Crédit Industriel et Commercial S.A. v. Beijinghongshanhushuizushangmaoyouxiangongsi
Case No. D2007-1818
1. The Parties
The Complainant is Crédit Industriel et CommercialS.A., Paris, France, represented by MEYER & Partenaires, France.
The Respondent is Beijinghongshanhushuizushangmaoyouxiangongsi, Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <cic-banques.mobi> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2007. On December 10, 2007, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On December 12, 2007, and December 14, 2007, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification responses confirming that the 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2008.
The Center appointed Francine Tan as the sole panelist in this matter on January 14, 2008. 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 banking group that was founded in 1954. Today it has about 3.8 million clients with a network of more than 1,940 branches in France. It also has an international presence with branches throughout the world including China where the Respondent is located. “Cic” is the abbreviation for the name of the Complainant and is a trade name and trade mark that the Complainant has used since the time it was established. The Complainant’s primary portals, “www.cic-banques.fr” and “www.cic-banques.com”, have been active since 1996 and 2000, respectively.
The Complainant is also the registered owner of a large number of trade marks consisting of or including the letters “cic” (e.g. CIC BANQUES) in France and overseas including China. As a result of the extensive use and reputation, the trade mark CIC BANQUES has become well known throughout the world and recognized as such. In two panel decisions, the Complainant’s CIC and CIC BANK marks were recognized as having goodwill and reputation. (See Crédit Industriel et Commercial v. Pneuboat Sud,
WIPO Case No. DFR2004-0005; Crédit Industriel et Commercial S.A v. Yu Ming,
WIPO Case No. D2005-0458).
The Complainant is the registered holder of numerous domain names including <cic.fr>, <cic-banques.fr>, <cic-banque.fr>, <cicbanque.fr>, <cic-banques.com>, <cic-banques.net> and <cic-banques.net>.
On November 2, 2007, the Complainant was informed that the Respondent had registered, on September 29, 2006, the domain name <cic-banques.mobi>.
5. Parties’ Contentions
A. Complainant
1. The Complainant contends that the disputed domain name <cic-banques.mobi> is identical to its trade mark CIC BANQUES. The trade mark CIC BANQUES is wholly reproduced in the disputed domain name. This is a typical case of cybersquatting where the Complainant’s trade mark is entirely reproduced in the disputed domain name. The difference between the domain name in this case, namely the addition of the top level domain “.mobi”, emanates from the technical requirements of a domain name. As for the dash in the domain name (<cic-banques.mobi>), this is also of no consequence to the existing infringement on the Complainant’s rights. (See Credit Industriel et Commercial S.A. v. XUBO,
WIPO Case No. D2006-1268; Christian Dior Couture SA v. Liage International Inc.,
WIPO Case No. D2000-0098; Kabushiki Kaisha Toshiba v. Shan Computers,
WIPO Case No. D2000-0325; BOUYGUES v. Chengzhang, Lu Ciagao,
WIPO Case No. D2007-1325.)
2. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name. Firstly, the Respondent is not related in any way to the Complainant’s businesses. Secondly, the Respondent is not currently nor has it been known by the name “cic banques”. Thirdly, the Complainant has not authorized or licensed the Respondent to use or apply for registration of the domain name. (See Credit Industriel et Commercial S.A. v. XUBO,
WIPO Case No. D2006-1268.)
3. The Complainant submits that the Respondent has registered and used the domain name in bad faith and this can be seen from the following:
(i) It is difficult to imagine that the Respondent could not have known of the Complainant and its international reputation in the field of financial and banking services at the time of its registration of the disputed domain name.
(ii) The Complainant has a local presence in China where the Respondent is located.
(iii) The registration of the domain name that is identical to the Complainant’s trade mark is indicative of bad faith registration. The Respondent undoubtedly registered the domain name precisely because it knew of the Complainant’s trade mark and with a view to prevent the Complainant from reflecting its trade mark in an identical domain name. When one enters the words “cic banque” into Internet search engines, the search results would lead to links that relate to the CIC Group or its subsidiaries. Consequently, it cannot be the case that the Respondent came up with the combination of “cic” and the French word “banques” randomly.
(iv) The Respondent’s domain name diverts Internet users to an inactive website which does not correspond to the Complainant’s official website. This is damaging to the Complainant’s reputation as Internet users would expect the domain name to lead them to the Complainant’s website.
