DISCUSSION AND FINDINGS
This is a mandatory administrative proceeding pursuant to Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) of the Internet Corporation for Assigned Names and Numbers ( “ICANN”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the CAC Supplemental Rules.
A. Administrative deficiency
By notification dated June 12, 2009 and in accordance with paragraph 4 (b) of the Rules, the CAC notified the Complainant that the Complaint was administratively deficient in that:
(1) According to the WHOIS database of the Registrar , the Respondent as named in the Complaint was not the current holder of the domain name; and
(2) According to the ICANN Internic the Complainant had partly incorrectly identified the Registrar in that the legal form was missing and the address was slightly different.
On June 12, 2009 the Complainant filed an Amended Complaint and the CIC determined that in view of the amendments so made, the Complaint should be forwarded to the Respondent.
The Panel has reviewed all of the above matters and makes a finding that within the meaning of paragraph 4(b) of the Rules, the administrative deficiencies have been corrected and that this matter has proceeded properly to the Panel in accordance with the Policy and the Rules.
B. Substantive matters
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the onus is on the complainant to make out its case and past UDRP panels have consistently said that a complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <cicbrasil.com> is confusingly similar to the CIC trademarks for the following reasons. First, the domain name consists of the entirety of the CIC trademarks to which the Respondent has added the word "brasil", which can only be taken to be the country Brazil where the Complainant conducts some of its extensive overseas operations. In this regard it has long been held by UDRP panels, as the Complainant submits , that the mere addition of a geographical term does not eliminate confusing similarity that is otherwise present, as it is in the present case. Some of the cases where this principle has been decided are those cited by the Complainant, namely WIPO Case No. D2000-0076 InfoSpace.com, Inc. v. Hari Prakash (<indianinfospace.com>); WIPO Case No. D2001-0171, Koninklijke Philips Electronics NV v. Gopan P.K. (<philipsindia.net>); WIPO Case No. D2000-1633, eBay Inc. v. Sunho Hong (<ebaykorea.com>); and WIPO Case No. D2000-0553, AT&T Corp. v. WorldclassMedia.com (<attmexico.com> and <att-latinamerica.com>). That principle clearly applies to the present case because internet users would naturally believe that the domain name <cicbrasil.com> is linked to the Complainant’s banking activities carried on under the name and trademark CIC in Brazil . Secondly, the confusion thus engendered between the CIC Trademarks and the disputed domain name is reinforced by the email address of the Complainant in Brazil, cicbrasil@brasil-cic.com.br. Thirdly, the gTld ".com" which is part of the domain name is regularly understood to be ignored for the purposes of the present analysis and cannot negate confusing simiality : see WIPO Case D2006-1268 Credit Industriel et Commercial SA v. XUBO regarding <cicbanques.com>.
The Complainant has also adduced evidence that the Panel accepts that it is the registered owner of the CIC trademarks and as such has rights in them.
Accordingly, the domain name is confusingly similar to the Complainant’s trademarks and the Complainant has thus shown the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [respondent] of the dispute, your use of, 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; or
(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if a respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail. It is also well-established that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests and that when such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent cannot do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Panel, after considering all of the evidence in the Complaint, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name <cicbrasil.com>. That prima facie case is made out from the following considerations.
The Respondent chose for the disputed domain name, without the Complainant’s authorization, the Complainant’s well-known trademark CIC which it has had registered since 1976 and used as its business name for many years prior to that as a leading French and international banking company. Secondly, as well as the trademark being a prominent one, it is also an unusual name, having clearly been invented and created as an acronym, suggesting that its significance would not have gone unnoticed at the time of its registration by the Respondent as part of the domain name. Thirdly, the evidence shows that the Respondent is not associated with a business enterprise or a trademark in the name “CIC” or its combination with the term BRASIL; the Respondent is not in any way related to the Complainant’s business, is not one of its agents and does not carry out any activity for or have any business with it. Moreover, the Complainant has never given any authorization to the Respondent or any other entity to make any use, nor apply for registration of the domain name in issue. These facts give rise to the prima facie case made out by the Complainant.
The Respondent has not filed a Response or made any other answer to the claims of the Complainant and is in default. Accordingly, the prima facie case has not been rebutted and the Complainant has made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 of a 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 on-line 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 site or location.
The Panel finds that the Complainant has shown that the Respondent registered and used the disputed domain name in bad faith both in general and in particular because the Respondent’s conduct puts the case squarely within paragraph 4(b) (iv) of the Policy and probably within other provisions of paragraph 4 (b).That is so for the following reasons.
Because of the fame and strong reputation of the CIC trademarks, the Respondent must have been aware of the existence of the Complainant and its reputation when it registered the disputed domain name. In particular, as the Complainant submits, the Respondent could not have made randomly the association of the CIC trademarks and the geographical term “BRASIL”, when one of the Complainant’s foreign branches is in fact in Brazil. The Panel accepts the Complainant’s submission that it is highly likely that the Respondent chose such combination of words to invoke the concept of the Complainant and its presence and activities in Brazil. By that means the Respondent, in registering the domain name deceptively and without any authority to do so, must be taken to have created a likelihood of confusion , with the intention of attracting current and potential customers of the Complainant looking for its services in Brazil and doing so in this misleading manner. Accordingly, the domain name was registered in bad faith.
As to the issue of use in bad faith, the evidence is that the domain name is pointing to a parking web page which generates revenue to the Respondent, through a Pay-Per-Click service. This leads to the conclusion that the Respondent registered the domain name to attract, for commercial gain, internet users to its web site. Moreover, by clicking on these links, internet users are redirected to a webpage in which sponsored links to the websites of competitors of the Complainant are offered. These facts bring the case squarely within paragraph 4(b)(iv) of the UDRP, i.e. “by using the domain name, ( the Respondent) ... intentionally attempted to attract, for commercial gain, Internet users to (its) web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of (its) web site or location or of a product or service on (its) web site or location”.
As the Complainant submits, such conduct has been held by previous UDRP panels to constitute bad faith use in cases such as WIPO Case No. D2008-0910 The Dow Chemical Company and Flexible Products Company v. Domain Discreet/ Commercial Thermal Solutions Inc. (<dowfrothpak.com> and <frothpakfoam.com>) and NAF Case No. FA0807001215564 UnitedHealth Group Incorporated v. Domain Discreet (<pacificaresignaturesavings.com>); WIPO Case No. D2007-1143, Owens Corning v. NA (<pinkbatts.com>) and it should be so held in the present case.
Accordingly, the Complainant has shown the third of the three elements that it must establish.
|