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Credit Industriel et Commercial S.A. v. Richard J. [2005] GENDND 1314 (11 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Credit Industriel et Commercial S.A. v. Richard J.

Case No. D2005-0569

1. The Parties

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

The Respondent is Richard J., California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <cicfilbanque.com> and <filbanquecic.com> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2005. On June 1, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On June 2, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 June 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2005.

The Center appointed Andrea Mondini as the sole panelist in this matter on July 6, 2005. 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 banking group with an international presence in numerous countries. The Complainant offers online banking services under the domain name <filbanque.com>.

The Complainant owns several trademark registrations comprising its acronym “CIC” such as French trademark No. 1358525 filed on June 10, 1986 for C.I.C. and the International registration No. 585098 filed on July 27, 1991 for CIC BANQUES. The Complainant also owns the French trademark No. 92402299 filed on January 22, 1992 for FILBANQUE. These trademarks are registered, among other, for banking and other financial services.

The disputed domain names were registered on December 2, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant contends:

- that the Respondent is associated with more than 700 domain registrations, many of which infringe trademark rights of French companies or celebrities;

- that these infringing domain names are parked through SEDO’s French version parking program;

- that the disputed domain names are a mere combination of the Complainant’s trademarks CIC and FILBANQUE and are therefore confusingly similar to the marks in which the Complainant has rights;

- that the Respondent has not rights or legitimate interests in respect to the disputed domain names;

- that the Respondent registered the disputed domain names in bad faith because it cannot be a random coincidence that he combined two trademarks of Complainant;

- that the Respondent is using the disputed domain names in bad faith by diverting internet users to a parking webpage linked to commercial websites of competitors of the Complainant in the field of banking and financial services, in order to generate revenues on a “pay per click” basis.

B. Respondent

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

6. Discussion and Findings

To have the disputed domain names transferred to the Complainant, it must prove each of the following (Policy, paragraph 4(a)):

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

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

(iii) that the Respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has shown that it owns rights in the word marks CIC and FILBANQUE and that the registrations of these trademarks predate the registration of the disputed domain names.

The disputed domain names combine the identical trademarks CIC and FILBANQUE. Domain names consisting of a mere combination of two trademarks must be considered as confusingly similar to such trademarks (Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118).

The Panel thus finds that both disputed domain names are confusingly similar to the trademarks held by the Complainant.

B. Rights or Legitimate Interests

The Respondent has not filed a Response, and there is nothing in the file suggesting that the Respondent might have any rights or legitimate interests in the disputed domain names. Based on the case file, the Panel is convinced that the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain names in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the holder’s website or location or of a product or service on the holder’s website or location.

It cannot be by coincidence that the Respondent combined two trademarks of the Complainant when registering the disputed domain names: considering that the Respondent linked the disputed domain names to commercial websites of companies who compete with the Complainant in the field of banking and financial services, it is obvious that the Respondent is aware of both the Complainant and its activities (see Crédit Industriel et Commercial S. A., Banque Scalbert Dupont S. A. v. Laporte Holdings, Inc., WIPO Case D2004-1110). The Complainant has shown that the Respondent is using the disputed domain names to divert internet users to a parking webpage linked to commercial websites of competitors of the Complainant in order to generate revenues on a “pay per click” basis. The Panel thus finds that the Respondent registered and used the disputed domains in bad faith.

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 names, <cicfilbanque.com> and <filbanquecic.com>, be transferred to the Complainant.

Andrea Mondini
Sole Panelist

Dated: July 11, 2005