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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Credit Industriel et Commercial S.A., CM-CIC Securities v. Click Cons. Ltd

Case No. D2007-1323

1. The Parties

The Complainants are Credit Industriel et Commercial S.A. and CM-CIC Securities, both of Paris, France, represented by MEYER & Partenaires, Strasbourg, France.

The Respondent is Click Cons. Ltd, Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <cicsecurities.net> is registered with Capitoldomains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2007. On September 5, 2007, the Center transmitted by email to Capitoldomains, LLC a request for registrar verification in connection with the domain name at issue. On September 5, 2007, Capitoldomains, LLC transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 21, 2007 in electronic form. The Center verified that the Complaint together with the amendment to 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 September 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2007.

The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on October 26, 2007. 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

As the following facts and circumstances have been alleged and satisfactorily evidenced by the Complainant, and have not been contested by the Respondent, they are being considered true by the Panel.

The first Complainant is Credit Industriel et Commercial S.A., a limited company registered under the laws of France. It is a banking group tracing its origin back to 1859 and has branches in 37 countries in the world. CIC has been its acronym, trade name and trademark since its origin. The Complainant has a main portal available at “www.cic.fr” since 1999.

The second Complainant is CM-CIC Securities, a French limited partnership, engaging in brokerage services on equities, bonds, options and futures, providing direct access to all European markets. The second Complainant also operates in Asia and North America as an order collector. The second Complainant is the first Complainant’s subsidiary. Its name affix “CM” indicates the acquisition of the first Complainant by the Credit Mutuel Group, abbreviated CM, in 1998. Credit Mutuel is ever since the major shareholder of the first Complainant.

The first Complainant is the registered owner of a large number of trademarks consisting or including the wording “CIC” in France and abroad. The CIC SECURITIES, former name of the CM-CIC SECURITIES is the registered owner of trademarks consisting or including the wording “CIC SECURITIES” in France and abroad. CIC SECURITIES is therefore the current holder of the following trademarks, and the registrant of the following domain names:

- French Nominative Trademark, No. 3109052, registered July 2, 2001, in classes 16, 35, 36, 38 and 41.

- French Semi-Figurative Trademark, No. 31128519, registered October 29, 2001, in classes 16, 35, 36, 38 and 41.

- Community Trademark, No. 002331601, registered August 7, 2001, in classes 16, 35, 36, 38 and 41.

- International registration No. 789214, registered May 7, 2002 in classes 16, 35, 36, 38 and 41.

- “CIC-SECURITIES.INFO”, registered on March 21, 2002.

- “CIC-SECURITIES.ORG”, registered on March 21, 2002.

- “CIC-SECURITIES.NET”, registered on September 21, 2002.

- “CICSECURITIES.COM”, transferred to the second Complainant on June 29, 2007 pursuant to the Panel Decision in the UDRP Complaint Case No. D2007-0530.

The Domain Name <cicsecurities.net> was registered on August 2, 2007, by Click Cons. Ltd. It is being used for a website which contains numerous hyperlinks, among which some refer to banking and financial services.

The facts mentioned above have been established on the basis of the Complaint and documents attached thereto in accordance with paragraph 3(b)(xv) of the Rules.

5. Parties’ Contentions

A. Complainants

The Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular, the Complainants claim that the disputed Domain Name is confusingly similar to their trademark CIC and identical to their trademark and registered domain name CIC SECURITIES.

Complainants state that the Domain Name in dispute would be similar to the first Complainant’s trademark CIC. The Complainants assert that even though the Respondent added the word “securities” to Complainant’s trademark, this does not bar any possible confusion with the Complainant’s trademark as the word added refers to banking operations. Moreover, the identity between the Domain Name in dispute and the Complainants’ trademark CIC SECURITIES is not harmed by the addition of the top level domain “.NET” as this, as well as the missing space in the Domain Name in dispute, is a mere technical aspect. Naming rules forbid the use of spaces in the second level domain and always require an extension such as “.NET”.

Furthermore, the Complainants argue that the Respondent has no right nor any authorization or legitimate interest in making use or applying for the registration of the Domain Name in dispute. The Respondent has not been using the Domain Name in connection with a bona fide offering of goods or services. On the contrary, the Respondent uses the Domain Name for the diversion of Internet users to a website containing sponsored links.

The Complainants contend that the Respondent undoubtedly acted in bad faith by registering and using the Domain Name in dispute. The first Complainant is France’s fourth largest banking group, thus well-known, and with a reputation for banking and financial services all over the world. In addition, search engines such as Google or Yahoo generate results that mostly link to the second Complainant when entering the wording “Cic Securities”. By directing Internet users to the Respondent’s webpage displaying several links to third party websites offering financial services, the Respondent disrupts the Complainants’ business and harms their brand image.

