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Crйdit Industriel et Commercial S.A. and Banque Fйdйrative du Crйdit Mutuel v. Keenan Azzeh
Case No. D2006-0712
1. The Parties
The Complainants are Crйdit Industriel et Commercial S.A., Paris, France; and Banque Fйdйrative du Crйdit Mutuel, Strasbourg, France, both represented by Meyer & Partner GbR, France.
The Respondent is Keenan Azzeh, Encinitas, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ciccm.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2006 by email, a hard copy of which was received by the Center on June 9, 2006. On June 7, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name(s) at issue. On June 8, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 June 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2006.
The Center appointed Christophe Imhoos as the sole
panelist in this matter on July 17, 2006. 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 first Complainant, Crйdit Industriel et Commercial, is a French banking group which comprises 11 regional banks and which also carries out an international presence and frame through branches displayed all over the world (Annexes D and E to the Complaint).
The second Complainant, Banque Fйdйrative du Crйdit Mutuel (“BFCM”) Is The Holding Company of Credit Mutuel and CIC banking group which had merged in 1998. “BFCM” carries the Group subsidiaries and coordinates their activities.
CIC is the trade name and the acronym of the first Complainant, used in commerce since 1954 (Annex L to the Complaint), which is the registered owner of a large number of trademarks consisting or including the wording CIC in France and abroad (Annex M to the Complaint). In addition, CIC is the registrant of the following domain names: <cic.fr> registered on May 28, 1999; <cic-banques.fr> registered on April 24, 1996; <cic-banque.fr> registered on March 7, 2005; <cicbanque.fr> registered on March 7, 2005; <cic-banques.com> registered on December 13, 2000, in the name of Compagnie financiиre de CIC et de l’Union Europйenne (which was the old registered name of Crйdit Industriel et Commercial ); <cic-banques.net> registered on December 28, 2000, in the name of Euro Information (Euro InformatioN being the computing subsidiary of Group Credit MutUEL - CIC); <cic-banques.org> registered on December 28, 2000, in the name of Euro Information; <cic-banques.biz> registered on November 7, 2001, in the name of Euro Information; <cic-banques.info> registered on September 13, 2001, in the name of Euro Information; and <cicbanques.info> registered on October 14, 2004, in the name of Euro Information.
Credit Mutuel customers usually designate the banking group with the acronym CM and is, inter alia, the owner of the following domain names: <cm-assurances.fr>, <cm-credit.fr>, <cm-epargne.fr>, <cm-direct.fr> and <cm-banqueadistance.fr>. The acronym CM is also used as a bank code regarding the designation of Credit Mutuel stock exchange products (Annex M to the Complaint).
Crйdit Industriel et Commercial and Credit Mutuel are the registered owner of a large number of trademarks consisting of the combination of both acronyms CIC and CM in France and abroad (Annex N to the Complaint) whilst Banque Federative Du Credit Mutuel. is the registered owner of the trademark CM CIC, French nominative trademark n° 0432673I4 of January 13, 2004 in classes 9,16, 35, 36, 38 (internet services) and 42 of 1957 Nice Agreement (Annex N5 to the Complaint).
Through different subsidiaries CMCIC group is also
the owner of the following domain names since April 26,1999: <cic-cm.com>,
<cic-cm.net>, <cic-cm.org>, <cic-cm.eu>, <cic-cm.fr>,
<ciccm.fr>, <ciccm.eu>, <ciccm.net>, <ciccm.org>, <cmcic.fr>,
<cmcic.eu>, <cmcic.info>, <cm-cic.com>, <cm-cic.net>,
<cm-cic.org>, <cm-cic.info>, <cm-cic.eu> and <cm-cic.fr>,
all of which pointing to the web address http://www.creditmutuel.fr.
5. Parties’ Contentions
The Complainants’ arguments are the following.
(i) The domain name is confusingly similar to the trademarks CIC and “CMCIC”, in which the Complainants have rights.
