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ACCOR v. Brigit Klostermann [2005] GENDND 644 (8 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Crédit Industriel et Commercial S.A v. Yu Ming

1. The Parties

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

The Respondent is Yu Ming, Beijing, China.

2. The domain name and Registrar

The disputed domain name <cicbank.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2005. On April 27, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 27, 2005, Go Daddy Software 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 May 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for filing the Response was May 22, 2005. The Response was filed with the Center by e-mail on May 22, 2005.

The Center appointed Torsten Bettinger as the sole Panelist in this matter on May 25, 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 registered under the laws of France. It was founded in 1954. It comprises eleven regional banks and has international branches in 39 countries, inter alia in Beijing and Shanghai, China.

The Complainant is the registered proprietor of the following trademarks:

- French trademark registration No. 1 358 524 “CIC”, registered on June 6, 1976

- French trademark registration No. 1691423 “CIC + Design”, registered on September 1991

- French trademark registration No. 168 099 “CIC + Design”, registered on July 31, 1991

- French trademark registration No. 168 2713 “CIC BANQUES” registered on July 24, 1991

- International trademark registration No. 585098 “CIC BANQUES” registered in China on April 10, 1992

- International trademark registration No. 585099 “CIC + Design”, registered in China on April 10, 1992

The Complainant is the registrant of the following domain names:

<cic.fr>, <cic-banques.fr>, <cic-bancques.fr>, <cicbanques.fr>, <cic-banques.com>, <cic-banques.net>, <cic-banques.org>, <cic-banques.biz>, <cic-banques.info>, <cicbanques.info>.

The Respondent is a private individual domiciled in Beijing, China. Respondent uses the domain name <cicbank.com> for a website that contains links to a variety of commonly searched subjects such as “Versicherungen“, “Krankenversicherung”, “Autoversicherung”, “Lebensversicherung”, “Rentenversicherung” etc.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.

In reference to the element in paragraph 4 (a)(i) of the Policy, the Complainant asserts that the domain name <cicbank.com> incorporates fully the Complainant’s trademark, the sole difference being the addition of a descriptive term bank and the top-level domain “.com”. The Complainant therefore contends that the domain name is confusingly similar to the Complainant’s “CIC” trademark registrations.

Complainant alleges that Respondent has no legitimate interest in the domain name because Respondent has no trademark rights in, or license to, use the Complainant’s mark “CIC” and that there is no indication that the Respondent was known by the name “CIC” prior to registration of the domain name.

Complainant also contends that the domain name has been registered and is being used in bad faith. In support of this assertion, the Complainant argues that Respondent “could not have ignored” the Complainant’s rights on the trademark “CIC” when he registered the disputed domain name.

Complainant contends that the Respondent uses registered the domain name to create confusion among consumers and that Respondent’s use of the website to divert, for commercial gain, Internet users to a website on which several hyperlinks are displayed which lead to websites offering banking and financial services, is clear evidence of bad faith.

Complainant also points to the fact that Respondent has registered a number of domain names comprising of misspellings of names of well-known businesses and personalities, including <theguadian.com>, <spideman2.com>, <qoutemehappy.com>, <facepatry.com> and <gwenstephani.com>.

B. Respondent

Respondent filed a Response by email dated May 22, 2005 which was administratively deficient in a number of respects, including (i) the Response was not submitted in electronic format as required by ICANN Rule 5(b); (ii) the Response was not submitted in one original and four copies, as required by ICANN Rule 5(b) and Supplemental Rule 3(c); (iii) the Response did not specify a preferred address for case-related communications to the Respondent or its authorized representative as required by ICANN Rule 5(b)(ii); (iv) the Response does not specify a preferred method of communication for case-related communications to the Respondent or its authorized representative as required by ICANN Rule 5(b)(iii); (v) the Response does not contain the full statement specified in ICANN Rule 5(b)(viii); and (vi) the Response has not been signed by the Respondent or its authorized representative as required by ICANN Rule 5(b)(viii).

Respondent contends that “there are companies which more closely match cicbank, such as <bankcic.com> and that this company would have more rights to the name than the Complainant”. He also contends that the Complainant is not well known outside France and that he was not aware of the Complainant at the time he registered the disputed domain name and that the use of the domain name was legitimate.

6. Discussion and Findings

A. Procedural Aspects

The first issue is whether the Panel will consider the administratively deficient Response of May 22, 2005.

