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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Credit Industriel et Commercial S.A., Banque Fédérative du Credit Mutuel v. Headwaters MB

Case No. D2008-1892

1. The Parties

The Complainants are Credit Industriel et Commercial S.A. of Paris, France and Banque Fédérative du Credit Mutuel of Strasbourg, France, represented by MEYER & Partenaires, France.

The Respondent is Headwaters MB of Toronto, Canada.

2. The Domain Name and Registrar

The disputed domain name <ciccms.com> hereafter referred to as the Disputed Domain Name is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2008. On December 11, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On December 11, 2008, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2009.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on January 22, 2009. 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

Credit Industriel et Commercial

Complainant Credit Industriel et Commercial S.A. is a French banking group tracing its origin back to 1859.

Complainant Credit Industriel et Commercial S.A. comprises five regional banks, has approximately 3.9 million clients with a network of approximately 2500 commercial offices in France.

Complainant Credit Industriel et Commercial S.A. has an international presence in United Kingdom of Great Britain and Northern Ireland, Greece, Lebanon, Chile, Brazil, Peoples Republic of China and United States of America.

CIC is the acronym, the trade name and the trademark used by the Complainant, Credit Industriel Et Commercial S.A., since its origin.

Complainant Credit Industriel et Commercial S.A. has a main web portal available at “www.cic.fr”.

Credit Mutuel and Banque Federative du Credit Mutuel

Credit Mutuel consists of a network of 3100 offices in France managed through 18 regional banks. Present in every field of finance, the group is a major player on the market of personal banking customers and in the corporate sector. Its main priority is to provide high-quality relationships and services to its members and customers.

Credit Mutuel operates a web portal under the uniform resource locator “www.creditmutuel.com”, dedicated to its products and services and providing financial information to the public.

Credit Mutuel has acquired a great renown in the field of banking and insurance service.

Complainant Banque Federative Du Credit Mutuel is the holding company of Group Credit Mutuel –CIC (“CMCIC”) CMCIC banking group. Complainant Banque Federative Du Credit Mutuel carries the group subsidiaries and coordinates their activities

These subsidiaries are covering the fields of finance, insurance, information technology and payment systems.

Complainant Banque Federative Du Credit Mutuel acts as the central treasurer, provides the CMCEE CIC Group refinancing.

Complainant Banque Federative Du Credit Mutuel assumes the financial relations with the large corporates, local communities, and has a significant market share in flow processing payment, credit activities and financial engineering.

CIC and CREDIT MUTUEL

In 1998, CIC and Credit Mutuel merged into the Group Credit Mutuel – CIC which is the second French banking and insurance service group, providing services to thirteen million clients. Therefore, both Complainants have a sufficient common interest in the disputed domain name to be joined in this litigation.

Respondent, Headwaters MB is the registrant, administrative, and technical contact for the disputed domain name.

Respondent appears to be an American company which is a national middle market investment bank, which handles transactions in every industry segment.

CIC is the trade name and the acronym of the Complainant, used in commerce since 1859.

Complainant, Credit Industriel et Commercial is the registered owner of a large number of trademarks consisting or including the abreviation “CIC” in France and abroad. See for example:

C.I.C. French nominative trademark No.1, 358,524 of June 10, 1986. This trademark constitutes the renewal of a trademark filing dated June 26, 1976, registered under the No. 959,999. This trademark has been last renewed on June 10, 1996;

CIC Banques French nominative trademark No.1,682,713 of July 24, 1991 last renewed on June 19, 2001;

CIC Banques International nominative trademark No. 585,098 of April 10, 1992.

According to the Complainant the trademark CIC owned by the Credit Industriel Et Commercial is not only registered and used in commerce in a great majority of countries in the world, but is also well-known in the sense of article 6bis of the Paris Union Convention.

Complainant, Credit Industriel et Commercial, owns 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 financière de CIC et de l’Union Européenne (which was the old registered name of Credit Industriel et Commercial),

<cic-banques.net> registered on December 28, 2000 in the name of Euro Information (Euro Information is 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,

<cicbanques.info> registered on October 14, 2004 in the name of Euro information.

Credit Mutuel Has Common Law Rights in the Acronym “CM”:

Credit Mutuel customers usually designate the banking group with the acronym CM and CM is used in many of its domain names

<cm-assurances.fr>,

<cm-credit.fr>,

<cm-epargne.fr>,

<cm-auto.fr>,

<cm-direct.fr>,

<cm-seniors.fr>,

<cm-protection.fr>,

<cm-banqueadistance.fr>.