The domain name <ciccm.com> is confusingly similar to Crйdit Industriel et Commercial trademarks CIC as the trademark CIC is entirely reproduced in the disputed domain name and the latter combines the Complainants’ trademark with the acronym CM.
The combination of the trademark CIC with the acronym
CM does not eliminate the risk of confusion with the Complainant’s trademark,
but on the contrary suggests that the domain name <ciccm.com> refers to
the Credit MutuEL - CIC French banking group. In addition, the combination of
the trademark CIC with the acronym CM on which Credit Mutuel has common law
rights in the domain name <ciccm.com> also increases the risk of confusion
with the Complainants trademarks CMCIC, the mere inversion of the Complainants
acronyms in the disputed domain name not rendering the domain name dissimilar
(Eroski S. Coop v. Sergei P regarding, WIPO
Case No. D2006-0102; Schneider Electric SA v. Ningbo Wecans Network Technology
Co., Ltd., Ningbo Eurosin International Trade Co., Ltd., WIPO
Case No. D2004-0554).
(ii) The Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent is not related in any way to the Complainants’ business; he is not one of their agents and does not carry out any activity for, or has any business with them. In addition, he is not currently and has never been known under the wording CIC, CM, nor “CICCM”. No licence or authorization has been granted to the Respondent to make any use, nor apply for registration of the domain name in dispute.
It is the Complainants’ contention that that the domain name <ciccm.com> has been registered by the Respondent to take advantage of the Complainants renown and divert internet users to commercial websites. At the time of its registration, the disputed domain name was pointing to an active webpage offering online gambling under <PartyPoker.com> (Annex P to the Complaint) and became inactive after the Complainants had sent out their cease and desist letter to the Respondent (Annexes J and Q to the Complaint). As a matter of fact, the Respondent has not engaged in any action that shows he has rights or legitimate interests in the disputed domain name.
(iii) The domain name was registered and is being used in bad faith.
The Respondent could hardly have ignored the trademark CIC and its combination with the Credit Mutuel acronym CM in the trademark CMCIC at the time he applied for the registration of the confusingly similar domain name, given the strong reputation and the well-known character of the marks CM and CMCIC for banking and financial services since 1954. The Respondent cannot have made the association of the trademark CIC and the acronym CM, which plenty refers to CIC’s holding, randomly; it is likely that the Respondent has chosen such combination in order to give to the disputed domain name a real and concrete meaning for internet users and the Complainants’ clients on the web.
The Respondent has registered the disputed domain name for the only purpose of generating commercial gain by intentionally taking advantage of internet traffic from internet users seeking Crйdit Industriel et Commercial or Credit Mutuel products and services on the internet.
By diverting consumers to commercial websites selling products and services in the field of gambling, the Respondent was undoubtedly trying to benefit illegally from the renown of the Complainants in relation with finance and banking services.
The Complainants consider that the association of their trademarks and acronyms in the domain name <ciccm.com> which pointed to a gaming services website constitutes an attempt to their brand image. Such use may have misled consumers looking for banking services, without having acquired any licence or authorization from the Complainants.
Moreover, the activation of said webpage probably generated revenue to the benefit of the Respondent through an affiliation solution. Considering that, it is obvious that the Respondent is intending to realize material benefits by diluting the fame and renown of the Complainants trademarks.
Since the Respondent’s answer to the Complainants cease and desist letter, the domain name at stake is not active anymore; such a passive holding has to be considered as bad faith use of the domain name <ciccm.com> by the Respondent.
The Respondent did not provide any explanation for its conduct or to demonstrate any legitimate interest, including any evidence of actual or contemplated good faith use of the disputed domain name <ciccm.com>. Such registration and use of the domain name only prevent the Complainants from reflecting there trademarks and acronyms in a “.com” corresponding domain name, this to be considered as unfair competition.
The Respondent did not address the Complainants’ contentions.