What adds to that is the fact that the Respondent is a notorious cybersquatter. There had been several actions brought pursuant to the UDRP in which the Respondent has been ordered to transfer its domain name registrations to the legitimate owner (Shaw Industries Group Inc. & Columbia Insurance Company v. Click Cons. Ltd., WIPO Case No. D2006-1422; Hitachi, Ltd. v. Click Cons. Ltd., WIPO Case No. D2007-0809).

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

The Respondent is in default. According to the Rules, in such a case the Panel is directed to decide the administrative proceeding on the basis of the Complaint (paragraph 14(a)), and “shall draw such inferences therefrom as it considers appropriate” (paragraph 14(b)) (Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. and Ermenegildo Zegna Espana S.A. v. Ocxon Media S.A., WIPO Case No. D2001-0128).

Notwithstanding the above, the Complainant must convince the Panel that the three elements listed in paragraph 4(a) of the Policy are present. These are:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name registered is <cicsecurities.net>. The Complainants have rights in trademarks for the denominations CIC and CIC SECURITIES. They have sufficiently shown that there is a confusing similarity between the Domain Name in dispute and the registered trademark CIC, especially because of the word “securities” refers to banking operations. There is also a similarity in identity between the registered trademark CIC SECURITIES and the Domain Name in dispute. The missing space between the words “Cic”and “Securities” in the Domain Name in dispute and the added extension “.NET” cannot eliminate the identity or confusing similarity since they are solely due to Domain Name rules and thus not able to change the connotations associated with the Domain Name in dispute.

B. Rights or Legitimate Interests

Respondent has no rights or legitimate interests in the Domain Name in dispute.

According to paragraph 4(c) of the Policy, for the purpose of paragraph 4(a)(ii) the following circumstances, in particular, but without limitation, shall demonstrate rights or legitimate interests of the Respondent:

(i) 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, before any notice to the Respondent of the dispute; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if the Respondent has no trademark or service marks rights; or

(iii) the Respondent is making a legitimate non-commercial 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 Complainants have sufficiently shown that none of the above mentioned circumstances are present in the Respondent’s actions in connection with the Domain Name in dispute. The Respondent uses the Domain Name in dispute to trigger Internet users to a website that contains hyperlinks to other commercial websites offering banking or financial services. This cannot be seen as a bona fide offering of goods or services. In contrast, it is the Respondent’s intention to use the Complainants’ reputation to attract Internet users looking for financial services. This also shows that the Respondent is not making use of the Domain Name in dispute in a legitimate non-commercial or fair manner. Not only does it want to direct consumers to the advertised websites, it also deliberately accepts the tarnishing of the Complainants’ trademarks.

Neither is it proven that the Respondent is commonly known by the Domain Name in dispute. The Respondent itself has also not provided any evidence of circumstances leading to the contrary. Accordingly, the Panel finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent has registered and used the Domain Name in dispute in bad faith.

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove registration as well as use in bad faith of the disputed Domain Name, even if the Respondent has not responded to the Complaint. Paragraph 4(b)(iv) of the Policy lists as one of the typical situations, which shall provide evidence of the registration and use of a Domain Name in bad faith, that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

The Complainants have sufficiently fulfilled their burden of proof in this respect. They have shown that the Respondent operates a website under the Domain Name in dispute on which it displays hyperlinks leading Internet users to other websites of third parties offering financial services. There can be no doubt that by establishing this website the Respondent knew of the Complainants’ trademarks. Whereas the word “securities” is of a descriptive character, the combination with the acronym “CIC” shows that the Respondent intentionally chose the Domain Name in dispute in order to make use of the Complainants’ reputation in the finance and banking sector. This is even more likely with respect to the identity with the trademark CIC SECURITIES. This trademark has been used continuously by the Complainants since its first registration in 2001. The Respondent thus deliberately wants to create a likelihood of confusion with the Complainants’ trademarks in order to make use of their reputation and this way enhance its own financial situation. The Panel is convinced that the Respondent is being compensated for channeling consumers to the websites of others who advertise financial services on its website.

Hence, the Domain Name in dispute has been registered and is being used by the Respondent in bad faith (paragraph 4(a)(iii)).

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 <cicsecurities.net> be transferred to the second Complainant.


Andrea Jaeger-Lenz
Sole Panelist

Dated: November 9, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1323.html

 

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