WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Credit Industriel et Commercial S.A. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Carolina Rodrigues

Case No. D2021-1391

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Carolina Rodrigues, Panama.

2. The Domain Name and Registrar

The disputed domain name <support-cic-heath.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2021. On May 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 5, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 7, 2021 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 May 12, 2021.

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 May 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2021.

The Center appointed Ellen B Shankman as the sole panelist in this matter on June 21, 2021. 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 a French bank founded in 1859, having today more than 4,7 million clients. The Complainant provided evidence of multiple trademark registrations for the mark CIC and CIC BANQUES, in multiple jurisdictions, including, inter alia: “C.I.C.” French trademark No. 1358524, registered October 6, 1986; “CIC” European Union trademark No. 005891411, registered March 5, 2008; “CIC” European Union figurative trademark No. 11355328, registered March 26, 2013; and “CIC BANQUES” International Trademark No.585098, registered April 10, 1992.

In addition, the Complainant notes that they are using their trademarks as domain names to promote their activities online, see e.g. <cic.fr> and <cic.eu>, through which its clients can be informed about the services offered by the group and also get online access to their bank accounts for managing them thanks to a specific secured interface.

The date of the Domain Name registration was confirmed by the Registrar to be April 12, 2021. According to the evidence provided by the Complainant the Domain Name has been used to resolve to website with Pay-Per-Click (“PPC”) links for a variety of services associated with the Complainant. The Panel also conducted an independent search to determine that the Domain Name currently resolves to website with PPC links for, inter alia, knee and shoulder braces and immobilier goods and services.

5. Parties’ Contentions

A. Complainant

The Complainant, CREDIT INDUSTRIEL ET COMMERCIAL S.A., abbreviated CIC, contends that it is the French oldest deposit bank; it was set up in 1859 by an imperial decree signed by Napoleon III. The company was nationalized in 1982 and re-privatized in 1997, before the holding Fédération du Crédit Mutuel Centre Est Europe becomes the majority shareholder of CIC.

The Complainant 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 claims that the mark CIC is well-known and even entitled to protection under Article 6bis of the Paris Union Convention, in addition to its registered trademarks.

The Complaint contends that the Domain Name is activating a parking webpage in French displaying links to the Complainant’s competitors. This use allows the Respondent to benefit from the Pay-Per-Click (“PPC”) system for pecuniary purposes. The Domain Name is comprised of the Complainant’s trademark CIC, associated with the generic/descriptive terms “support” and “heath” and the generic Top Level Domain (“gTLD”) “.com”. The addition of the descriptive/generic words “support” that could refer to online assistance on the Complainant’s website, and “heath” which could evoke to ”health”; the CIC group offers health insurance contracts and supplementary health insurance thanks in particular to the “Carte Avance Santé” (health advance card). In view of these elements, the Domain Name should be considered as highly confusingly similar to the Complainant’s trademark. Consequently, the Domain Name could lead Internet users to believe that it will direct them to the Complainant’s site dedicated to insurance and supplementary health insurance assistance services, when this is not the case. Internet users could therefore totally believe that this domain name is registered by the Complainant, or at least with its consent for activating a new official website.

The Respondent is not authorized by, sponsored by or affiliated or licensed with the Complainant in any way, and should be considered as having no rights or legitimate interests in respect of the Domain Name. Further, the use of the Domain Name to resolve to a parking webpage displaying links in French to some of the Complainant’s competitors cannot constitute a bona fide offering of goods or services.

The Complainant claims that the Respondent could not have ignored the reputation of the trademarks CIC at the time it registered the Domain Name, and that the Respondent registered the Domain Name precisely because of the well-known character of the Complainant’s trademark. The Domain Name is being used to divert Internet users seeking the Complainants’ website to the websites of their competitors, thereby disrupting their business, and this use allows the Respondent to benefit from the PPC system for pecuniary purposes.

In addition, the Complainant argues that the fact that email servers are activated on this Domain Name enables the sending and receipt of potentially fraudulent emails. The Complainant argues that as a banking group, it has continually to face counterfeiting/phishing attempts. Therefore, the Complainant has to prevent a new fake of its website and to protect its clients from counterfeiting and fraud. The Complainant claims that the Respondent is undoubtedly not making any good faith use of the Domain Name and also that there is a strong suspicion of the Respondent using or intending to use the Domain Name in a phishing scam.