However, when asked by the Complainants to transfer in their favor the domain name in question on December 20, 2005 (Annex J to the Complaint), the Respondent, by email dated January 11, 2006 (Annex K to the Complaint), advised as follows:
“To whom it may concern, this domain was available for registration as of July 2005. This domain was legally registered by us and pad for with all legal rights. By US law, if you send us copyright material showing that this name CICCM.com is a legally registered trademark of your company we would be happy to transfer rights to you. From what we have received so far, you have only provided that this domain is similar to a copyright you own. By US law you must own the exact copyright of the domain you wish to take ownership of.
We have voluntarily pulled the domain down, and
we will leave it down until this matter is resolved. If you do not own the exact
copyright to this domain, we would be happy to sell it to you…”.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.
In accordance with Paragraph 14(b) 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.
A. Identical or Confusingly Similar
It is the Panel’s findings that the Complainants have established in the trademarks and common law rights on CIC CM and CM CIC with various registrations for CIC and CM CIC (Annexes M and N to the Complaint).
The Complainants’ above mentioned trademarks, combined altogether, are
obviously confusingly similar to the domain name <ciccm.com>. It does
not matter, as pointed out by the Complainants, that these acronyms be inversed
(see Eroski S. Coop v. Sergei P regarding, WIPO
Case No. D2006-0102; Schneider Electric SA v. Ningbo Wecans Network Technology
Co., Ltd., Ningbo Eurosin International Trade Co., Ltd., WIPO
Case No. D2004-0554 cited by Complainants).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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, in not responding to the Complaint, has failed to invoke any
of the circumstances, which could demonstrate, pursuant to Paragraph 4(c) of
the Policy, any rights to and/or legitimate interests in the domain name in
dispute. This entitles the Panel to draw any such inferences from such default
as it considers appropriate pursuant to Paragraph 14 (b) of the Rules (see e.g.
Talk City, Inc. v. Michael Robertson, WIPO
Case No. D2000-0009 or Isabelle Adjani .v. Second Orbit Communications,
Inc., WIPO Case No. D2000-0867). The
Complainant should nevertheless make out an initial prima facie case
that the Respondent lacks rights or legitimate interests (see Croatia Airlines
d.d. v. Modern Empire Internet Ltd., WIPO
Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO
Case No. D2004-0110).
Absent evidence to the contrary, CIC CM and CM CIC marks have been known for a significant period of time and the Complainants have not granted any license or otherwise permitting the Respondent to use such trademarks or to apply for any domain name incorporating the said trademarks. Moreover, the Respondent does not seem to be known under the domain name in question. Nor does the Respondent appear to be making use of the site in connection with a bona fide offering of goods or services, or for a legitimate non-commercial use without intent for commercial gain.
Under these circumstances and absent evidence to the contrary, the Sole Panelist is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the disputed domain name, and finds that the Complainant has made a prima facie case that the Respondent lacks such rights or interests. This has not been rebutted by Respondent.
The Panel accordingly finds for the Complainant in relation to this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive
list of circumstances that evidence registration and use of a domain name in
bad faith. Any one of the following behaviors is sufficient to support a finding
of bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have 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 your website or location or of a product or service on your website or location.
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or use of the domain name in issue.
Nevertheless, the Panel still has the responsibility of determining which of
the Complainant’s assertions are established as facts, and whether the
conclusions asserted by the Complainant can be drawn from the established facts
(see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO
Case No. D2000-0944).
From the above mentioned circumstances described above, and not disputed by the Respondent, the Panel notes that the Respondent had initially registered the disputed domain name and subsequently used it to point it to an active webpage offering online gambling under <PartyPoker.com>, which became inactive after the Complainants had sent out their cease and desist letter to the Respondent (Annexes J, P and Q to the Complaint).
Such a behavior, in the Panel’s view, has in the circumstances to be considered as bad faith registration and use pursuant to the general meaning of Paragraph 4(b) of the Policy.
Accordingly, the Panel finds that the Complainant has proved the third element
of the Policy.
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 <ciccm.com> be transferred to the Complainants.
Date: July 28, 2006