On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 100084
Time of Filing 2009-07-24 08:39:54
Disputed domain name PAIEMENT-CIC.COM
Case Administrator
Name Tereza Bartošková
Complainant
Organization CREDIT INDUSTRIEL ET COMMERCIAL SA
Authorized Representative
Organization Meyer & Partenaires
Respondent
Organization OSED WIRELESS
A summary of this Decision is hereby attached in English as an Annex.
Other Legal Proceedings
The Panel is not aware of any other legal proceedings currently pending.
Factual Background
The Complainant, CREDIT INDUSTRIEL ET COMMERCIAL, better known under the acronym “CIC”, is a French banking group which origins can be traced back to 1859.

The Complainant has an international network through its branches present all over the world (Europe, Africa, Latin America, North America and Asia).

Since the Complainant created its activity, it has used the acronym “CIC” as its trade name and trademark.

The Complainant communicates with its users through the internet portal <cic.fr> since 2000.

The Complainant enjoys trademark protection for the word CIC through the following French, Community and International trademarks (for which it provided adequate proof of registration):

- French trademark CIC No. 959999 registered on June 16, 1976 (renewed);

- CTM trademark CIC No. 005891411 registered on March 5, 2008;

- International trademark CIC Union Européenne de CIC No. 582446 registered on February 18, 1992 (renewed).

The Complainant is also the owner of the following trademarks containing the word CIC:

- French trademark PAIEMENT CIC No. 99808220 registered on April 25, 2000;

- French trademark CIC BANQUES No. 1682713 registered on June 19, 2001;

- International trademark CIC BANQUES No. 585098 registered on April 10, 1992 (renewed);

- French trademark CM-CIC No. 3267901 registered on June 18, 2004;

- French trademark CIC LEASE No. 99809813 registered on February 11, 2000;

- French trademark CIC-CASH No. 3037280 registered on June 15, 2001.

The Complainant has also registered a large number of domain names incorporating its trademarks and notably he registered the domain names <paiement-cic.eu>, <paiement-cic.fr> and <paiement-cic.info>.
Parties' Contentions
A. Complainant
1. Identity or confusing similarity of the domain name with the trademarks “CIC” and “PAIEMENT CIC”.

Firstly, the Complainant points out that the gTLD “.com” should not be taken into consideration in the examination of the confusing similarity with its trademarks.

Secondly, the disputed domain name reproduces entirely its trademark CIC associated with the generic French word “paiement” and a dash. In the Complainant’s view, the addition of a generic term does not eliminate the identity or at least the confusing similarity between its trademark and the litigious domain name. On the contrary, this term may describe one of the Complainant’s main activities and thus might increase the risk of confusion.

Moreover, the adjunction of a dash does not have any incidence on the confusing similarity.

Furthermore, the Complainant also claims that the domain name is identical to its trademark PAIEMENT CIC. Indeed the disputed domain name reproduces this trademark in its entirety.

2. Respondent has no rights or legitimate interests in respect of the domain name

The Respondent is not related in anyway to the Complainant’s business. He is neither one of its agents, nor does he carry out any activity for him.

The Respondent is not known under the name “CIC” or “PAIEMENT CIC”.

No licence or authorization has been granted to the Respondent to make any use or to register the domain <paiement-cic.com>.

Moreover, the Respondent has not engaged in any action that shows that he has rights or legitimate interests in the disputed domain name.

3. Bad faith registration and use

The Complainant considers that its is difficult to believe that the Respondent could have ignored the CREDIT INDUSTRIEL ET COMMERCIAL and its international reputation in the field of financial and banking services at the time he registered the disputed domain name.

All the more so, given the fact that the Respondent is apparently located in France, where the Complainant originates.

The Complainant believes that given its reputation, the Respondent must have been aware of the trademark PAIEMENT CIC because otherwise he could not have chosen this combination of words randomly.