(v) The passive holding of a domain name in circumstances such as these is evidence of bad faith use. (See Banque Transatlantique S.A. v. Banque Transatlantique,
WIPO Case No. D2006-0557; Audi AG v. Hans Wolf,
WIPO Case No. 2001-0148; Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003).
(vi) The domain name <cic-banques.mobi> reproduces entirely and identically the Complainant’s trade mark which is a subsisting mark in China. The Respondent has therefore registered and is using the domain name in order to create an association with the Complainant’s trade mark CIC BANQUES. The Respondent is also not making any legitimate non-commercial or fair use of the disputed domain name because such use would also mislead Internet users by attracting them to a webpage that does not correspond to what they were looking for.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The relevant part of the disputed domain name is “cic-banques” and the issue therefore is whether this part is identical to the Complainant’s trade mark. In this regard, the Panel agrees that the hyphen is of no consequence and that the domain name is for all intents and purposes identical to the Complainant’s trade mark.
The Panel therefore finds that the first requirement of paragraph 4(a) of the Policy has been met.
B. Rights or Legitimate Interests
In regard to this issue, the Panel finds that a prima facie case has been established by the Complainant. There is nothing to suggest that the Respondent has rights or legitimate interests in the domain name. In fact, the Panel believes that it would be very difficult for the Respondent to establish it has rights or interests, bearing in mind the Complainant’s presence worldwide including China and long established reputation in the name “cic”, in relation to the banking industry.
The Complainant is only required to make out a prima facie case, after which the burden falls on the Respondent to prove otherwise. Since the Respondent has chosen not to participate in these proceedings and in view of the inference drawn above by the Panel, the Panel finds that the second requirement of paragraph 4(a) of the Policy has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of bad faith registration and use. This list is not exhaustive and includes:
(a) registration for the primary purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trade mark or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(b) registration for the purpose of preventing the owner of the trade mark from reflecting the mark in a corresponding name, provided the Respondent has engaged in a pattern of such conduct; or
(c) registration primarily for the purpose of disrupting the business of a competitor; or
(d) intentionally attempting, through the use of the domain name, to attract for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the 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.
Taking into account the fact that the Complainant’s mark is incorporated entirely into the domain name, and the Complainant’s reputation and activities worldwide, the Panel believes that the Respondent was aware of the Complainant’s mark. The other facts that the Panel has considered in making the inference that the Respondent has registered the domain name in bad faith are: (i) the domain name contains a generic word, “banques”, which describes the Complainant’s business; and (ii) this word is in French, a language that would appear to be foreign to the Respondent. To suggest that the Respondent’s selection of this domain name is pure coincidence would require a stretch of one’s imagination.
On the issue of whether there has been bad faith use, the Panel finds that this requirement has also been established. The Respondent, by registering a domain name that corresponds to a widely known mark of the Complainant, must have intentionally attempted to attract Internet users by creating a likelihood of confusion with the Complainant’s mark. Earlier panel decisions have established the principle that the registration of a domain name that is obviously connected with a well-known trade mark by someone who has no connection whatsoever with the trade mark suggests opportunistic bad faith. (See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.)
As to the issue of “passive holding” of a domain name and whether circumstances such as the instant case warrant a finding of bad faith use, the Panel in Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003 stated that in considering this issue, “close attention must be given to all the circumstances of the Respondent’s behaviour” and the circumstances have to show that the Respondent’s passive holding amounts to acting in bad faith.
The circumstances of the present case are such:
(i) The Complainant has a strong reputation and is widely known in the banking industry and in relation to its CIC/ CIC BANQUES trade marks.
(ii) The Respondent appears to have taken steps to conceal its true identity. In this regard, the Complainant asserted that it had been unable to uncover any information from its searches made on the Respondent. The Complainant is therefore of the belief that the Respondent’s name is probably fanciful. Further, the Respondent’s complete address was not available in the WhoIs.
(iii) The Respondent has not proffered any evidence of actual or contemplated good faith use of the domain name. In any event, for reasons mentioned earlier, it is difficult to conceive how the Respondent might legitimately and in good faith use the domain name <cic-banques.mobi> which relates specifically to the very industry that the Complainant belongs to.
Taking these circumstances into account including the fact that the domain name is obviously connected with the Complainant’s widely known mark, the Panel concludes that third requirement of paragraph 4(a) of the Policy has been met.
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 domain name, <cic-banques.mobi> be transferred to the Complainant.
Francine Tan Sole Panelist
Dated: January 28, 2008
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