WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Crédit Industriel et Commercial S.A. v. Super Privacy Service LTD c/o Dynadot / S Jon Grant

Case No. D2020-1099

1. The Parties

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

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / S Jon Grant, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ecic.online> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2020. On May 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2020, 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 and contact information in the Complaint.

The Center verified that the 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 May 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2020.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on June 20, 2020. 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 the oldest deposit bank in France, having more than 4.7 million clients. The Complainant owns the trademark CIC, which is registered in France and abroad, such as the European Union Trade Mark No. 005891411, registered on March 5, 2008. The reputation of the Complainant’s trademark has been recognized by several previous UDRP panels.

The disputed domain name has been pointed to a parking site with links in French to providers of financial services. Currently the disputed domain name does not resolve to any active website.

The disputed domain name was registered on April 8, 2020.

5. Parties’ Contentions

A. Complainant

The Complainant’s trademark CIC is included in the disputed domain name in its entirety. When a domain name wholly incorporates a registered trademark, it is sufficient for establishing confusing similarity between the trademark and the disputed domain name. The addition of the letter “e” does not remove similarity between the Complainant’s trademark and the disputed domain name as it refers to the online presence of the Complainant.

The Respondent is not affiliated with the Complainant and the Complainant has not given the Respondent permission, authorization or license to use the Complainant’s trademark in any manner. The Respondent is not commonly known by the disputed domain name, and the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.

The Complainant’s trademark is well known for financial services, which has been confirmed by several previous UDRP panels. Therefore, the Respondent must have been aware of the Complainant when registering the disputed domain name.

The disputed domain names resolves to a parking website with links in French to providers of financial services and thus to competitors of the Complainant. The disputed domain name is used to divert Internet traffic to the Respondent’s website for financial gain.

B. Respondent

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

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint or not. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.

See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

As the disputed domain name includes the Complainant’s trademark in its entirety added merely by the letter “e”, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and hence the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.

It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0.

The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.

Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant’s trademark. The disputed domain name includes the Complainant’s trademark in its entirety added with the letter “e”. The letter “e” refers to the online presence of the Complainant. This association is reinforced by the generic top level domain “.online”. Hence the overall impression of the disputed domain name is that it is used to offer the Complainant’s services online. See section 2.5.1 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that 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 a domain name in bad faith:

“(i) circumstances indicating that [the respondent 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 respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent 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 respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or

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

The Panel agrees with previous UDRP panels and finds that the Complainant’s trademark is well known for financial services. It follows that the Respondent must have been aware of the Complainant and its trademark when registering the disputed domain name.

The Complainant has shown that the website to which the disputed domain name resolved was a
pay-per-click (“PPC”) website containing links to other providers of financial services. A PPC website is designed to generate income to the holder of the domain name or a third party based on the number of clicks it generates. This, coupled with the fact that the links offer services competing with those of the Complainant, means that the Respondent did not have any bona fide or legitimate purpose to use the disputed domain name. The current apparently inactive use of the disputed domain names does not change the Panel’s findings.

By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’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 Respondent’s website. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

Moreover, when looking at the totality of the circumstances in this case, the Panel finds that the Complainant’s trademark has been used for many years, that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Respondent has also not put the disputed domain name into any legitimate use.

Therefore, the Panel finds that the third element of the Policy is fulfilled.

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 <ecic.online> be transferred to the Complainant.

Tuukka Airaksinen
Sole Panelist
Date: July 6, 2020