After presenting the evidence summarised in the factual background above, in order to prove its own legitimate interests, the Complainant then marshalled a significant and persuasive array of previous decisions in similar cases in support of its argument that the Domain Name could be confused with its own name, that the Respondent had no legitimate interest and that it had been registered in bad faith.
Thus, it argued that:
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.
WIPO Arbitration and Mediation Center has already recognized the well-known character of the Complainant trademarks:
- WIPO Case No. D2008-1892 Credit Industriel et Commercial S.A., Banque Fédérative du Credit Mutuel v. Headwaters MB, regarding <ciccms.com>:
“Given the evidence of the Complainant’s marks are wellknown, the Panel finds that it is likely that Respondent was aware of Complainant’s trademark rights when it registered the Disputed Domain Name.”
- WIPO Case No. D2007-0530 Credit Industriel et Commercial S.A., CM-CIC Securities v. Homeshop regarding <cicsecurities.com>:
“Given the worldwide reputation of the Complainants the Panel is prepared to draw the inference, in the absence of material from the Respondent, that the Respondent, or those directing its activities, knew of the reputation and marks of the Complainants and were seeking to obtain a commercial advantage by registering the domain name.”
- WIPO Case No. D2007-1323 Credit Industriel et Commercial S.A., CM-CIC Securities v. Click Cons. Ltd regarding <cicsecurities.net>:
“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 Complainant CREDIT INDUSTRIEL ET COMMERCIAL is also the registrant of the following generic and country code top level domain names :
• CIC.FR
• CIC.EU
• CIC.ASIA
• CIC.MOBI
• CICNY.COM where NY stands for New York
• CICNY.EU
• CIC-BANK.COM
• CIC-BANK.ASIA
• CIC-CASH.COM but also in .EU , .NET , .ORG and .FR
• CIC-FINANCE .COM (but also in .EU , .NET , .ORG , .INFO , .BIZ , .FR ;
• CICFINANCE.COM but also in .EU , .NET , .ORG , .INFO , .BIZ , .FR ;
• CIC-GLOBALFLUX.COM
• CIC-GLOBALFLUX.EU
As a consequence, the Complainant CIC contends that it should indisputably be considered that the Complainant has trademark rights on the sole wording CIC and/or combined with terms in the banking vocabulary.
In the present case, the Complainant CREDIT INDUSTRIEL ET COMMERCIAL S.A. claims that the domain name <cic-fx.com> is confusingly similar to its trademark “CIC”. The trademark “CIC” is entirely reproduced in the disputed domain name followed by a dash ( “-“ ) and the wording “FX”. The wording FX is the common abbreviation from the financial term FOREX that stands for FOREIGN EXCHANGE. It refers to the fact that the online encyclopedia Wikipedia provides the following definition:
“The foreign exchange (currency or forex or FX) market is where currency trading takes place for another. It is where banks and other official institutions facilitate the buying and selling of foreign currencies. FX transactions typically involve one party purchasing a quantity of one currency in exchange for paying a quantity of another. FX market is the largest and most liquid financial market in the world, and it is includes trading between large banks, central banks, currency speculators, multinational corporations, governments, and other financial markets and institutions (…).“ The purpose of FX market is to facilitate trade and investment. The wording “FX” is also used for designating the foreign exchange on financial websites, slaps… .
As other banks CREDIT INDUSTRIEL ET COMMERCIAL SA has an important activity in the field of the foreign exchange market.
The registration and use of the trademark CIC followed by a generic term describing one of the main activities of the Complainant is to be considered as confusingly similar and undoubtedly lead the Internet uses to think that the domain name <cic-fx.com> is linked to the CIC banking activities in the specific field of foreign exchange.
Panels already stated that the addition of a generic term that describes one of the main fields of activities of the Complainant is of no consequence of the confusion similarity with the trademark in issue. On the contrary, it increases the confusion by describing the services offered by the trademark’s owner. See for instance :
- WIPO Case No. D2007-1817 Credit Industriel et Commercial S.A., Credit Industriel de L’Ouest v. Maison Tropicale SA regarding <ciccreditmonitor.net> :
« Further, the Panel finds that the mere combination of the generic terms “credit” and “monitor” to the CIC trade mark in the domain name doesnot take away the overall impression that the domain name is connected to the Complainants. In fact, in the context of the specific business the Complainants are engaged in, the potential for confusion is increased by the inclusion of the words “credit” and “monitor”/”creditmonitor”. The entire combination of the CIC mark with the said generic words also suggests or gives the impression that the Complainants have sponsored or endorsed the website. »
- WIPO Case No. D2005-0458 Crédit Industriel et Commercial S.A v. Yu Ming regarding <cicbank.com> :
« The disputed domain name wholly incorporates the Complainant’s trademark “CIC,” used in connection with bank and insurance services since 1950. The fact that the word ”bank” is added to complainant’s trademark does not eliminate the similarity between complainant’s trademark and the disputed domain name, as ”bank” is a descriptive component of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporated a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of other descriptive words to such marks. » Moreover, the mere adjunction of a dash between CIC and FX in the disputed domain name would not eliminate the risk of confusion in the public mind. Indeed, in previous decisions, Panels argued that the mere adjunction of dashes in a domain name is of no consequence of the confusion similarity with the trademark at issue :
- WIPO Case D2007-0207 Confédération Nationale du Credit Mutuel v. Mervyn Mould regarding SECURITE-CREDIT-MUTUEL.COM : « The mere addition of the elements consisting of two dashes (…) to the Complainant’s CREDIT MUTUEL trademark do not distinguish the domain name from the Complainant’s trademark ». A domain name is always composed of a prefix, a second level domain and an extension.
