WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crédit industriel et commercial S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / kamal quemard
Case No. D2019-1508
1. The Parties
The Complainant is Crédit Industriel et Commercial S.A., France, represented by MEYER & Partenaires, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / kamal quemard, Morocco.
2. The Domain Names and Registrar
The disputed domain names <c-cic-fr.com> and <1-cic-fr.com> are registered with NameCheap, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2019. On June 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 28, 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 July 8, 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 amendment to the Complaint on July 11, 2019.
The Center verified that the Complaint together with the amendment to 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 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2019.
The Center appointed Edoardo Fano as the sole panelist in this matter on August 12, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Crédit Industriel et Commercial S.A., a French bank created in 1859 operating with more than 2.000 agencies in France and around the world and owning several trademark registrations for its acronym CIC, among which the following ones:
- French Trademark Registration No. 1358524 for C.I.C., registered on June 10, 1986;
- European Union Trademark Registration No. 011355328 for CIC, registered on March 26, 2013.
The Complainant operates on the Internet at several websites, among which the main one is “www.cic.fr”.
The Complainant provided evidence in support of the above.
The disputed domain names <c-cic-fr.com> and <1-cic-fr.com> were registered on June 4, 2019, according to the WhoIs records, and when the Complaint was filed, they were both resolving to “index” webpages.
5. Parties’ Contentions
The Complainant states that the disputed domain names <c-cic-fr.com> and <1-cic-fr.com> are confusingly similar to its trademark CIC, since they fully incorporate the Complainant’s trademark.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it is not commonly known by the disputed domain names and has not been authorized by the Complainant to use them.
The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademark CIC is renowned throughout the world in connection with banking and financial services. Therefore, the Respondent was likely to have knowledge of the Complainant’s trademark at the time of registration of the disputed domain names and the Complainant cannot see a use of the disputed domain names by the Respondent that would not amount to bad faith.
The fact that the Respondent also activated the email servers on the disputed domain names, which allows sending and receiving emails with any email address ending with the disputed domain names, increases the risk of bad faith use of the disputed domain names as a phishing scheme.
The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288.)
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark CIC both by registration and acquired reputation and that the disputed domain names <c-cic-fr.com> and <1-cic-fr.com> are confusingly similar to the trademark CIC.
Regarding the addition of the letter “c” (that could be intended as the first letter of the Complainant’s trademark), of the number “1” (that could be intended as the rank of the Complainant in the banking field) and of the acronym “fr” (for France, the home country of the Complainant) to the disputed domain names, the Panel notes that it is now well established that the addition of terms, numbers or letters to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the letter “c”, the number “1”, and the acronym “fr” does not therefore prevent the disputed domain names incorporating them from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainant, in its Complaint and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, 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 has acquired the domain name primarily for the purpose 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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.”
Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark CIC in the field of banking and financial services is clearly established and the Panel finds that the Respondent knew or should have known of the Complainant and deliberately registered the disputed domain names.
Regarding the use in bad faith of the disputed domain names, pointing to “index” webpages, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith use.
Moreover, the configuration of an email server on the disputed domain names is creating a further risk that the Respondent could be engaged in a phishing scheme, a very common situation in the field of banking services.
The Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.
The Panel therefore finds that 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 <c-cic-fr.com> and <1-cic-fr.com> be transferred to the Complainant.
Date: August 14, 2019