To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark CIC, in respect of a wide array of goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the descriptive terms “support” and “heath” (suggesting “health”) to the Complainant’s trademark does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for fraudulent purposes. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond to this Complaint, the facts regarding the use and reputation of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for CIC. This is consistent with the finding of other panels, see e.g. Credit Industriel et Commercial v. Mao Adnri, 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”.)

Further, the Panel finds that the Domain Name integrates the Complainant’s mark in its entirety and that the Domain Name is confusingly similar to the Complainant’s trademark. In addition, the Panel finds that the mere addition of the descriptive terms “support” and “heath” – which the Panel is persuaded by the PPC links to intentionally imply “health” – to the Domain Name does not affect the analysis under the first element, being the trademark of the Complainant recognizable. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”. See also, Section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is confusingly similar to the Complainant’s trademarks, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Respondent is not known by the Domain Name, does not have permission to use the Complainant’s marks, and is not using the Domain Name for a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name. The Respondent has also used the Domain Name to imitate the Complainant which is not a legitimate noncommercial purpose.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.

The Panel is convinced that the Respondent knew about the Complainant in choosing the Domain Name. See Inter IKEA Systems B.V. v. Targetclix / Anh Vo, WIPO Case No. D2011-1087 (“It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Names… [Therefore] the Domain Names are not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.”).

The Panel agrees with prior UDRP decisions that have consistently held that respondents that monetize domain names using PPC links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name. As such, the Respondent is not using the Domain Name to provide a bona fide offering of goods or services as allowed under Policy 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy 4(c)(iii). See WIPO Overview 3.0, section 2.9(“Panels have found that the use of a domain name to host a parked page comprising PPC 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.”).

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademarks and uses them to capitalize on the Complainant’s trademark and/or for deceptive purposes, and/or misleading and diverting Internet traffic, constituting bad faith. The Panel’s view is that, when considering the balance of probabilities, the Respondent clearly had actual or constructive knowledge of the Complainant’s trademarks, that registration of the Domain Name would be identical or confusingly similar to the Complainant’s trademarks, and that the use was intended to ride on the reputation of the Complainant.

By registering the Domain Name that comprises the Complainant’s trademarks in their entirety, together with the PPC links for goods related to those of the Complainant’s on the website, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. In light of the facts set forth within this Complaint, the Panel finds that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Name was registered. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Further, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415. The Panel agrees with the Complainant’s contention that indeed, the Respondent’s purpose in registering the Domain Name was probably to capitalize on the reputation of the Complainant’s trademarks by diverting Internet users seeking information about this distinctive sign to its own website, where similar goods had been published, and that the Respondent’s purpose in registering the Domain Name was to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking information about or goods of the Complainant. See Hoffmann-La Roche Inc. v. Doroven, WIPO Case No. D2010-1196.

A respondent’s use of a complainant’s mark – for said respondent’s commercial benefit – to attract Internet users otherwise seeking said complainant evinces a finding of bad faith is also consistent with the Policy 4(b)(iv). See WIPO Overview 3.0 at section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”). These criteria apply in the present case, which supports the Panel’s finding that the Respondent registered and is using the Domain Name in bad faith.

In addition, the Panel believes that the Respondent’s website featuring links to third-party websites that appear to create revenue for the Respondent (PPC links) using a confusingly similar domain name is also evidence of and supports a finding of registration and use in bad faith. See WIPO Overview 3.0, section 3.5(“Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”). See also PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162 (“Respondent’s use of the Domain Name to earn referral fees by linking to other websites attracts Internet users to Respondent’s site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered in bad faith”).

The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past Panels have held serves as further evidence of bad faith registration and use. See Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., WIPO Case No. D2003-0230. See also WIPO Overview 3.0, section 3.6(“Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”).

Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant by evidence of use of the related targeted PPC links, and the use of the Domain Name, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <support-cic-heath.com> be transferred to the Complainant.

Ellen B Shankman
Sole Panelist
Date: June 27, 2021