The constant case law under the domain name uniform dispute resolution policy (UDRP) considers that the mere adjunction of the top level domain name “.com” in a disputed domain name is of no consequence on the existing infringement. See for instance:
- WIPO Case D2006-1268 Credit Industriel et Commercial SA v. XUBO regarding CICBANQUES.COM: “the mere addition of a generic indicator to the name CICBANQUES does not affect the domain name being recognized as identical with the trademark CICBANQUES.
-
- WIPO Case D2007- 1325 BOUYGUES v. Chengzhang, Lu Ciagao regarding BOUYGUES.MOBI : « It is an accepted principle that the addition of suffixes such as “.mobi” being the generic top-level domain is not a distinguishing factor and consequently, the Panel finds that the disputed domain name is identical to Complainant’s trademark ». At last, The disputed domain name is combined to the extension (Top Level Domain) “.com” which is the most popular and well known gTLD.
Internet users often add instinctively this suffix to their keywords in order to surf over the Internet As a consequence, the CIC claims that the domain <cic-fx.com> is confusingly similar with its trademarks “CIC”.
The Complainant submitted that the Respondent CHRONICLE should be considered as having no rights or legitimate interests in respect of the domain name <cic-fx.com>.
The Respondent is not related in any way to the Complainant businesses: he is not one of its agents and does not carry out any activity for, or has any business with it.
The Respondent is not currently and has never been known under the wording “CIC” or “CIC FX”.
No licence, nor authorization has been granted to CHRONICLE to make any use, nor apply for registration of the domain <cic-fx.com>.
The Complainant then cites that, in similar circumstances, Panels decided that the Respondent had neither rights nor legitimate interests in issuing domain name:
- WIPO Case D2008-1892 Credit Industriel et Commercial SA, Banque Fédérative du Credit Mutuel v. Headwaters MB regarding <ciccms.com>:
“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. 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”.
- WIPO Case D2005-0615 Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com regarding <chinavogue.com>:
“The domain name does not appear to be in use for any bona fide offering of goods or services or to be prepared for such use, and there is no indication that the Respondent was known by the name “Vogue” prior to the registration of the domain name. The Respondent is not authorized or licensed to use the Complainant’s mark. There is no indication for a legitimate non-commercial or fair use of the domain name. These assertions are sufficient to satisfy Complainant’s obligation of making a prima facie showing that Respondent lacks a legitimate interest; the Respondent, by virtue of its default, has failed to rebut that showing”.
- WIPO Case D2006-1268 Credit Industriel et Commercial SA v. XUBO regarding <cicbanques.com>:
“the Respondent has not been able to prove either (…) that it has used or has prepared to use the domain name (…) with a bona fide offering of goods or services, nor that it has been commonly known by the domain name, nor that it 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 at issue. (…) The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name”.
Moreover, the Respondent has not proved that it has rights or legitimate interests in the domain name <cic-fx.com>, following the cease and desist letter sent by the Complainant to try to find an amicable settlement in this case. 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.
On the grounds of the above, the Complainant submits that the Respondent CHRONICLE should not be considered as having rights or legitimate interests in respect of the domain name <cicfx.com>.
The Complainant submitted that it is difficult to imagine that the Respondent could have ignored CREDIT INDUSTRIEL ET COMMERCIAL and its international reputation in the field of financial and banking services at the time he applied for the registration of the similar domain name <cic-fx.com>. CREDIT INDUSTRIEL ET COMMERCIAL has indeed previously demonstrated the strong reputation and the well-known character of its mark “CIC” for banking and financial services since 1991.
Furthermore, the Complainant is carrying out business in Australia (where the Respondent is apparently located), and where it has a local office located in Sydney. Thus, the Complainant has been known in the Australian market and submits that the registration of a domain name that reproduces entirely the Complainant’s trademark and adding the financial term “FX” confirms CHRONICLE bad faith registration.
