WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crédit Industriel Et Commercial S.A. v. Latifa Yatim
Case No. D2019-0474
1. The Parties
The Complainant is Crédit Industriel Et Commercial S.A. of Paris, France, represented by Meyer & Partenaires, France.
The Respondent is Latifa Yatim of Bondy, France.
2. The Domain Names and Registrar
The disputed domain names <cic-secure-code.com> and <cic-secure-code.net> are registered with Register.IT SPA (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2019. On February 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 4, 2019 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 March 5, 2019.
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 March 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2019.
The Center appointed Emmanuelle Ragot as the sole panelist in this matter on April 9, 2019. 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, in abbreviated form CIC, which is the oldest French deposit bank. The company was nationalized in 1982 and re-privatized in 1997, before the holding Fédération du Crédit Mutuel Centre Est Europebecame the majority shareholder of CIC.
Crédit Industriel Et Commercial has currently more than 4,7 million clients, among them almost 770,000 professionals and businesses. More than 2,000 agencies are distributed in France and 38 abroad.
The Complainant is also the owner of numerous trademarks registered in France and abroad, inter alia:
- CIC French trademark No. 1358524;
- CIC European Union trademark No. 005891411;
- CIC European Union trademark No. 11355328;
- CIC BANQUES French trademark No. 1691423;
- CIC BANQUES International trademark No. 585098.
Crédit Industriel Et Commercial also reminds that it is using its trademarks as domain names to promote its activities.
These rights have been continuously used in commerce since their registrations.
The disputed domain names <cic-secure-code.com> and <cic-secure-code.net> were registered respectively on December 12 and 11, 2018. The disputed domain names resolve to an inactive page.
5. Parties’ Contentions
In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below:
First of all, the Complainant argues that the disputed domain names are confusingly similar to the trademarks CIC, since they reproduce identically the trademark CIC, so that Internet users could believe that the disputed domain names have been registered by the Complainant or with its consent.
The Complainant considers that the adjunction of dictionary terms to the CIC mark is not sufficient to give any distinctive character to the disputed domain names and thus avoid confusing similarity.
The Complainant also recalls the notoriety of its trademarks, which accentuates the likelihood of confusion.
Secondly, the addition of the generic terms “secure” and “code” are minor differences between the disputed domain names and the Complainant’s trademark CIC. It is not sufficient to distinguish these domain names from the trademark CIC.
On the contrary, the adjunction of these wordings would suggest that the websites activated through the disputed domain names are secured, trusted and protected from hackers by a personal code, through which the Internet users could safely proceed to their banking transactions online. These wordings could be a reference to a more secured tool or means for online banking services, which is a sensitive issue for both online banking services providers and users.
There is therefore no doubt that the addition of these suffixes to the Complainant’s trademark CIC would be commonly perceived by any Internet use as an indication, even a criterion, of the safety of any website or online activity around the domain names <cic-secure-code.com> and <cic-secure-code.net>, especially when these words are combined to a website offering online banking services.
The Complainant is known for offering its banking services through the Internet for years. Now, the mere addition of generic or even evocative wordings like “secure” and “code” and hyphens is not sufficient to distinguish these domain names from the Complainant’s trademark.
Panels under the UDRP have notably recognized the well-known character of the trademarks CIC.
See, for instance:
- Credit Industriel et Commercial S.A., Banque Fédérative du Credit Mutuel v. Headwaters MB, WIPO Case No. D2008-1892 for <ciccms.com> in which the Panel claimed that “the Complainants have previously demonstrated the strong reputation and the well-known character of their marks “CM,” “CIC” and “CM-CIC” for banking and financial services”.
- Credit Industriel et Commercial S.A v. Jeongyong Cho, WIPO Case No. D2013-1263 regarding the domain name <cicstart.com>: “Moreover, given the worldwide reputation of CIC as one of the leading financial groups, the trademark component CIC clearly dominates the disputed domain name, and it is likely to confuse Internet users”.
- Credit Industriel et Commercial v. Mao Adnri Credit Industriel et Commercial S.A., (“CIC”), WIPO Case No. D2013-2143 regarding domain name <cic-particuliers.com>: “The Complainant has been using the CIC trademark for decades in the area of banking and financial services. The Panel finds that this mark, owned by the Complainant, is a well-known one and the Complainant has rights in several CIC trademarks”.
Therefore, the trademark CIC is undoubtedly well known in the sense of Article 6 bis of the Paris Union Convention.
The Complainant consequently owns trademark rights and intellectual property rights on the wording “CIC”, which are prior to the disputed domain names.
The Respondent has no rights or legitimate interests in the dispute domain names, and registered and are using them in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain names, the Complainant must prove each of the following, namely that:
(i) The domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) The domain names were registered and being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the CIC trademark.
The threshold test for confusing similarity involves the comparison between the trademark and the domain name itself to determine whether the disputed domain name is confusingly similar to the trademark.
The trademark would generally be recognizable within the domain name.
In this case, the disputed domain names contain the Complainant’s trademark in its entirety, with the adjunction of an additional “secure”, “code”, and Top-Level Domain at the end.
The Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights and the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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 has been commonly known by the domain name even of it has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleading 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 allege any circumstance to establish that it has rights or legitimate interests in the disputed domain names.
The Respondent has not been licensed or authorized to use the CIC trademarks or to register the disputed domain names.
The Respondent did not make a fair or non-commercial use of the disputed domain names. The disputed domain names do not resolve to an active website.
In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain names, which the Respondent has not rebutted. The condition of paragraph 4(a)(ii) of the Policy has therefore 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 a panel to be evidence of bad faith registration and use of 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 the respondent has registered or the respondent has acquired the domain name primarly for the purposes 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(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 respondent has engaged in a pattern of such conduct; or
(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 the respondent’s website or location.
Given the well-known character of the Crédit Industriel et Commercial trademarks and moreover that the Respondent is domiciled in France, the Panel finds that the Respondent could not ignore the Complainant’s trademarks when it registered the disputed domain names.
The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names.
The Panel finds that the domain name was registered in bad faith to disrupt the Complainant’s activities.
With reference to the use of the disputed domain names, the Panel finds that the passive holding of the disputed domain names incorporating the well-known CIC trademark without any obvious actual or contemplated good faith use supports a finding that the disputed domain names are being used in bad faith.
Considering the above circumstances, the Panel considers that the Respondent’s passive holding of the disputed domain names satisfies the requirement of paragraph 4(a)(iii) that the disputed domain names were registered and are being used in bad faith by the Respondent.
Accordingly, the Complainant has satisfied the third element of the UDRP.
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, <cic-secure-code.com> and <cic-secure-code.net>, be transferred to the Complainant.
Date: Avril 20, 2019