Additionally, the acronym CM is used as a bank code in order to assist in the designation of Credit Mutuel regional federations.

Therefore, Complainant has generated substantial common law rights in CM deriving from its extensive use of the CM mark for more than a century.

CIC AND BFCM have Rights in Trademark CMCIC:

Credit Industriel et Commercial and BFCM are the registered owner of a large number of trademarks consisting of the combination of both acronyms “cic” and “cm” in France and abroad.

Credit Industriel et Commercial is the registered owner of the following trademarks:

CM-CIC, French nominative trademark No. 043267901 of January 15, 2004 in classes 9, 16, 35, 36, 38 (internet services) 41 and 42 of 1957 Nice Agreement,

CM-CIC, French semi-figurative trademark No. 043268115 of January 16, 2004 in classes 9, 16, 35, 36, 38 (internet services), 41 and 42 of Nice Agreement,

CM-CIC Community nominative trademark No. 003646957 of September 5, 2005 in classes 9, 16, 35, 36, 38 (internet services), 41 and 42 of Nice Agreement,

CM-CIC Community nominative trademark No. 003644366 of June 16, 2005 in classes 9, 16, 35, 36, 38 (internet services), 41 and 42 of Nice Agreement.

Banque Federative Du Credit Mutuel is the registered owner of the following trademark:

CM CIC, French nominative trademark No. 043267314 of January 13, 2004 in classes 9, 16, 35, 36, 38 (internet services) and 42 of 1957 Nice Agreement.

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>,

<cm-cic.fr>

Since their registration, these domain names point to CMCIC’s web portal at “www.creditmutuel.fr”.

Complainants’ rights have been actively and continuously used for online banking services dedicated to CMCIC private individuals and professionals 3,200,000 customers since 1999.

As a consequence, Complainant argues it should indisputably be considered that Complainants have trademark rights on the combination of their acronyms “cic” and “cm”.

5. Parties’ Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy, Complainants allege that:

The Disputed Domain Name is confusingly similar to their trademarks CIC and CM-CIC.

Confusing Similarity with Trademark CIC

Complainants allege that the Disputed Domain Name is confusingly similar to CREDIT INDUSTRIEL ET COMMERCIAL trademark CIC alone.

The trademark CIC is entirely reproduced in the Disputed Domain Name.

The Disputed Domain Name combines Complainant’s common law trademark with the acronym CM, which corresponds to the well-known acronym used to identify Credit Mutuel.

In fact, the combination of the trademark CIC with the acronym CM does not eliminate the risk of confusion with Complainant’s trademark, but on the contrary suggests that the Disputed Domain Name refers to the Credit Mutuel - CIC French banking group.

Indeed, as stated before, the acronym CM is widely used by the Credit Mutuel/BFCM in connection with its online banking services.

The mere combination of trademarks or common law rights in a domain name has already been condemned under UDRP principles by a number of administrative panel decisions.

Confusing Similarity with Trademark CIC-CM:

The combination of the trademarks CIC and CM in the Disputed Domain Name increases the risk of confusion with Complainants’ CIC-CM trademarks.

The only differences between the Disputed Domain Name and Complainants’ trademarks are the inversion of the acronym order and the addition of the letter “s,” neither of which prevent confusion. The inversion of Complainants’ trademarks in the Disputed Domain Name does not render the domain name dissimilar, particularly when used in connection with services comparable to the financial services offered by Complainants.

Additionally, the addition of the letter “s” at the end of the Disputed Domain Name is of little consequence in analyzing the question of confusing similarity with the trademark CM-CIC.

The Disputed Domain Name constitutes a typical case of typosquatting of the CM-CIC trademark, whereby a customer may mistakenly type the domain name <ciccm.com> as <ciccms.com> and expect to find Complainants’ services. In fact, Complainants’ appear to have already made attempts at avoiding this very mistake by proactively registering or acquiring the domain names, <ciccm.com>, <ciccm.net>, <ciccm.org>, <ciccm.fr>, <ciccm.eu>, <cic-cm.com>, <cic-cm.net>, <cic-cm.org>, <cic-cm.eu>, and <cic-cm.fr>. Complainants registered many domain names consisting of the combination of their acronyms both as CICCM and CMCIC.

