WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Crédit Industriel et Commercial S.A. v. Khard Kolline

Case No. D2021-4378

1. The Parties

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

The Respondent is Khard Kolline, Denmark.

2. The Domain Name and Registrar

The disputed domain name <cic-bnqag.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2021. On December 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 2021, 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 sent an email communication to the Complainant on January 5, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

The Registrar confirmed that the language of the Registration Agreement for the disputed domain name is Russian. On January 5, 2022, the Center sent an email communication to the Parties in English and Russian regarding the language of the proceeding. The Complainant filed an amended Complaint incorporating the request for English as the language of the proceeding on January 6, 2022. The Respondent did not comment on the language of the proceeding.

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, in both Russian and English and the proceedings commenced on January 12, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default in both Russian and English on February 8, 2022.

The Center appointed Kateryna Oliinyk as the sole panelist in this matter on February 17, 2022. 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 French deposit bank established in 1859 by an imperial decree signed by Napoleon III. It was nationalized in 1982 and re-privatized in 1997. It currently has more than 4.7 million clients with more than 2,000 agencies throughout France and 38 abroad. The Complainant operates a website providing information about, and access to, its services located at “www.cic.fr”, through which its clients can be informed about its services and also get online access to their bank accounts for further management.

The Complainant holds trademark registrations that comprise the element CIC in various jurisdictions, including the following:

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

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

- European Union Trade Mark No. 11355328, CIC, word & device, registered on March 26, 2013 in classes 9, 16, 35, and 36; (collectively the “CIC trademark”).

The Complainant is also the registrant of the following domain names:

- <cicbanques.com>, registered on April 5, 2006;

- <cicbanques.org>, registered on November 21, 2007;

- <cicbanques.net>, registered on November 21, 2007; and

- <cicbank.com>, registered on January 30, 2004.

The Complainant also holds an individual series of CIC BANQUES trademark registrations.

The disputed domain name <cic-bnqag.com> was registered on November 11, 2021, and initially resolved to a website offering identical financial services, as the Complainant, under the name “CIC BANQUE”, which pretends to be the official website of CIC BANQUE. A “login page” on this website was activated to collect personal data through a form.

On December 9, 2021 the Complainant sent the takedown notice to the company providing the hosting services for the disputed domain name.

As of the filing date of the Complaint, the website is inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s CIC trademark. According to the Complaint, the disputed domain name reproduces the Complainant’s trademark CIC in its entirety. The use of the generic Top-Level Domain (“gTLD”) “.com” does not change the result in the confusing similarity analysis, as it is viewed as a standard registration requirement. Addition of the element “bnqag” which can be divided into “bnq” referring to the short version of “banques” and the “ag” as a meaningless element, does not preclude confusing similarity.

The Complainant contends that the Respondent has no connection to, or affiliation with the Complainant, and that the Respondent has not received any authorization, license, or consent, whether express or implied, to use the Complainant’s trademark in the disputed domain name, or in any other manner.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant claims that the Respondent registered the confusingly similar disputed domain name to offer services in direct competition with the Complainant and creating the malicious website which may be used for the phishing purposes.

Such initial use of the disputed domain and further passive holding of the disputed domain name after sending the takedown notice by the Complainant are neither a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor legitimate noncommercial or fair uses pursuant to paragraph 4(c)(iii) of the Policy.

The Complainant contends that the Respondent has registered the disputed domain name precisely because he knew the well-known character of the CIC trademark.

The Complainant contends that the disputed domain name was registered and used in bad faith as the disputed domain name initially resolved to a website offering financial services, as the Complainant, under the name “CIC BANQUE” and pretends to be one of the official websites of the group CIC, attempting to impersonate the Complainant. A “login page” on this website was moreover activated to collect personal data.

The Complainant further contends that the passive use of the disputed domain name should be considered as bad faith use.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural Issue – Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding (see, e.g., Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 stating that “[o]ne important consideration of this issue is the fairness to both Parties in their abilities to prepare the necessary documents and protect their own interests”).

The Center has provided both parties with an opportunity to comment on the language of the proceedings by sending both Parties a Language of Proceeding notification, as well as other communications in both Russian and English. The Complainant has provided submissions requesting English being the language of the proceeding.

The Panel notes that both Parties have been given fair opportunities to present their cases, the Center allowed the Complaint in English, and allowed the Respondent to produce the Response either in English or Russian, and appointed the Panel familiar with English and Russian languages. All the case-related communication the Center issued were provided in both Russian and English.

The Respondent did not submit a response to the Complaint.

The Panel takes due note that initially the content published on the website under the disputed domain name has been adapted to an English speaking audience and this factor indicates that the Respondent, based on the balance of probabilities, is familiar with the English language and can understand it.

The Respondent’s address is in Denmark.

In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2. Substantive Discussion

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

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

(ii) that the Respondent has no right or legitimate interest in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

Ownership of a nationally or regionally registered trademark serves as prima facie evidence that the Complainant has trademark rights for the purposes of standing to file this Complaint. See section 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant submitted evidence that the CIC trademark has been registered in France and the European Union. Thus, the Panel finds that the Complainant’s rights in the CIC trademark have been established pursuant to the first element of the Policy.

