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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Crédit Industriel et Commercial S.A. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Yabani Eze, Sugarcane Internet Nigeria Limited

Case No. D2020-1763

1. The Parties

Complainant is Crédit Industriel et Commercial S.A., France, represented by MEYER & Partenaires, France.

Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / Yabani Eze, Sugarcane Internet Nigeria Limited, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <acicpayment.com> is registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2020. On July 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2020, 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 Complainant on July 13, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 13, 2020.

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 Respondent of the Complaint, and the proceedings commenced on July 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2020. The Center received an automated reply from an email associated with Respondent on July 15, 2020, but Respondent did not submit a formal or substantive response. Accordingly, the Center notified the Parties on August 5, 2020 that it would proceed to Panel appointment.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on August 12, 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 a deposit bank based in France, with operations since 1859. Complainant has over 4.7 million clients, and over 2,000 agencies in France, and 38 elsewhere. Complainant uses the abbreviation “CIC” as a mark for its services, and Complainant has several registered trademarks for variants on its CIC mark, including with the term “PAIEMENT”. These include, among others, French Registration No. 1358524 (registered June 10, 1986, and renewed); for the mark C.I.C., as well as French Registration No. 3218451 (registered April 1, 2003) for CIC NET PAIEMENT.

Complainant owns the registration for a number of domain names that incorporate variations on its CIC mark. These include <cic.fr>, <cic.eu>, and <cic-paiement.com>, among others. Complainant uses associated URLs, including for <cic.fr>, to inform customers about its CIC mark and its banking products and services, including payment services.

The disputed domain name <acicpayment.com> was registered on May 20, 2020. Respondent has used the URL associated with the disputed domain name to resolve to a pay-per-click “PPC” website, including links to potential competitors of Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that the (i) disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainant contends that it has a “well-known” name and mark and a “strong reputation” in the field of banking. Complainant contends that it has trademark registrations for its CIC mark, including for variations that include the term “PAIEMENT”, as well as domain name registrations for variations on these terms. Complainant contends that Respondent has merely added the article “a” and the English word “payment” to a domain name with the CIC mark, which is likely to confuse prospective consumers into thinking that the disputed domain name is affiliated or endorsed by Complainant.

Complainant further contends that Respondent has used the disputed domain name for Respondent’s own commercial gain, and that Respondent has engaged in a pattern of similar bad-faith behavior with regard to the registration of domain names incorporating other registered marks, or misspellings thereof. In this regard, Complainant contends that Respondent has acted in bad faith in registering the disputed domain name, when Respondent clearly knew of Complainant’s rights.

B. Respondent

The Center received an automated reply from an email address associated with Respondent on July 15, 2020 indicating that “we are on holiday”. Respondent did not file any substantive reply to Complainant’s contentions in this proceeding.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark CIC, and merely adds the article “a” along with the term “payment,” which does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614; General Electric Company v. Recruiters, WIPO Case No. D2007-0584; Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500; CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065.

The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.

Respondent did not submit a substantive reply to the Complaint, however. Rather, as mentioned in section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a PPC website with links to potential competitors of Complainant. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name, which Respondent has not rebutted.

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location”. As noted in section 4 of this Panel’s decision, Respondent has set up a URL associated with the disputed domain name to resolve to a PPC website, including links to potential competitors of Complainant. Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.

Complainant has further submitted evidence that Respondent has engaged in a pattern of registering domain names that incorporate well known marks, with ensuing UDRP panel decisions finding bad faith by Respondent, for domain names including <campbellsoupokta.com>, <transamericalifeinsurances.com>, <workdayloewshotel.com>, <unitedpaecelservice.com> and <tdbankretailcard.com>.

This evidences bad faith in accordance with paragraph 4(b)(ii).

Given the nature of the disputed domain name which incorporates Complainant’s well-known CIC mark, with the addition of the article “a” and the term “payment”, the Panel finds strong evidence that Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights, and in particular with regard to Complainant’s banking products and services offered under the CIC mark, including payment services. See Crédit Industriel et Commercial S.A. v. Mao Adnri, WIPO Case No. D2013-2143; Crédit Industriel et Commercial S.A. v. Samir Andrea, 345645, WIPO Case No. D2017-0145; and Crédit Industriel et Commercial S.A. v. Yu Ming, WIPO Case No. D2005-0458.

Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <acicpayment.com> be transferred.

Lorelei Ritchie
Sole Panelist
Dated: August 25, 2020

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