Complainants claim that the domain name <ciccms.com> is confusingly similar to their trademarks CIC and CM-CIC.

With respect to paragraph 4(a)(ii) of the Policy, Complainants allege that:

Headwaters MB should be considered as having no rights or legitimate interests in respect of the Disputed Domain Name <ciccms.com>.

Respondent is not related in any way to Complainants businesses: He is not one of their agents and does not carry out any activity for, or has any business with them.

Respondent is not currently and has never been known under the terms “cic”, “cm”, or “ciccms”.

No licence or authorization has been granted to Headwaters MB to make any use, nor apply for registration of the domain <ciccms.com>.

In similar circumstances, Panels decided that Respondent had neither rights nor legitimate interests in the Disputed Domain Name.

Complainants claim that the Disputed Domain Name has been registered by Respondent to take advantage of Complainants renown and divert internet users to a commercial website. Indeed, the Disputed Domain Name did at one point resolve to a parked webpage that provided links and therefore offerings to competitor banking and financial services.

Respondent has failed to provide any evidence to support a claim that it has rights or legitimate interests in the Disputed Domain Name. Therefore, Respondent should not be considered as having rights or legitimate interests in respect of the Disputed Domain Name.

With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:

Bad Faith Registration

Complainant alleges that it is impossible for the Respondent to have combined its trademark “CIC” and the CREDIT MUTUEL acronym “CM” in the Disputed Domain Name without prior knowledge of its “CM-CIC” and “CIC” trademarks and common law rights to CM on the date that the Disputed Domain Name was registered.

Complainants have previously demonstrated the strong reputation and the well-known character of their marks “CM,” “CIC” and “CM-CIC” for banking and financial services. Complainants have also demonstrated the use of many domain names consisting of the combination of all acronyms, in various combinations.

It is well settled that the notoriety of a complainant’s trademark “creates a prima facie presumption that the Respondent registered the domain name for the purpose of selling it to Complainant or one of its competitors, or that it was intended to be used in some way to attract for commercial gain users to the website by creating a likelihood of confusion with Complainant’s mark.” Arthur Guiness Son & Co. (Dublin) Ltd. v. Steel Vertigogo, WIPO Case No. D2001-0020, (regarding <guinessbeer.com>).

Complainant contends that the present case is analogous to one of its prior cases, specifically, WIPO Case No. D2005-0458, where the Panel found that “the combination of words ‘CIC BANK’ is obviously connected with the Complainant’s trademark and is not a word a trader would legitimately choose unless seeking to create an impression of an association with the Complainant”. Crédit Industriel et Commercial S.A. v. Yu Ming, WIPO Case No. D2005-0458, (regarding <cicbank.com>).

Respondent could not have made the association of the trademark CIC and CM, randomly. The Disputed Domain Name has no meaning in either English or French language, except in relation to Complainants’ services. In registering this domain name, Registrant was undoubtedly referring to the CREDIT MUTUEL-CIC group.

Moreover, the notoriety of Complainants’ marks is well documented as a result of the long-standing and continuous use internationally including a presence in six of the seven continents and acknowledged by multiple prior panels. See Crédit Industriel et Commercial S.A. v. Yu Ming, (cited above); Crédit Industriel et Commercial S.A. CM-CIC Securities v. Click Cons. Ltd., WIPO Case No. D2007-1323 (regarding <cicsecurities.net>).

Complainant offers evidence that hyperlinks, in French, on the web page are for banking and financial products and/or services.

Respondent has consequently registered the Disputed Domain Name for the illegitimate purpose of generating commercial gain by intentionally taking advantage of Internet traffic from Internet users seeking Complainant’s products and services on the Internet.

Additionally, Complainant contends that Respondent has provided false information in the WhoIs extract. Headwaters MB, which is a North American investment banking firm, does not have any operating offices in Canada, and therefore, does not correspond with the address provided in the WhoIs extract.

Bad Faith Use

Complainants contend that Respondent’s operating of the Disputed Domain Name <ciccms.com> constitutes bad faith use.

Respondent is using the Disputed Domain Name to divert Internet users to an active webpage offering banking and financial services, notably offered by Complainants’ competitors.

By diverting consumers to a commercial website, in French, selling products and services in the field of banking and finance, Respondent was undoubtedly trying to benefit illegally from the renown of Complainants in relation with finance and banking services.

