Substantive Matters

A. Identical or Confusingly Similar

The Complainant has provided evidence that it has rights in the CIC and CIC BANQUES trademarks, which designate France and Europe, well before the Respondent registered the disputed domain names.

This satisfies the Panel that the Complainant has registered trademark rights in the CIC and CIC BANQUES trademark for the purposes of the Policy.

Further, the use of the new generic Top-Level Domain name (“gTLD”) “.online” does not affect the confusing similarity between the disputed domain names and the trademarks of the Complainant. Previous UDRP panels have regularly ruled that the addition of a gTLD such as “.online” is not to be taken into consideration when examining the identity or similarity between a complainant’s trademarks and the disputed domain name. See Credit Agricole S.A. v. Yang Xiao Yuan, WIPO Case No. D2018-1476; Association des Centres Distributeurs E. Leclerc- A.C.D. Lec v. Zhang Xin, WIPO Case No. D2016-2600.

Therefore, the relevant parts of the disputed domain names are “cicbanque” and “cicsecure”.

The Complainant provided evidence that the both of the disputed domain names reproduce the Complainant’s trademark CIC in its entirety and that the term “cicbanque” is a quasi-reproduction of the Complainant’s trademark CIC BANQUES. The Panel therefore finds that the Complainant’s trademarks are recognizable within the disputed domain names.

Moreover, the Complainant provided evidence that the associated French terms “banque” and “secure” describe the core of activity of the Complainant. In this regard, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that the addition of a descriptive term would not prevent a finding of confusing similarity (WIPO Overview 3.0, section 1.8).

The previous UDRP panels have ruled that the addition of the term “bank” or “secure” cannot prevent a finding of confusing similarity. See, Belfius Banque SA / Belfius Bank NV v. linyanxiao, WIPO Case No. D2016-0957; AXA SA v. Oghenejokwo Buhari, Sjbuhari Ltd., WIPO Case No. D2016-2178.

In view of this, the Panel finds that the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights.

Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant submits that there is no business relationship existing between the Complainant and the Respondent and no license or authorization has ever been granted to the Respondent by the Complainant.

The Complainant further provided evidence that the Respondent is not commonly known under the wordings “CIC” or “CIC banque” or “CIC secure”.

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 Respondent offered no information on what rights or legitimate interests it 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 Respondent has 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 Complainant submitted evidence that its trademark CIC is well known in connection with its services, in particular, banking and financial services. Previous UDPR panels have also recognized the well-known character of its 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; Credit Industriel et Commercial S.A. v. Mao Adnri., WIPO Case No. D2013-2143).

It has been proven to the Panel’s satisfaction that the Complainant’s trademarks are well known, registered and present in many countries, including notably France, where the Respondent is allegedly located. The Panel accepts that the Respondent could not reasonably claim to be ignorant of the Complainant’s activities.

Moreover, the Complainant provided evidence that the disputed domain name <cicsecure.online> used to resolve to a website set up for a phishing scheme, which has been shut down after being reported to the competent authorities and to the hosting company.

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 Respondent to take undue advantage of the Complainant’s marks has been demonstrated.

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.

7. Decision

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 <cicbanque.online> and <cicsecure.online> be transferred to the Complainant.

Isabelle Leroux
Sole Panelist
Date: September 29, 2018