Credit Industriel et Commercial S.A. v Alain Rudolfd and Anne Jammen

WIPO Case No. D2023-0819

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Credit Industriel et Commercial S.A. v. Alain Rudolfd and Anne Jammen

Case No. D2023-0819

1. The Parties

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

France.

The Respondents are Anne Jammen (the “first Respondent”), and Alain Rudolfd (the “second Respondent”),

United Kingdom.

2. The Domain Names and Registrar

The disputed domain names <sepa-cic-groupe.com>, and <wire-cic-groupe.com> are registered with IONOS

SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23,
2023. On February 23, 2023, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain names. On March 1, 2023, the Registrar transmitted by
email to the Center its verification response disclosing registrant and contact information for the disputed
domain names, which differed from the named Respondent (1&1 Internet Limited, and Redacted for Privacy)
and contact information in the Complaint. The Center sent an email communication to the Complainant on
March 2, 2023 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

March 7, 2023.

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 March 10, 2023. In accordance with the Rules, paragraph
5, the due date for Response was March 30, 2023. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 3, 2023.

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The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on April 6, 2023. 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 French company founded in 1859 and active in the finance and banking sector. The

Complainant claims to have more than 5,3 million clients, with over 1800 agencies in France and abroad.

Amongst others, the Complainant owns several active trademarks, including:

- French word trademark CIC No. 1358524 registered on June 10, 1986 in classes 35 and 36

- European Union word Trade mark CIC No. 005891411 registered on March 5, 2008 in classes 9, 16,
35 and 36; and

- European Union semi-figurative Trade mark CIC No. 011355328 registered on March 26, 2013 in
classes 9, 16, 35 and 36.

The Complainant operates the domain names <cic.fr>, <cic.eu> and <cicbanques.com>, registered on May
27, 1999, March 6, 2006 and April 5, 2006 respectively.

The disputed domain name <sepa-cic-groupe.com> was registered by the first Respondent on February 7, to a parked webpage and are inactive, respectively.

2023. The disputed domain name <wire-cic-groupe.com> was registered by the second Respondent on

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain names are subject to common control and that the consolidation of the complaint against multiple Respondents is fair and equitable to all parties.

The Complainant contends that the disputed domain names are confusingly similar to its well-known CIC trademarks, as the disputed domain names fully incorporate the trademarks. Additionally, the addition of generic terms such as “groupe”, “sepa”, or “wire” does not suffice to distinguish the disputed domain names

from the Complainant’s trademarks but rather will be perceived as a reference to the core business of the
Complainant.

The Complainant claims that the Respondents have no rights or legitimate interests in respect of the disputed domain names, as the Respondents are not commonly known by the disputed domain names and does not use the disputed domain names for a bona fide offering of goods or services. In addition, the Respondents have not acquired trademark rights in the disputed domain names and have not been sponsored, licensed by or affiliated to the Complainant to use or register its trademarks, including as domain name.

The Complainant contends that the Respondents have registered and are using the disputed domain names in bad faith as they intentionally attempted to attract, for commercial gain, Internet users to the disputed domain names by incorporating a well-known trademark. Furthermore, the Complainant argues that the addition of terms related to its core business to the disputed domain names further reinforces the

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presumption of bad faith. Finally, the Complainant claims that the Respondents are using email addresses

known for their association with online scams, including phishing.

B. Respondent

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

6. Discussion and Findings

6.1 Consolidation of the Complaint

Where a Complaint involves more than one disputed domain name with different registrants, an
“Administrative Panel shall decide in accordance with the Policy any request for a proceeding by a party in a
multiple domain name dispute involving two or more entities” (paragraph 10(e) of the Rules).

More precisely, “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.

Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of

(i) the registrants’ identity(ies) including pseudonyms,
(ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s),
including any pattern of irregularities,
(iii) relevant IP addresses, name servers, or webhost(s),
(iv) the content or layout of websites corresponding to the disputed domain names,
(v) the nature of the marks at issue (e.g., where a registrant targets a specific sector),
(vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>),
(vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the
mark(s) at issue,
(viii) any changes by the respondent relating to any of the above items following communications regarding
the disputed domain name(s),
(ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s),
(x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant
and/or disclosures by the respondent(s)”. (WIPO Overview of Panel Views on Selected Policy Issues, Third

Edition (“WIPO Overview 3.0”), section 4.11.2).

In this case, the disputed domain names:

- present a similar structure (both composed of the mark “CIC” and the French word “groupe”, preceded
by descriptive terms related to banking wire transfers (“wire” and “sepa”) in the same order);

- were both registered on 7th February 2023; and

- were both registered by Respondents with extremely similar contact details, including an email service
ending with @consultant.com (which has been associated with online scams, including in previous
UDRP decisions (LIDL Stiftung & Co. KG v. Sebastian Roche, WIPO Case No. DEU2022-0037)).

Based on the above, the Panel finds that the disputed domain names are subject to common control and that consolidation of the Complaint against the first and second Respondent is fair and equitable to all parties.

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6.2 On the merits

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

(i)        the disputed domain names are identical or confusingly similar to the trademark or service mark in which the complainant has rights;

(ii)       the respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii)      the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must demonstrate that the disputed domain names are (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights.