Indeed, such use may have misled consumers looking for banking services, without having acquired any licence or authorization from Complainants, who are the legitimate owners of the trademark CMCIC and domain names incorporating CICCM.

Moreover, the activation of said webpage probably generated revenue to the benefit of Respondent through an affiliation solution. Considering that, it is obvious that Respondent is intending to realize material benefits by diluting the fame and renown of Complainants’ trademarks.

As a consequence, Respondent is undoubtedly not making any good faith use of the Disputed Domain Name.

Complainants claim that this use of the Disputed Domain Name <ciccms.com> has to be considered as unfair competition.

For all these reasons, Respondent has engaged in bad faith registration and use of the Disputed Domain Name <ciccms.com>.

B. Respondent

Respondent did not respond to Complainant’s contentions.

Because Respondent is in default, the Panel may draw negative inferences from Respondent’s default (Rules, paragraph 14(b)). However, the Rules also require that the Complainant support its assertions with actual evidence in order to succeed in a UDRP proceeding. (Rules, paragraph 3).

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) 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. (Policy, paragraph 4(a)).

A. Identical or Confusingly Similar

Complainants own trademark registrations for CIC and CM-CIC and have acquired common law rights in CM by virtue of the extensive use of CM. Therefore, the Panel finds that Complainants have trademark rights in the marks CIC, CM-CIC and CM.

The Panel also finds that the domain name <ciccms.com> is likely to be confused with Complainants’ trademarks because it incorporates Complainants’ trademarks. Neither the reversal of the trademarks CIC and CM nor the addition of an “S” at the end of the domain name prevents a finding of confusingly similarity. It is not significant that these acronyms are inversed. Crédit Industriel et Commercial SA and Banque Fédérative du Crédit Mutuel v. Keenan Azzeh, WIPO Case No. D2006-0712 regarding <ciccm.com>: “it does not matter, as pointed out by the Complainants, that these acronyms be inversed”; Schneider Electric SA v. Ningbo Wecans Network Technology Co., Ltd., Ningbo Eurosin International Trade Co., Ltd., WIPO Case No. D2004-0554, regarding <electric-schneider.com>: “The inversion of the words and the addition of a hyphen are not enough to avoid confusion”.

Nor is the addition of an “s” to the domain name enough to distinguish it from Complainant’s trademarks. See Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303, (“the addition of the letter “s” does not change the overall impression of the designation as being a domain name connected to the trademark”).

In addition, the generic top-level domain “.com” is without legal significance when comparing the domain name at issue to Complainant’s registered trademark. The Forward Association, Inc., v. Enterprises Unlimited, NAF Case No. FA095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance.)

Therefore, this Panel finds that the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant must prove that Respondent has no legitimate interests in respect of the domain name. Policy paragraph 4(a)(ii). A respondent may prove its legitimate interests by offering evidence that:

(i) before any notice to you of the dispute, your 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) 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 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.

Respondent did not respond to the complaint so there is no evidence to rebut Complainant’s evidence that Respondent has no legitimate rights.

With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate non-commercial or fair use of the Domain Name and has not used the Domain Name, or a name corresponding to the Domain Name, in connection with a bona fide offering of goods or services. Although the website currently is a parked page that provides links to doctors and other medical information sites, Annexes to the Complaint show that, prior to the time of the filing of the Complaint, Respondent’s website contained links to financial institutions in competition with Complainant.

A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; see also 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. Panel finds that Complainant’s evidence establishes a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name at issue. Respondent has not rebutted this showing.

The Panel accordingly finds for the Complainant under the second element of the Policy.

C. Registered and Used in Bad Faith

Complainant’s allegations of bad faith are not contested. Given the evidence of Complainant’s marks are well known, the Panel finds that it is likely that Respondent was aware of Complainant’s trademark rights when it registered the Disputed Domain Name. This supports a finding of bad faith registration. Respondent’s links to competing financial institutions is evidence of bad faith use. Specifically, such conduct is evidence of an intentional attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark.

Moreover, there is evidence that Respondent has given false information about its identity, which is further evidence of bad faith registration. Chanel v. 1, WIPO Case No. D2003-0218 (“the use of false contact informations in Respondent’s initial registration is evidence that the Respondent registered in bad faith”).

The Panel accordingly finds for Complainant under the third element of the Policy.

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 Disputed Domain Name <ciccms.com> be transferred to the Complainants.

Lawrence K. Nodine
Sole Panelist

Dated: February 5, 2009

 

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