WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Credit Industriel et Commercial v. Alex Bull
Case No. D2019-2180
1. The Parties
The Complainant is Credit Industriel et Commercial, France, represented by MEYER & Partenaires, France.
The Respondent is Alex Bull, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mobilecicd.club> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2019. On September 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 2019, 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 Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 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 September 13, 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 September 16, 2019.
Following an informal email from the Respondent and the request of the Complainant, on September 20, 2019 the Center suspended the proceeding until October 20, 2019. On September 24, 2019, the Complainant requested the withdrawal of the Complaint. In view of the Complainant’s email communication, the Center sent an email on the same date with the Notification of Termination. On the same day, the Center received an email from the Respondent opposing the termination of the case. On September 25, 2019, the Center invited the Parties to provide their comments by October 2, 2019 on whether they still wish to explore settlement options, in which case the proceeding would continue to be suspended. Both Parties sent their comments before the due date and the Center reinstated the proceeding on October 4, 2019. On the same day, the Center informed the Parties that the due date for Response was October 19, 2019. The Response was filed with the Center on October 14, 2019.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 24, 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 (whose abbreviated name is CIC), is one of the oldest French deposit banks, set up in 1859 by an imperial decree of Napoleon III. It currently has more than 4.7 million clients and more than 2,000 offices in France and in other countries.
The Complainant is the owner of the following registrations for the sign CIC MOBILE (the “CIC MOBILE trademark”):
- the European Union trademark CIC MOBILE with registration No. 008364473, registered on February 10, 2010 for goods in International Class 9; and
- the French trademark CIC MOBILE with registration No. 3760948, registered on August 18, 2010 for goods and services in International Classes 9, 35 and 36.
The Complainant operates official websites dedicated to its mobile phone services at the domain names <cic-mobile.fr>, registered by the Complainant on October 5, 2007, and <cic-mobile.com>, registered by the Complainant on October 11, 2012.
The disputed domain name was registered on July 4, 2019. It resolves to a webpage containing pay‑per‑click links related to mobile phones and related services and software.
5. Parties’ Contentions
According to the Complainant, the disputed domain name is confusingly similar to the CIC MOBILE trademark, despite of the inversion of the words “cic” and “mobile” in the disputed domain name. The Complainant adds that the addition of the letter “d” does not prevent the disputed domain name from being confusingly similar to the CIC MOBILE trademark.
The Complainant states in its Complaint that the Respondent should not be considered as having rights or legitimate interests in the disputed domain name, as the Respondent is not related to the Complainant and does not carry out any business with it, is not known under the disputed domain name and no authorization has been granted to the Respondent to register or use the disputed domain name. In its communication to the Center of September 24, 2019, and October 2, 2019, however, the Complainant referred to the Respondent’s communication explaining its project and requested the withdrawal of the proceeding, given the Respondent’s interest in the disputed domain name.
With its Complaint, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent could not have ignored the reputation of the CIC MOBILE trademark at the time it registered the disputed domain name, and registered it because it knew the well-known character of this trademark. The Complainant argues that it is unlikely that the Respondent has chosen the disputed domain name, unless seeking to create an impression of association with the Complainant’s fame and reputation. The Complainant goes on the state that the concealment of the Respondent’s identity through the use of a privacy service demonstrates that the disputed domain name was registered in bad faith. The Complainant points out that the disputed domain name activates a website with several hyperlinks in the telephony services field, which is one of the Complainant’s lines of business, and the sponsored links appearing on this website include links to the Complainant and to some of its competitors, so the Respondent is using the disputed domain name to misdirect Internet users to its website for commercial gain.
The Respondent maintains that the element “cicd” in the disputed domain name does not refer to the Complainant, but represents a common acronym for continuous-integration-continuous-delivery, or “CICD”.
According to the Respondent, “mobile CICD” is a general term for building mobile applications in an automated fashion. It states that it has carried out development efforts on a project to build a new mobile CICD system. In view of this, the Respondent contends that it has a legitimate interest in retaining the disputed domain name.
The Respondent denies having acted in bad faith. According to it, the advertisements on the website at the disputed domain name are targeted ads served by a third party based on the browsing data of the person viewing the website and do not represent the content to be displayed on the website.
6. Discussion and Findings
6.1. Procedural issue – the Complainant’s request for withdrawal of the Complaint
On September 24, 2019, the Complainant requested the withdrawal of the Complaint. On the same date, the Respondent disagreed with the termination of the proceeding on the basis of the withdrawal of the Complaint and requested the case to proceed to the merits. On September 25, 2019, the Center invited the Parties to comment. In response to this, the Complainant stated that its request for withdrawal of the Complaint is justified because it was useless to continue the administrative proceeding under the circumstances. The Respondent maintained its request that the case proceed to the merits phase, so that a precedent can be set on the dispute. The Parties have not reached an agreement to settle the dispute.
Paragraph 17(b) of the Rules provides that if, before the Panel’s decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel. The request for withdrawal of the Complaint can be interpreted as if the Complainant no longer wishes to receive a decision on the merits, which raises the question of whether it has now become unnecessary to continue the administrative proceeding. The Respondent insists on the continuation of the proceeding and the issuance of a decision on the merits that addresses the arguments contained in the Response, and the Parties have not reached a settlement of their dispute.
In these circumstances, it appears to the Panel that it has not become unnecessary to continue the administrative proceeding. Therefore, a termination of the proceeding would not be appropriate, and the Panel will proceed to a decision on the merits.
6.2. Substantive issues
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed 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 disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the CIC MOBILE trademark.
The Panel notes that a common practice has emerged under the Policy to disregard the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.club” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the element “mobilecicd”. It can be regarded as a combination of the elements “mobile” and “cicd”, which reproduce in reverse order the elements “CIC” and “MOBILE” of the CIC MOBILE trademark, and these elements are easily recognizable within the disputed domain name. As summarized in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in cases where the relevant mark is recognizable in the disputed domain name, the domain name will normally be considered confusingly similar to that trademark for the purposes of the Policy.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the CIC MOBILE trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant maintains in its Complaint that the Respondent should not be considered as having rights or legitimate interests in the disputed domain name. With its later communication to the Center of September 24, 2019 and October 2, 2019, however, the Complainant refers to the Respondent’s project for which the disputed domain name is intended and acknowledges that the Respondent has an interest in holding the disputed domain name, and requested the withdrawal of the case.
The Panel notes that the Respondent’s intended use for the disputed domain name, the evidence provided by the Respondent in this regard, and that it is in view of the Respondent’s intention to use the disputed domain name in the manner described that the Complainant requested the withdrawal of the case.
In view of this change of the position of the Complainant, it cannot establish that the Respondent does not have rights and legitimate interests in the disputed domain name. Therefore, the Complaint must fail.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered the disputed domain name for commercial gain seeking to create an impression of association with the Complainant, and points out in this regard that the disputed domain name resolves to a website containing commercial hyperlinks to the Complainant and to some of its competitors.
The Respondent denies responsibility for the advertisements featured on the website at the disputed domain name and maintains that they are targeted ads served by a third party based on the browsing data of the person viewing the website and do not represent the content displayed on the website.
As discussed in section 3.5 of the WIPO Overview 3.0 however, a respondent cannot disclaim responsibility for automatically generated pay-per-click links appearing on the website associated with its domain name, and the fact that such links are generated by a third party would not by itself prevent a finding of bad faith.
However, given the outcome on the issue of rights and legitimate interests in section 6.2.B, above, it is not necessary for the Panel to make a finding of whether the disputed domain name has been registered and used in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: November 11, 2019