Credit Industriel Et Commercial v Ali sedighi

WIPO Case No. D2022-4520

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Credit Industriel Et Commercial v. Ali sedighi

Case No. D2022-4520

1. The Parties

Complainant is Credit Industriel Et Commercial, France, represented by Meyer & Partenaires, France.

Respondent is Ali sedighi, Canada.

2. The Domain Name and Registrar

The disputed domain name <cic.marketing> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28,
2022. On November 28, 2022, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On November 28, 2022, the Registrar transmitted
by email to the Center its verification response disclosing registrant and contact information for the disputed
domain name, which differed from the named Respondent (Privacy service provided by Withheld for Privacy
ehf) and contact information in the Complaint. The Center sent an email communication to Complainant on
November 30, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting
Complainant to submit an amendment to the Complaint. Respondent sent an informal communication to the
Center on December 1, 2022. Complainant filed an amended Complaint on December 1, 2022.

Respondent sent another informal communication to the Center on December 5, 2022.

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 Respondent of the Complaint, and the proceedings commenced on December 6, 2022. On December 12, 2022, Complainant requested the suspension of the proceeding due to possible settlement negotiations, and the proceeding was formally suspended on the same day. The proceeding was then reinstituted on January 19, 2023.

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In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2022. Respondent did not provide a formal Response. Accordingly, the Center notified the Parties of Respondent’s default on February 7, 2023.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on February 16, 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

Complainant, commonly abbreviated at “CIC”, is one of the oldest deposit banks in France. It is the proprietor of the following registrations for its CIC mark:

- French trademark No. 1358524 for C.I.C. (word mark), registered on June 10, 1986 for services in
classes 35 and 36;

- European Union trademark No. 005891411 for CIC (word mark), registered on March 5, 2008 for
goods and services in classes 9, 16, 35 and 36;

- European Union trademark No. 11355328 for CIC (device mark), registered on March 26, 2013 for
goods and services in classes 9, 16, 35 and 36.

Complainant operates business websites at the domain names <cic.fr> and <cic.eu>.

Respondent appears to be is a private individual located in Canada.

The disputed domain name was registered on November 12, 2022. It resolves to a website featuring pay-per-click (“PPC”) links related to consumer financial services. The record contains evidence that mail exchange (“MX”) servers have been configured for it.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows.

Under the first element, Complainant CREDIT INDUSTRIEL ET COMMERCIAL, in abbreviated form CIC, states that it is the French oldest deposit bank; it was set up in 1859 by an imperial decree signed by Napoleon III. The company was nationalized in 1982 and re-privatized in 1997. Complainant is currently a part of one of the main European banking groups, “Crédit Mutuel Alliance Fédérale”. Complainant serves more than 5,3 million clients, among them almost 946,000 professionals and businesses. More than 1,800 agencies are distributed in France and 37 abroad. The CIC mark is well-known, and the disputed domain name is identical to it.

Under the second element, Complainant states that Respondent is not known to it. No license or authorization has been granted to Respondent or any company or individual to make any use or apply for registration of the disputed domain name. Respondent is not related in any way to Complainant’s business. The disputed domain name currently redirects to a PPC website containing links to other providers of financial and banking services.

Under the third element, Complainant states that it has in previous UDRP proceedings demonstrated the strong reputation and the well-known character of its CIC mark. The disputed domain name was registered shortly after Complainant posted a vacancy for a “Chargé de Marketing” on its official website. The disputed domain name is being used to redirect users to a website featuring PPC links. Moreover, MX servers have

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been configured for it, creating a threat that the disputed domain name will be used to send fraudulent

e-mails.

Complainant requests transfer of the disputed domain name.

B. Respondent

In an e-mail dated December 1, 2022, Respondent stated: “I have no idea and can’t find any documents attached related to the case. Please give us more elaboration and details.”

In an e-mail dated December 5, 2022, Respondent stated: “We just registered this domain for our marketing services and have no plan to take someone’s else brand. But we need this domain and planning to keep it for our website, We have already started working on the site, and it’s ready to publish. They had the chance to register the domain and protect their brand, and most importantly, this CIC is not specifically their unique brand name, and they can’t ask for it.”

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

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

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

(iii)      Respondent has registered and is using the disputed domain name in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the CIC mark through registrations in France and the European Union. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

In comparing the disputed domain name to Complainant’s mark, the Panel finds that they are identical. It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. See WIPO Overview 3.0, section 1.7.

It is the well-established view of UDRP panels that a generic Top-Level Domain such as “.marketing” is
viewed as a standard registration requirement and as such is disregarded under the first element confusing
similarity test. See WIPO Overview 3.0, section 1.11.1. See also Navasard Limited v. Contact Privacy inc.
Customer 12410263883 / 1xbet Orongr1, WIPO Case No. D2021-3133; Sodexo v. Rafaela Sousa Pereira

Gomes, SODEXO, WIPO Case No. D2022-3796.

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the
Policy.

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B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:

(i)        before any notice to it of the dispute, respondent’s use of, or demonstrable preparations to use 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

(ii)       respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii)       respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the CIC mark with the permission of Complainant.

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that
Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent states that it has registered the disputed domain name for its marketing services and that it is in the process of creating a website. Respondent does not provide any further information about its planned business nor any evidence to substantiate these statements.

Even interpreting these statements in the light most favorable to Respondent, the Panel is unable to find that Respondent has demonstrated its rights or legitimate interests in the disputed domain name. According to established UDRP practice, a respondent claiming demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services must provide credible claims supported by appropriate evidence. See WIPO Overview 3.0, section 2.2.

In this case, Respondent has provided no evidence to support its claims. Rather, the record reflects registration of the disputed domain name on the day following Complainant’s advertising of a marketing vacancy, the use of the disputed domain name for PPC links and the configuration of e-mail servers for the disputed domain name. On this body of evidence, the Panel finds that Respondent has not demonstrated its rights or legitimate interests. See WIPO Overview 3.0, section 2.1.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain names. Complainant’s rights in its CIC mark predate the registration of the disputed domain names by decades. The disputed domain name is identical to

Complainant’s CIC mark and its domain names at <cic.fr> and <cic.eu>. In connection with the fact that the disputed domain name resolves to a website featuring PPC links connected to Complainant’s business, the Panel is unable to find that the disputed domain name was registered in good faith. The Panel is not
persuaded by Respondent’s statement that its selection of the disputed domain name has nothing to do with

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Complainant, namely, that “CIC is not specifically their unique brand name”. Absent any plausible explanation for why the disputed domain name was selected, the Panel finds that the preponderance of the evidence supports a finding of bad-faith registration of the disputed domain name. WIPO Overview 3.0, section 3.2.1.

UDRP panels have consistently held that the use of a disputed domain name to redirect to a PPC website
such as the one used by Respondent is evidence of bad faith. The PPC links indicate Respondent is using
the disputed domain name for commercial gain. See WIPO Overview 3.0, section 3.1.4. See also Shangri-
La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315;
Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.

The Panel finds that the timing of the registration of the disputed domain name and the establishment of MX servers for it are additional indicia of bad faith. See WIPO Overview 3.0, section 3.2.1.

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the

Policy.

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 name <cic.marketing> be transferred to Complainant.

/Ingrīda Kariņa-Bērziņa/

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: March 2, 2023