Concerning use in bad faith, the Complainant points out that the domain name was used to divert internet users to a fake website in order to misappropriate funds, and collect data such as credit cards numbers. The Complainant has duly reported this phishing attack to the competent authorities.

Since the Complainant’s intervention, the disputed domain name has been inactive.

The Complainant also highlights the fact that the Respondent is in breach of its registration agreement because he has provided false contact information.
B. Respondent
The Respondent did not answer to the Complainant’s complaint and is therefore in default.
Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith


A. Identical or Confusingly Similar

The first element which the Complainant must prove is that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

The Complainant has provided the Panel with an exhaustive list of its trademark registrations and adequate proof of their registration and renewal. Therefore, the Panel considers that the Complainant enjoys trademark rights, in particular with respect to the French trademark CIC No. 959999 registered on June 16, 1976 (renewed) and to the French trademark PAIEMENT CIC No. 99808220, registered on August 17, 1999 (renewed).

A further aspect that needs to be assessed is whether there is confusing similarity between the trademark and the disputed domain name. The disputed domain name fully incorporates the Complainant’s trademark CIC associated with the generic term “paiement”.

In light of previous UDRP decisions, the Panel considers that the mere addition of a common French word, such as “paiement”, does not alleviate the likelihood of confusion (CAC Decision No.100053, Enterprise Rent-a-Car Company v. Blupea c/o Janepanas, Sirinarin).

All the more so given the nature of this word which can be directly linked to the Complainant’s trademark and products, and therefore may reinforce the likelihood of confusion in the users minds. In fact the word “paiement” is specific to the banking jargon.

Moreover, in previous UDRP decisions the mere incorporation of a trademark in its entirety has been found to be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. (AT&T Corp. v. William Gormally, WIPO Case No. D2005 0758 and Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000 0253).

It is also possible to find identity between the domain name in dispute and the above mentioned trademark PAIEMENT CIC. The disputed domain name reproduces entirely this trademark which makes the domain name identical to the Complainant’s trademark.

The only difference between the trademarks CIC and PAIEMENT CIC and the disputed domain name is the adjunction of the gTLD “.com”. Such an adjunction is due to the current technical requirements of the domain name system. Therefore, this inclusion should not be taken into account when evaluating the identity or similarity between the disputed domain name and the Complainant’s trademark.

As a result, the Panel finds that the disputed domain name is identical or confusingly similar to the trademarks CIC and PAIEMENT CIC owned by the Complainant. Therefore, the Panel considers that the condition set out by paragraph 4(a)(i) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out examples of what a respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.

“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you 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 (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 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.”

The Panel believes on the record that there is no relationship between the Respondent and the Complainant and that the Respondent is neither a licensee of the Complainant nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.

Furthermore once a complainant has made a prima facie case that a respondent lacks a right or legitimate interest in a domain name, the burden shifts to the respondent to prove its right or legitimate interest in the domain name.

In the present case, the Panel finds that the Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests with respect to the disputed domain name.

The Panel’s opinion is further corroborated by the lack of a Response by Respondent in these proceedings as well as the Panel’s findings further below. Consequently, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, shall be evidence of the registration and use of the domain name 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 Complainant who is the owner of the trademark or service mark or to a competitor of 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 using 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 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.

Both conditions are cumulative; consequently, Complainant must clearly show that: (a) the domain name was registered by Respondent in bad faith and, (b) the domain name has been used by Respondent in bad faith.

a. Registered in bad faith

The domain name is composed by the Complainant’s trademark CIC and the mere addition of the descriptive term “paiement” and also reproduces in its entirety the Complainant’s trademark PAIEMENT CIC.

The Complainant has provided evidence of the reputation of the trademark CIC due to its longstanding and widespread use in France and abroad. The Complainant is particularly known in France, where the Respondent is located, because it is where its business is rooted.