On the basis of the evidence presented, it is established that the Complainant owns several CIC verbal and semi-figurative trademarks. In the assessment of the identity or confusing similarity between the disputed domain name and the trademarks of the Complainant, figurative elements of the trademarks shall be disregarded, except where they constitute the dominant element of the trademark (WIPO Overview 3.0”, section 1.10; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp, WIPO Case No. D2001-0031; Dreamstar Cash S.L. c Brad Klarkson, WIPO Case No. D2007-1943). The semi-figurative CIC trademarks of the Complainant have a verbal element “cic” and thus constitute relevant trademarks for the purposes of this assessment.

The disputed domain name <sepa-cic-groupe.com> reproduces the verbal elements of the Complainant’s CIC trademarks, with the addition of the terms “sepa” and “group”. The disputed domain name <wire-cic- groupe.com> reproduces the verbal elements of the Complainant’s CIC trademarks, with the addition of the

terms “wire” and “group”. Previous UDRP decisions, have consistently held that, in circumstances where the
disputed domain name incorporates the entirety of a trademark or its dominant feature is recognizable, the
disputed domain name will be considered confusingly similar to the trademark (WIPO Overview 3.0, section
1.7; Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber, WIPO Case No.
D2003-0251; and Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC /
Armands Piebalgs, WIPO Case No. D2017-0156). This finding of confusing similarity is not prevented by the
addition of other terms (WIPO Overview 3.0, section 1.8; Intesa Sanpaolo S.p.A. v. Rampe Purda, WIPO
Case No. D2010-1116; and Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Mark Bolet,
WIPO Case No. D2006-1245).

Additionally, it is well-established that the generic Top-Level Domain “.com” is typically not taken into account for the purpose of assessing confusing similarity under the Policy, as it is merely standard registration requirements (WIPO Overview 3.0, section 1.11).

Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, evidence of the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) may be established, in particular, by any of the following circumstances:

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(i)        prior to becoming aware of the dispute, the Respondent has used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, or made demonstrable preparations to do so;

(ii)       the Respondent is commonly known by the disputed domain name in question, even without having acquired trademark or service mark rights; or

(iii)      the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent to misleadingly divert consumers for profit by creating confusion or to tarnish the trademark or service mark at issue.

Where the Complainant establishes prima facie that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production on this element is on the Respondent and it is up to the Respondent to provide relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent does not provide such relevant evidence, the Complainant is deemed to have satisfied the second element (WIPO Overview 3.0, section 2.1).

The Complainant establishes prima facie that the Respondents have no rights in CIC as trademarks and that the Respondents have not been sponsored, licensed or is otherwise affiliated with the Complainant to register or use said trademarks or in any corresponding disputed domain names. The Complainant also establishes prima facie that the Respondent is not commonly known by the disputed domain names and is not using the disputed domain name in connection with a bona fide offering of goods or services, since the disputed domain names are inactive.

In addition, the Panel notes that the composition of the disputed domain names incorporating the business carries a risk of implied affiliation.

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not exercised its right to defend itself and has not asserted the existence of a legitimate interest in the disputed domain names, so the Panel must conclude that the second condition of paragraph (4)(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides circumstances, in particular but without limitation, that shall be
evidence of a disputed domain name being registered and used in bad faith – including the circumstance
that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed
domain name, by creating a likelihood of confusion with the complainant's mark as to the source,
sponsorship, affiliation, or endorsement of the disputed domain name or location or of a product or service
on the disputed domain name.

In addition, to the circumstances provided in paragraph 4(b) of the Policy, the Panel may also consider special circumstances such as (i) the nature of the domain name (e.g., a typo of a widely known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term), (ii) a clear lack of rights or legitimate interests coupled with the absence of a credible explanation for the respondent’s choice of domain name, or (iii) other indicia generally suggesting that the respondent has targeted the complainant in some way (WIPO Overview 3.0, section 3.2.1).

The disputed domain names were both registered on February 7, 2023, which is subsequent to the
registration of the Complainant’s CIC trademarks in 1986, 2008, and 2013. Previous UDRP Panels have
found the Complainant’s trademarks to be well-known (Credit Industriel et Commercial S.A.,Banque
Fédérative du Credit Mutuel v. Headwaters MB, WIPO Case No. D2008-1892; Credit Industriel et
Commercial S.A v. Jeongyong Cho, WIPO Case No. D2013-1263; and Credit Industriel et Commercial v.
Mao Adnr. WIPO Case No. D2013-2143).

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Previous UDRP panels have held on multiple occasions that the mere registration of a domain name that is identical or confusingly similar to a well-known or widely-known trademark by an unaffiliated entity may be sufficient to create a presumption of bad faith, as the respondent knew or should have known that its domain name would be identical or confusingly similar to the complainant’s trademark (WIPO Overview 3.0, sections 3.1.4, and 3.2.2). As a result, the Panel finds that the Respondents knew or should have known that it was registering the disputed domains names in violation of the Complainant’s trademarks.

Additionally, the Panel finds that several other circumstances are indicative of bad faith, including (i) a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondents’ choice of the disputed domain names, (ii) the use of a privacy shield to hide the registrant’s identity, and (iii) the failure to submit a response (WIPO Overview 3.0, section 3.2 and 3.6).

For the reasons set out above, the Panel considers that the requirement of registration and use in bad faith of the disputed domain names set out in paragraph 4(a)(iii) of the Policy is 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 names, <sepa-cic-groupe.com>, and <wire-cic-groupe.com> be transferred to the Complainant.

/Benoit Van Asbroeck/
Benoit Van Asbroeck
Sole Panelist
Date: April 20, 2023