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. 100098
Time of Filing 2009-09-07 17:50:19
Disputed domain name CIC-BANK.NET, BANQUE-CIC.NET
Case Administrator
Name Josef Herian
Complainant
Organization CREDIT INDUSTRIEL ET COMMERCIAL SA
Authorized Representative
Organization Meyer & Partenaires
Respondent
Name Charles HEDISON
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.
Factual Background
1.
The Complainant - a French banking group - is the registered owner of a large number of trademarks in France and abroad consisting of or including the expression „CIC“ . Among those trademarks are the following:

<CIC>
French nominative trademark n° 1358524 of June 10, 1986 (renewal of a trademark dated June 26, 1976, registered under the No. 959 999. This trademark has been renewed on June 10, 1996. The last renewal of this trademark is currently pending).

<CIC>
Community nominative trademark No. 005891411 of May 10, 2007,

<CIC - Union Européenne de CIC>
International registration No. 582446 of February 18, 1992,

<CIC BANQUES>
French nominative trademark No. 1682713 of July 24, 1991,

<CIC BANQUES>
International registration No. 585098 of April 10, 1992.

The Complainant has also registered a large number of domain names incorporating its trademarks and notably the Complainant registered the domain names
<cic> under the top-level domains (dot)fr, (dot)eu, (Dot)asia, (dot)mobi;
<banquecic>, <cicbanque>, <cic-bank>, <bankcic> under the Top-Level-Domain (dot).com;
<cic-bank> under the Top-Level-Domain (dot)asia;
<banquescic> under the Top-Level-Domain (dot)eu.

2.
The hardcopy of the Complaint including all annexes and technical information how to access to the UDRP on-line platform together with the full login for the Respondent was returned by the postmaster to the Czech Arbitration Court. Notwithstanding the envelope had been opened the postmaster has not informed the Czech Arbitration Court on the envelope or on the receipt of delivery why the Complaint has not been delivered to the Respondent.

3.
The Registrar of the disputed domain names informed the Czech Arbitration Court that “ …unfortunately our member through which the domain was registered has been unable to reach the person who registered the domain name in order to verify the registrant information.“

4.
The registrant of the domain names shall be domiciled according to his statement in the WHOIS-database: 1430 16th Street NW - 90210 Malibu - France.
Parties' Contentions
A. Complainant
The Complainant contends its banking group - also known under the acronym “CIC” - comprises five regional banks with 2122 branches in France and 36 branches in Africa, Latin America, North America and Asia serving 4.1 million clients. Furthermore the Complainant asserts doing business in 50 countries worldwide.

The trademarks owned by the Complainant shall not only be registered and used in commerce in a great majority of countries in the world, but shall also be well-known in the sense of article 6bis of the Paris Union Convention.

The Complainant asserts that the disputed domain names are identical or confusing similar to the trademarks and that the Respondent has no rights or legitimate interests in respect of the domain names. Furthermore the Respondent has registered the domain names in bad faith because - when living in France - the Respondent must have known the Complainant as one of the local banks with numerous branches and - when living outside France in Malibu - must have known the international reputation of the Complainant in the field of financial and banking services at the time of the registration of the domain names <cic-bank> and <banque-cic> under the top-level domain (dot)net.
B. Respondent
No response has been filed by the Respondent.
Discussion and Findings
According to paragraph 4(a) of the Policy the Complainant must prove for the requested transfer of the disputed domain names <cic-bank> and <banque-cic> under the top-level domain (dot)net that
(i) the domain names are 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 names; and
(iii) the domain names has been registered and is being used in bad faith.

Without a doubt the Complain complies with all these requirements:


The Domain names are at least confusingly similar to a trademark of the Complainant

The top-level domain “(dot)net” has to be disregarded when comparing trademarks and domain names, due to its importance, acknowledged by the market, as an essential component of domain names.

The Complainant is the proprietor of trademark rights in respect of the acronym <CIC>. Apart from the descriptive terms „bank“ and „banque“ the disputed domain names are identical with the trademark rights while it is a worldwide standard that the mere addition of descriptive terms does not eliminates confusing similarity that is otherwise present.

For these reasons the domain names <cic-bank> and <banque-cic> and the trademark <CIC> are at least confusingly similar and the Panel considers that the condition set out by paragraph 4(a)(i) of the Policy has been met by the Complainant.

2.
The Respondent has no rights or legitimate interests in the domain names

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 cannot reasonably conclude that the Respondent is commonly known by the domain names because there are no functioning websites available from the disputed domain names and there is no evidence that there ever were functioning websites before the Complaint being filed. As a general point a Respondent who does not respond to a complaint is unlike to prepare oneself for a bona fide offering of goods or services under the domain names or to prepare a legitimate noncommercial or fair use of the domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue.

Accordingly, on the evidence available to it, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy have been met by the Complainant.

3.
The Respondent has registered and used the domain names in bad faith

Paragraph 4(b) of the Policy enumerates four circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of domain names in bad faith. These circumstances are non-inclusive, why several other indicators can establish bad faith as the Respondent had never used the domain names and provided no evidence that he intends to use the domain names; and it is not possible to conceive the Respondent could use the domain names in any legitimate way; and the Respondent concealed his identity and did not provide a response to the complaint.

In this case it is obvious to the Panel that the Respondent has never used the domain names nor intended to use the domain names in a legitimate way. The Panel also cannot imagine how the Respondent could use the domain names with the descriptive terms „bank“ and „banque“ and the expression <CIC> in a legitimate way. That there is no legitimate way to use the domain names was also obvious to the Respondent for which reason he concealed his identity at the time of the registration of the domain names. While the Respondent concealed its identity, the Respondent was unable to be contacted for delivery of the Complaint and has failed to respond to the Complaint; and to offer any bona fide explanation for having obtained and passively retained the disputed domain names.

Considering all circumstances the Panel finds that the condition set out by paragraph 4(a)(iii) of the Policy have 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
CIC-BANK.NET Transferred to CREDIT INDUSTRIEL ET COMMERCIAL SA
BANQUE-CIC.NET Transferred to CREDIT INDUSTRIEL ET COMMERCIAL SA
Panellists
Name Prof. Dr. Lambert Grosskopf, LL.M.Eur.
Date of Panel Decision 2009-10-18
Annexes
Annex: English summary of the Panel Decision
1.
It is a worldwide standard that the mere addition of descriptive terms does not eliminates confusing similarity of a trademark with a domain name that is otherwise present.

2.
A Respondent who does not respond to a complaint is unlike to prepare oneself for a bona fide offering of goods or services under a domain name or to prepare a legitimate noncommercial or fair use of a domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue.

3.
A Respondent has registered and used a domain name in bad faith when he conceals his identity and is unable to be contacted for delivery of a Complaint and fails to respond to the Complaint to offer any bona fide explanation for having obtained and passively retained the disputed domain name.
Publication of the Decision
Publish the Decision