WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Crédit Industriel et Commercial S.A. v. Ilksoy Serdar

Case No. D2019-0691

1. The Parties

The Complainant is Crédit Industriel et Commercial S.A. of Paris, France, represented by Meyer & Partenaires, France.

The Respondent is Ilksoy Serdar of Creusot, Saône-et-Loire, France.

2. The Domain Names and Registrar

The disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org> are 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 27, 2019. On March 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 29, 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 April 1, 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 April 1, 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 April 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2019.

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on May 2, 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

Crédit Industriel et Commercial (CIC) (“the Complainant”) is a French deposit bank which was created in 1859.

This bank has millions of clients, including professionals, and more than 2,000 agencies in France and abroad.

The Complainant operates the website “www.cic.fr”, which notably provides an online access to the clients’ bank accounts.

The Complainant is the owner of many trademarks including the sign CIC, such as:

- The French trademark CIC No. 1358524 registered on June 10, 1986 and renewed;
- The European Union trademark CIC No. 005891411 filed on May 10, 2007 and registered on March 5, 2008;
- The semi-figurative European Union trademark CIC No. 11355328 filed on November 19, 2012 and registered on March 26, 2013;
- The semi-figurative French trademark CIC BANQUES No. 1691423 registered on September 5, 1991 and renewed;
- The semi-figurative International trademark CIC BANQUES No. 585098 designating Benelux, Switzerland, China, Spain, Italy, Monaco and Portugal, registered on April 10, 1992.

The Complainant contends that it is also the owner of several domain names consisting of CIC:

- <cic.fr> registered on May 28, 1999;
- <cic.eu> registered in 2006;
- <cicbanque.info> registered in 2007;
- <cicbanques.com> registered in 2006.

The WhoIs information which is provided is not updated and shows that <cicbanque.info> expired on November 21, 2018, whereas <cicbanque.com> expired on April 5, 2019.

The Complainant has a computing subsidiary called Euro-Information, which is the owner of the following domain names:

- <cicbanques.net> registered in 2007;
- <cic-banques.org> registered in 2000.

The provided WhoIs information on <cicbanques.net> shows that this domain name expired on November 1, 2018, whereas the annex on <cic-banques.org> is missing.

The disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org> were registered on January 22, 2019 by Ilksoy Serdar, identified on the WhoIs as an individual domiciled in France.

These disputed domain names redirect to a parking page of the Registrar, this page includes the mention “get this domain”, which is an offer to purchase the registered and parked domain names. The links provided on this parking page are not reproduced on the respective provided pieces of evidence.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the well-known character of the CIC trademarks has already been recognized several times by the Center. It relies on a decision rendered in 2008 and on two decisions rendered in 2013, which are cited as examples, to assert that the CIC trademark is undoubtedly well-known.

It relies on prior IP rights to the disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org>, on the words CIC and CIC BANQUES.

To the Complainant, the disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org> are confusingly similar to the CIC and CIC BANQUES trademarks, and this similarity is not affected by the generic Top-Level Domains “.net” and “.org”.

First, its CIC and CIC BANQUES trademarks are identically reproduced in the disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org>, which is enough to establish confusing similarity according to prior UDRP panels.

Then, the Complainant contends that the word “banque” is descriptive and refers to its core activity. The Complainant further explain that the words “Paris” and “Bordeaux” are descriptive and refer to major French cities, whereas its main activity is in France.

The Complainant asserts that the addition of geographical and descriptive terms or the addition of a sole geographic term do not prevent confusing similarity, and that in this case, it suggests that the disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org> are dedicated to its local agencies.

The confusing similarity is reinforced by the notoriety of its CIC and CIC BANQUES trademarks.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org>. It contends that the Respondent is not authorized or licensed, and has no relationship with the Complainant.

To the Complainant, the Respondent is not commonly known by the disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org>, by the terms that compose them, or by trademarks similar to its CIC and CIC BANQUES trademarks.

The Complainant adds that the disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org> redirect to a holding page of the Registrar, and that this use is neither a bona fide offering of goods or services, nor a legitimate noncommercial/fair use.

Finally, the Complainant contends that the disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org> were registered in bad faith, considering its strong reputation and its well-known CIC and CIC BANQUES trademarks, which create a prima facie presumption of bad faith, according to prior UDRP panel decisions.

Considering this, the Complainant asserts that the Respondent could not have ignored the reputation of its CIC and CIC BANQUES trademarks at the time of the registration, that this registration was motivated by this reputation and that the combination of terms in each of the three disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org> is not random.

To the Complainant, the registration of the disputed domain names was made to intentionally cause confusion with its trademarks, this risk of confusion for Internet users is strengthened by the addition of descriptive and geographical terms, and this shows an intent of deliberate deceit.

The disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org> redirect to a holding page of the Registrar, with or without advertising. Given the bad faith registration and the well-known character of the CIC and CIC BANQUES trademarks, this non-use constitutes passive holding, which is a sign of bad faith use and the Complainant relies on three prior UDRP decisions on passive holding.

The Complainant contends that the disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org> mislead Internet users and tarnishes its reputation. As a banking group, it claims that it faces a lot of counterfeiting and phishing attempts, what means that the protection of its website and its clients is particularly important.

The Complainant requests the transfer of the disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org>.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has submitted evidence of its prior registered CIC and CIC BANQUES trademarks which are protected in France and in other countries. The Complainant has also submitted evidence of its prior registered domain names consisting of or including the trademark CIC.

The Complainant’s CIC trademarks are well-known in France for banking and financial services.

The disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org> incorporate entirely the Complainant’s CIC well-known trademark.

The addition of geographic terms such as “Paris” or “Bordeaux” and of the descriptive term “banque” do not exclude the confusing similarity, given the organization of the Complainant’s banking activity by local agencies.

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s CIC and CIC BANQUES trademarks.

The condition of paragraph 4(a)(i) of the Policy has therefore been satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it 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 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.

The Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org>.

The Respondent is not known under the disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org> and has not been licensed or authorized to use the CIC and CIC BANQUES trademarks or to register the disputed domain names <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org>.

The evidences prove that the disputed domain names were used to resolve to a webpage which was automatically generated by the Registrar. On this webpage, one could read “this domain is parked (…) Get this domain” The message “get this domain” is one of the usual messages to offer a domain name for sale on such webpages. According to paragraph 10(a) of the Rules “The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules”. This provision authorizes the Panel to conduct its own searches on the Internet.
Therefore, the Panel accessed the webpages to which the disputed domain names resolve.
It could check that the disputed domain names are parked by the Registrar and that the landing parking page includes a link to an interface which can be used to purchase the disputed domain names.
Tis use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

Resolving to such a parking page may confuse the Internet users and is tarnishing the CIC and CIC BANQUES well-known trademarks.

In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain names, which the Respondent has not rebutted.

The condition of paragraph 4(a)(ii) of the Policy has therefore been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name. It provides that:

“For the purposes of paragraph 4(a)(iii), 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 the respondent 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 that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line 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.”

Given the well-known character of the CIC trademarks in France, and the fact that the Respondent is domiciled in France, the Panel finds that the Respondent could not ignore the Complainant’s rights in these trademarks when it registered the disputed domain names.

Furthermore, the entire reproduction of the Complainant’s CIC trademarks in three different domain names proves that the Respondent targeted the Complainant when it registered the disputed domain names.

The addition of the descriptive term “banque” aims clearly at identifying the scope of the activity, which is the core activity of the Complainant.

The addition of the geographical terms “Paris” and “Bordeaux” aims at letting the Internet users believe that the disputed domain names are dedicated to the respective local agencies of the Complainant.

The Panel finds that the disputed domain names were registered in bad faith with the Complainant’s CIC well-known trademarks in mind, to create a likelihood of confusion with the Complainant’s trademarks.

The Complainant contends that the redirection of the disputed domain names to a page announcing that they are parked and offering them for sale is passive holding. Parking pages are generally not considered as non-use of a domain name.

When domain names are parked, the parking generate pay-per-click revenues to the benefit of the Registrant. It means that, in this case, the Respondent is unduly attempting to attract Internet users to these parking pages, for its own commercial gain. Such a use is a bad faith use in the meaning of paragraph 4(b)(iv) of the Policy.

When looking at the totality of the circumstances in this case, the Panel finds that the following facts support a finding of bad faith use:

- the well-known character of the CIC trademarks;
- the failure to respond to the Complaint or to submit any answer or piece of evidence;
The use of the disputed domain names to resolve to parking pages that generate pay-per-clik revenues to the benefit of the Respondent.

Moreover, the Panel also takes into consideration the fact that, as a banking group, the Complainant’s activity is strictly regulated, to protect the banking sustem and its users. The Complainant explains that itfaces a lot of phishing attempts. The disputed domain names can be used to have MX servers that will enable the Respondent to use them for creating and using email addresses composed with the disputed domain names, often used notably for spamming or phishing purposes, to obtain banking and personal data from the Complainant’s customers. Even if such MX servers do not exist as of now, this risk has to be taken into consideration for this Panel to look at the totality of the circumstances of the case.

For all the above reasons, the Panel is of the opinion that the disputed domain names satisfy the requirement of paragraph 4(a)(iii) that the disputed domain names were registered and are being used in bad faith by the Respondent.

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 disputed domain names, <cicbanqueparis.net>, <cicbanqueparis.org> and <cicbordeaux.org> be transferred to the Complainant.

Marie-Emmanuelle Haas
Sole Panelist
Date: May 16, 2019