WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Credit Industriel et Commercial S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Jacques ARNOUX

Case No. D2020-3530

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama, / Jacques ARNOUX, France.

2. The Domain Name and Registrar

The disputed domain name <cicfinances.net> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2020. On December 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 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 the Complainant on January 4, 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 January 7, 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 January 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2021.

The Center appointed William Lobelson as the sole panelist in this matter on February 8, 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 very large, long established and well-known bank in France, operating under the mark CIC.

It owns numerous trademarks and domain names, used and registered in relation with inter alia banking and finance, such as:

- French trademark No. 1358524, C.I.C., registered on June 10, 2986;
- European Union Trade Mark No. 005891411, CIC, registered on March 5, 2008;
- European Union Trade Mark No. 11355328, CIC, registered on March 26, 2013;
- <cic.fr> and <cic.eu>.

All registered before the date when the disputed domain name was registered.

The disputed domain name <cicfinances.net> was registered on November 20, 2020. It resolves to a
pay-per-click page and an email server has been activated for the disputed domain name.

The Respondent details, disclosed by the Registrar pursuant to the introduction of the Complaint, reveal that his name sounds French and that he resides in France.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to its earlier trademarks, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the owner of numerous CIC trademarks, all registered and used in relation with banking services.

The disputed domain name reproduces the Complainant’s CIC trademark in its entirety.

Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), in this case the dictionary French word “finances” (French for “finance”), would not prevent a finding of confusing similarity under the first element; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The addition of the generic Top-Level Domain “.net” does not either prevent a finding of confusing similarity.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP paragraph 4(c) include the following:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services;

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.

The Panel notes that the Respondent has not filed a response and thus did not deny the Complainant’s assertions, nor brought any information or evidence for demonstrating any rights or legitimate interests.

The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that the Respondent is not affiliated with it in any way and that it never authorized the Respondent to use its trademark as part of the disputed domain name.

The Complainant further contends that the Respondent is not commonly known under the disputed domain name, does not own any proprietary rights in the name “cicfinances”, and does not make any bona fide use – neither commercial nor noncommercial, of the same.

The Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has substantiated the fact that its trademark CIC, which has been registered and used in France for years, now benefits from a high level of public’s awareness. Earlier UDRP decisions have acknowledged the Complainant’s trademark reputation:

Credit Industriel et Commercial v. Mao Adnri., WIPO Case No. D2013-2143: “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 disputed domain name was registered using a privacy service filed anonymously, but when the identity of the Respondent was disclosed by the Registrar, it was confirmed that this individual was based in France, that his name sounded French, and that a place of residence in the Paris suburb had been declared.

Besides, the Panel observes that the Respondent made the choice of associating to the trademark CIC with the dictionary French word “finances” (French for finance), which directly refers to the field of activity of the Complainant.

The fact that the Respondent is apparently French and added the word “finances” to the trademark CIC cannot be a coincidence and for this Panel it is a clear indication that he necessarily had the Complainant’s trademark in mind when he registered the disputed domain name <cicfinances.net>.

The Panel infers from the above that the Respondent acted in bad faith when he registered the disputed domain name.

The Complainant has substantiated that the disputed domain name resolves to a pay-per-click page, where sponsored links are parked. All those links direct to third parties web pages relating to services in the field of finance, banking, life insurance, assets management, stock markets, investments and the like.

The Complainant runs a business in the field of banking and financial services, and its numerous trademarks are registered in relation with such services.

The Respondent does therefore make use of the Complainant’s mark in relation with services that are identical to those in respect of which the said mark is protected.

From a legal standpoint, the Respondent infringes upon the Complainant’s trademark rights.

Besides, it has been decided in earlier UDRP cases that a respondent that uses a domain name with automatically generated pay-per-click links cannot disclaim responsibility and such content would be sufficient to conclude to a finding of bad faith, perhaps weaken, but still existing, as reported in WIPO Overview 3.0, section 3.5 and, e.g., in a previous case:

Credit Industriel et Commercial S.A. v. IT Administrator, WIPO Case No. D2013-0707: “In addition to the above, the use given to the website, as a parking page which offers links to websites related to finance, banking, credit and insurance services, of the Complaints’ direct competitors is sufficient evidence to conclude that the Respondent was in all likelihood well aware of the Complainant’s trade mark and wanted to refer to the Complainant by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Therefore, in accordance with paragraph 4 (b)(iii) of the Policy, the above findings lead to the conclusion that the disputed domain name in dispute has been registered and used in bad faith.”

In addition to the above, the Complainant has established that an email server has been configured on the disputed domain name, thus inducing a likelihood that the Respondent might have contemplated to use the disputed domain name for potential fraudulent use of an email address incorporating the Complainant’s trademark and/or phishing purposes (Statoil ASA v. Domain Admin, Privacy Protection Service Inc D/B/A PrivacyProtect.org /Nicolas Kerry, WIPO Case No. D2017-0046).

Consequently, in view of all the above circumstances, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are satisfied.

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 name <cicfinances.net> be transferred to the Complainant.

William Lobelson
Sole Panelist
Date: February 17, 2020