The second stage of the test under the first element simply requires a visual and aural comparison of the disputed domain names to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy,see, e.g., WIPO Overview 3.0, sections 1.7 and 1.11.

Once the gTLD “.com” is ignored as a standard registration requirement, as reflected in section 1.11.1 of the WIPO Overview 3.0, the disputed domain name consists of the whole of the Complainant’s registered CIC trademark with the addition of a hyphen plus element “bnqag”.

Thus, the Panel finds that the Complainant’s CIC trademark is clearly recognizable within the disputed domain name.

As provided in section 1.8 of the WIPO Overview 3.0, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the CIC trademark in which the Complainant has rights.

The Panel therefore holds that the Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Based on the Complainant’s contentions, the Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its CIC trademark.

Based on the case records, the Panel established that the Respondent has not been commonly known by or associated with the domain name, and there is no similarity or association between the name of the Respondent and the disputed domain name, which could demonstrate rights or legitimate interests of the Respondent. (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Respondent registered the confusingly similar disputed domain name to offer services in direct competition with the Complainant and creating the malicious website which may be used for the phishing purposes.

There is nothing in the record to indicate that Respondent operates a legitimate business, and its collection of information via the website at the disputed domain name is likely linked to phishing attempts.

Furthermore, the nature of the disputed domain name, including additional terms, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

Thus, in the Panel’s view, the use of the disputed domain name by the Respondent does not constitute either bona fide use or a legitimate non-commercial or fair use of the disputed domain name, as it is clearly used to target the Complainant and trade off the goodwill of the CIC trademark.

Prior UDRP panels have found that the passive holding of a disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See, by way of example, Skyscanner Limited v. WhoisGuard Protected, WhoisGuard, Inc. / petrov petya, WIPO Case No. DCC2020-0003.

In light of the above, the Complainant made a prima facie case that the Respondent lacks rights to or legitimate interests in the disputed domain name. The Respondent did not submit any evidence or arguments to challenge the Complainant’s assertions.

The Panel therefore holds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Policy establishes that, for purposes of paragraph 4(a)(iii) of the Policy, bad faith registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation or endorsement of respondent’s website or location, or of a product or service on respondent’s website or location. See Policy, paragraph 4(b)(iv).

As it was established above by the Panel, the disputed domain name was registered on November 11, 2021 and initially resolved to the website imitating the original Complainant’s website. Later on, the website was deactivated after the takedown notice sent by the Complainant.

Under section 3.3 of the WIPO Overview 3.0, the non-use of a domain name (including a “coming soon” page), would not prevent a finding of bad faith under the doctrine of passive holding. Previous UDRP panels have held that the passive holding of a domain name that incorporates a well‑known trademark may confirm the bad faith use of a disputed domain name (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. See Andrey Ternovskiy dba Chatroulette v. WhoisGuard Protected, WhoisGuard, Inc. / Armando Machado, WIPO Case No. D2018-0082.

The Complainant has produced evidence showing that it owns registrations for the CIC trademark, with dates of registration that significantly precede the date of the registration of the disputed domain name.

In addition, the Complainant has credibly submitted that over the years it has developed substantial goodwill in the CIC trademark. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and goodwill in its trademark near worldwide. See, e.g., Credit Industriel et Commercial S.A., Banque Fédérative du Credit Mutuel v. Headwaters MB, WIPO Case No. D2008-1892 saying that “the Complainants have previously demonstrated the strong reputation and the well-known character of their marks ‘CM’, ‘CIC’ and ‘CM-CIC’ for banking and financial services”; Credit Industriel et Commercial S.A v. Jeongyong Cho, WIPO Case No. D2013-1263; Credit Industriel et Commercial v. Mao Adnri, WIPO Case No. D2013-2143 (“The Complainant has been using the CIC trademark for decades in the area of banking and financial services. The Panel finds that this mark, owned by the Complainant, is a well-known one and the Complainant has rights in several CIC trademarks”).

Furthermore, according to paragraph 3.1.4 of the WIPO Overview 3.0, the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

The Respondent has failed to submit a response or to provide any evidence of actual or contemplated good faith use of the disputed domain name.

The Complainant submits that is well-settled that bad faith can be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. The Panel endorses that view. See, e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

As the Panel established that the risks of phishing or other illegal activity cannot be precluded in this case as the website under the disputed domain name collects personal data of its visitors, the use of the disputed domain name for illegal activity is also considered abusive registration of the disputed domain name under the Policy. See, e.g., WSI Holdings Ltd. v. WSI House, WIPO Case No. D2004-1089 (“Respondent appears to be engaged in “phishing” for mistaken potential employees of the Complainant […] Respondent (1) has adopted a confusingly similar domain name, (2) it has used the trade dress of the Complainant’s website, and (3) it has sought to attract users to its site by creating confusion between its site and the Complainant’s. It has clearly engaged in activity which fulfils the bad faith requirements of paragraph 4(b)(iv) of the Policy.”)

Taking the above facts into consideration, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In light of the aforesaid, the Panel establishes that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, 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.

In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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-bnqag.com> be transferred to the Complainant.

Kateryna Oliinyk
Sole Panelist
Date: March 17, 2022