WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Credit Industriel et Commercial S.A. v. Najd Omar / CIC
Case No. D2020-0669
1. The Parties
Complainant is Credit Industriel et Commercial S.A., France, represented by MEYER & Partenaires, France.
Respondent is Najd Omar / CIC, Saudi Arabia.
2. The Domain Name and Registrar
The disputed domain name <cicmarketing.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2020. On March 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2020, the Center received an email communication from Respondent asking about the reason for which the disputed domain name was locked. On March 20, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2020. Respondent did not submit any response other than their informal email communication of March 19, 2020. Accordingly, the Center notified the Commencement of Panel Appointment Process on April 15, 2020.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on April 20, 2020. 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
Complainant is the oldest deposit bank in France, established in 1859. Complainant currently has more than 4.7 million clients and has more than 2,000 agencies in France and 38 around the world. Complainant is the owner of various trademark registrations for its CIC trademark (“CIC Mark”), including French registration number 1,358,524 registered on June 10, 1986 and European Union registration number 005891411 registered on March 10, 2008. Complainant also owns various International Registrations for the CIC BANQUES mark, including International Registration number 585,098 registered on April 10, 1992. Complainant also utilizes its CIC Marks in various domain names it owns and operates, such as <cic.fr>, <cic.eu>, and <cicbanques.com>.
The disputed domain name <cicmarketing.com> was registered on December 5, 2019, and resolves to a parked page containing links that redirect to websites for various competitors of Complainant.
5. Parties’ Contentions
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s CIC Mark because it reproduces identically and entirely the CIC Mark. Complainant argues that the addition of the generic or descriptive term “marketing” is insufficient to distinguish the disputed domain name from Complainant’s CIC trademark.
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent is not affiliated or associated with Complainant and has never been authorized or licensed to make use of its CIC Mark. Moreover, Complainant alleges that Respondent has never been commonly known by the disputed domain name.
Complainant also alleges that Respondent has registered and is using the disputed domain name in bad faith. Complainant argues that Respondent must have had knowledge of Complainant’s CIC Mark at the time it registered the disputed domain name due to the CIC Mark’s international notoriety and Respondent’s specific targeting of it. Complainant also argues that Respondent’s bad faith registration is further evinced by the fact that Respondent listed “CIC” as the registrant organization for the disputed domain name without having any right to use the CIC Mark nor being associated or affiliated in any way with Complainant. According to Complainant, this could mislead consumers into believing that it authorized or consented to the registration. Complainant further argues that Respondent’s bad faith use of the disputed domain name is evidenced by the fact that it resolves to a parked page containing links leading Internet users to websites belonging to some of Complainant’s competitors. According to Complainant, this shows that Respondent is exploiting the goodwill Complainant has developed in its CIC Mark for its commercial gain or those of Complainant’s competitors.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(iii) the disputed domain name was registered and is being used in bad faith.
Furthermore, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3, states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default or failure to respond to complainants contentions would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default or failure to respond to complainants contentions is not necessarily an admission that the complainant’s claims are true. Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340
A. Identical or Confusingly Similar
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the CIC trademark through its French, European Union and International registrations.
With Complainant’s rights in the CIC trademark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the TLD in which each domain name is registered) is identical or confusingly similar to Complainant’s CIC Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7.
Here, Complainant’s CIC Mark is fully incorporated in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s CIC trademark.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name:
(i) before any notice 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 (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, the Panel finds that Complainant has made out a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the CIC Mark in any way. Furthermore, nothing in the record suggests that Respondent is commonly known by the disputed domain name. Respondent is also not using the disputed domain name in connection with any bona fide offering of goods or services, nor is Respondent making legitimate noncommercial or fair use of the disputed domain name. According to the evidence on record, the disputed domain name resolved to a parked page containing various links that would lead Internet users to websites belonging to Complainant’s competitors. Panels have consistently found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9; see also Paris Hilton v. Deepak Kumar Case No. D2010-1364.
Therefore, the Panel concludes that Respondent does not have rights or a legitimate interest in the disputed domain name within the meaning of Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a 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 a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. Furthermore, UDRP panels additionally view the provision of false contact information underlying a privacy or proxy service as an indication of bad faith. WIPO Overview 3.0, section 3.6.
In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence showing its widespread use and numerous registrations of the CIC Mark which long predate Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the CIC trademark when it registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s marks. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4, see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000−0163. Here, the disputed domain name completely incorporates the CIC Mark and the dictionary term “marketing”. Furthermore, Respondent listed Complainant’s organization as the disputed domain name’s registrant organization without demonstrating it was authorized by Complainant or acting on its behalf. Therefore, bad faith registration of the disputed domain name can be presumed.
Furthermore, the disputed domain name resolved to a parked page containing some links that lead visitors to websites belonging to some of Complainant’s competitors. Panels have determined that the registration and use of domain names such as this one constitute an attempt to intentionally attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the complainant’s website. Aetna Inc. v. Above.com Domain Privacy / Belcanto Investment Group Limited, WIPO Case No. D2018-0487; LEGO Juris A/S v. Park KyeongSook WIPO Case No. D2016-1195; see also WIPO Overview 3.0, section 3.1.4. This demonstrates that the disputed domain name was also used in bad faith by Respondent.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.
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 name <cicmarketing.com> be transferred to Complainant.
Brian J. Winterfeldt
Date: May 1, 2020