Moreover, the Panel believes that CIC is a famous trademark that enjoys a worldwide reputation and this assertion has been confirmed by previous CAC decisions (CAC Decision No. 100079, Credit Industriel et Commercial SA v. Grube Associados, Vilnor Grube, CAC Decision No. 100077, Credit Industriel et Commercial SA v. Chronicle).

In previous UDRP decisions, Panels have considered that in certain circumstances when a trademark is famous, the respondent’s bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004 1088).

As a consequence, it seems fair to presume that the Respondent knew or must have known the existence of the Complainant’s trademark and registered the domain name on purpose.

Moreover, given the fact that the Respondent used the disputed domain name to develop a phishing activity, namely an activity aiming at recovering data such as contact information and credit card numbers, this shows that the Respondent was well aware of the Complainant’s reputation and knew that in registering this domain name he would have easily attracted internet users to its website.

Convincing evidence might also be drawn from the fact that the Respondent provided false contact information when he registered the domain name. In fact, the address he provided was blatantly erroneous. The Panel believes that the Respondent decided to hide on purpose its true address because he had the intention to engage in a fraudulent activity and did not want to be caught.

These findings lead the Panel to conclude that the disputed domain name has been registered in bad faith by the Respondent.

b. Used in bad faith

In order to meet the requirement of paragraph 4(a)(iii) of the Policy, it is not sufficient to prove that the disputed domain name is registered in bad faith, it is also necessary to prove that the disputed domain name is being used in bad faith.

The Respondent’s domain name leads to an inactive website. However, the Complainant has provided sufficient proof concerning the content present on the former website. It was resolving to a website apparently belonging to a fake company, Sexy Live, and it was leading to an online platform which enabled online transactions. Internet users could use this platform to make online transaction through the Complainant’s CM-CIC payment’s solution. The website was a phishing scam put in place in order to retrieve personal data, credit numbers and code. In the Panel’s opinion this clearly constitutes use in bad faith.

Not only does the Respondent’s registration divert Internet users to the litigious website taking advantage of the Complainant’s goodwill and reputation, but it also threatens to harm and tarnish this reputation by ambushing internet users into its phishing scheme.

As a result, the Panel finds that the disputed domain name has been registered and used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.

Decision
For the reasons set out above, the Complaint is Accepted
and the disputed domain name(s) is(are) to be
PAIEMENT-CIC.COM Transferred to CREDIT INDUSTRIEL ET COMMERCIAL SA
Panellists
Name Nathalie Dreyfus
Date of Panel Decision 2009-09-08
Annexes
Annex: English summary of the Panel Decision
The Complainant, CREDIT INDUSTRIEL ET COMMERCIAL, better known under the acronym “CIC”, is a French banking group which origins can be traced back to 1859.
Since the Complainant created its activity, it has used the acronym “CIC” as its trade name and trademark.

The Complainant has proved that he has trademark rights in the words CIC as well as PAIEMENT CIC.

The disputed domain name was used to divert internet users to a fake website in order to misappropriate funds, and collect data such as credit cards numbers. The Complainant has duly reported this phishing attack to the competent authorities. Since the Complainant’s intervention, the disputed domain name has been inactive.

The Panel finds that the disputed domain name is identical to the Complainant’s trademark PAIEMENT CIC. The Respondent does not have any rights or legitimate interests in the domain name because he is neither a licensee of the Complainant nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.

Concerning registration and use in bad faith, the Panel believes that the Respondent knew or must have known the existence of the Complainant’s trademark and registered the domain name on purpose. All the more so given the fact that he used the disputed domain name to develop a phishing activity. Convincing evidence might also be drawn from the fact that the Respondent provided false contact information when he registered the domain name.

Not only does the Respondent’s registration divert Internet users to the litigious website taking advantage of the Complainant’s goodwill and reputation, but it also threatens to harm and tarnish this reputation by ambushing internet users into its phishing scheme.

For all the above mentioned reasons, the Panel orders the transfer of the domain name <paiement-cic.com> to the Complainant.

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