The Complainant asserts that "As a matter of fact, by registering the domain name <cic-fx.com>, CHRONICLE referred undoubtedly to the Complainant’s trademark. Indeed, the Complainant has exclusive rights over the wording CIC in relation with financial and banking services. Furthermore, CREDIT INDUSTRIEL ET COMMERCIAL is already the owner of various trademarks and domain names including the trademark CIC and a financial term: CIC BANQUES, CIC-BANK.COM, CIC-CASH.COM, CIC-FINANCE.COM, CIC-GLOBALFLUX.COM etc.
Consequently, the Complainant’s clients meet usually numerous financial services, whose names contain the wording CIC and a generic or descriptive term like FX. Thus, they would think that the disputed domain name is linked to the Complainant.
Consequently, the Complainant holds that the Respondent cannot have made the association of the trademark “CIC” and the generic/descriptive term “FX” randomly. The Complainant submitted that 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 Complainant’s clients on the web.
The Complainant contends that the Respondent’s operating of the domain name <cic-fx.com> constitutes bad faith use. The Complainant CREDIT INDUSTRIEL ET COMMERCIAL S.A. claims that the domain name <cic-fx.com> has been registered by theRepondent CHRONICLE to take advantage of the Complainant’s renown and divert internet users to an inactive website, which does not correspond to the official website of the Complainant. This behavior constitutes evidence of bad faith use, which may affect the Complainant’s reputation, by attracting Internet user’s to a webpage that does not correspond to what they were looking for.
As stated in previous cases, use in bad faith can also result from inaction of the Respondent in case of particular circumstances called “passive holding”. The Complainant points out that many WIPO UDRP decisions have held such behavior as bad faith:
- WIPO Case D2006-0557 Banque Transatlantique S.A. v. Banque Transatlantique regarding <bt-atlantic.com>: “even if the domain name is currently inactive, said “passive use” of the domain name is deemed to be indicative of bad faith behavior. Many WIPO UDRP decisions have held such behavior as bad faith”.
- WIPO Case D2005-1085 Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos
Properties regarding <thelittleprince.com>: “The Panel has considered whether, in the circumstances of this particular case, the passive holding of the domain name by the Respondent would amount to the Respondent acting in bad faith. The Panel concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) Complainant’s trademark is identical to the English translation of Saint Exupéry’s famous novel “Le Petit Prince” which is widely known in the English speaking world. It therefore appears that the Respondent has registered and used the domain name <thelittleprince.com> in order to create an association with the mark or title as a means of attracting users to his future website;
(ii) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the domain name. Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
The Panel concludes that Respondent’s registration and passive holding of the domain name, satisfies the requirements of paragraph 4(a)(iii) of the domain name being registered and used in bad faith by the Respondent”.
- WIPO Case D2005-0615 Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com regarding <chinavogue.com>: “The Panel has now to consider whether, in the circumstances of this particular Complaint, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. The particular circumstances of this case are that:
(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in the United States of America and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name, the Respondent registered the domain name in 1999, and seems not to have been using the domain name, the Respondent did not reply to the Complainant’s communications before the proceedings, and the Respondent did not reply to the Complainant’s contentions.
The Panel concludes that the Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4
(a)(iii) that the domain name “is being used in bad faith” by the Respondent”.
- WIPO Case D2001-0148 Audi AG v Hans Wolf regarding <audi-lamborghini.com>: The Panelist considers that the following circumstances justify such conclusion:
The Complainant's trademark AUDI and the trademark LAMBORGHINI of its subsidiary are internationally well-known marks and the trademark AUDI enjoys a particularly strong reputation in Germany where the Respondent must be assumed to be located.
- WIPO Case D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows regarding <telstra.org> : the Panel decided that « inaction can constitute bad faith use ».
- WIPO CASE D2000-0468 Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman regarding <revlon.net>: the Panel finds that (…) « Respondent’s inaction constitutes bad faith registration and use of the domain name at issue ».
In this case,it has been submitted that the Complainant’s trademarks are firstly widely known. Moreover, the Complainant is embedded in Australia, where the Respondent is apparently located. Secondly, the Respondent has made no use of the domain name and has submitted no evidence whatsoever of any good faith use of the domain name. The Complainant directed the Panel’s attention to the fact that the Respondent did not reply to the Complainant’s communications before the proceedings.
Apart from asserting that the above-indicated circumstances confirm the Respondent’s CHRONICLE bad faith use of the domain name <cic-fx.com> (“passive holding”), the Complainant’s overall conclusion was that it appears that the Respondent has registered and is using this domain name in order to create an association with the Complainant’s
trademark CIC. |