There is no provision regulating the consequences for responses that do not meet the formal requirements comparable to Paragraph 4(b) of the UDRP Rules for complaints. Whether and under what conditions responses are to be taken into account if they do not satisfy the formal requirements of Paragraph 5 of the UDRP Rules has been determined differently by different panels. The majority of the Panelists assume that they are entitled at their discretion to determine whether to consider responses that are formally incorrect (Young Genius Software AB .v. MWD, James Vargas, WIPO Case No. D2000-0591 - <younggenius.com>).

A response has been taken into account inter alia if

- the respondent wrongly submitted the response to the complainant and ICANN but not to the dispute resolution provider (See Oberoi Hotels Pvt. Ltd. v. Arun Jose, WIPO Case No. D2000-0263 - <tridenthotels.com>)

- the response was on time but was submitted in handwriting (see Cable News Network LP, LLLP v. Manchester Trading, National Arbitration Forum Case No. FA 93634 - <cnnheadlinenews.com>)

- the response exceeded the limit on the number of words imposed by the Supplemental Rules (See Süd-Chemie AG v. tonsil.com, WIPO Case No. D2000-0376 – <tonsil.com>)

- the response was submitted by fax (See Veritas DGC Inc. v. The Collectors Source, National Arbitration Forum Case No. FA 94425 - veritasdgc.org)

Account was not taken of a response that was merely submitted by e-mail (See William Hill Organisation Limited v Seven Oaks Motoring Centre WIPO Case No. D2000-0824 - williamhill.org).

In this case, the Panel has determined that it will decide this case without reference to the uncertified Response as the person who submitted the Response has not only failed to certify that the information contained in its Response is complete and accurate, but it has also failed to sign the Response.

In any event, the decision in this case would have been the same had the panel considered the uncertified Response when making its decision.

B. Identical or Confusingly Similar

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, such as the "Sleekcraft factors" – AMF Inc. v. Sleekcraft Boats, [1979] USCA9 691; 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 <guiness.com>, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 <ansellcondoms.com>, Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843 <dixons-online.net>, AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327 <attinternet.com>, <attuniversal.com>, BWT Brands, Inc. and British Am. Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention WIPO Case No. D2001-0505).

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.

It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429)

The Panel thus finds that the domain name <cicbank.com> is confusingly similar to the trademark “CIC” in which the Complainant has exclusive rights.

C. Rights or Legitimate Interests

Although paragraph 4(c) of the Policy requires the Complainant to prove the presence of this element, Panels in a number of cases found that once a Complainant makes a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to, or legitimate interests in the domain name. The Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name.

The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.

The Complainant has not yet licensed or otherwise permitted the Respondent to use any of its trademarks or business names and has not permitted the Respondent to apply for or use any domain name incorporating the trademark.

Before notice to the Respondent of the dispute, there is no evidence of its use, 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.

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.

Respondent’s use of the domain name to divert Internet users to its website capitalizing on the Complainant’s mark is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.

Further, nothing in the record suggests that the Respondent trades under the domain name or the name “CIC BANK”, or is commonly known by said domain name or the name “CIC BANK”, or is making a legitimate non-commercial or fair use of the domain name.

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied

D. Registered and Used in Bad Faith

The Panel also agrees with the Complainant’s contention that the Respondent registered and is using the domain name <cicbank.com> to attract, by creating a likelihood of confusion with the complainant's mark, for commercial gain Internet users to his website.

The Complainant’s trademark is long established and used in China where the Respondent is domiciled. The words “CIC BANK” connote a connection with a bank. The Respondent is not a bank, but is using the <cicbank.com> domain name to operate a website which contains links to a variety of commonly searched subjects such as “Versicherungen“, “Krankenversicherung”, “Autoversicherung”, “Lebensversicherung”, “Rentenversicherung” etc.

The Panel notes that, typically, the owner of a website such as the Respondent’s which contains various links to other sites receives click-through fees for diverting Internet users to the advertisers.

In the absence of any explanation why the Respondent uses the disputed domain name for such activities there is ground on which the Panel can conclude that the Respondent intentionally attempted to trade off the value Complainant has built in its mark “CIC” and, by creating a likelihood of confusion with the Complainant’s mark, to attract, for commercial gain, Internet users to his website.

The Panel therefore concludes that Respondent registered and is using the domain name <cicbank.com> in bad faith and that the requirement of the paragraph 4(a)(iii) of the Policy is satisfied.

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 name <cicbank.com> be transferred to the Complainant.

Torsten Bettinger
Sole Panelist

Date: June 12, 2005