Decision for dispute CAC-UDRP-108729

The Panel is unaware of any other pending or decided legal proceedings relating to the disputed domain name.

The Complainant seeks to rely on the following registered trademarks “BIC” worldwide, including:

-    International trademark “BIC” 152381E, registered since March 10, 1951;

-    International trademark “BIC” (+ logo) No. 380478A, registered since June 18, 1971;

-    European Union trademark “BIC” 000414904, registered since December 23, 1996;

-    European Union trademark “BIC” (+ logo) No. 000415067, registered since December 23, 1996;

-    US registered trademark “FLICK MY BIC“3225503 filed in May 30, 2003 and registered on April 3, 2007.

The Complainant, the company SOCIETE BIC founded in 1945 is registered before the French Companies Registry under the number 552 008 443.

Renowned worldwide for its iconic ballpoint pens, the Complainant also markets a wide range of stationery products, disposable razors and lighters. The Group made 2 090 million euros of revenue in 2025 and employs more than 11,000 people across 5 continents. 26 million “BIC” products are sold every day in 160 countries.

The first “BIC” lighter was manufactured and sold since 1973 and the Complainant is one of the worldwide leaders in the market of lighters, holding 15% of market share in volume (excluding China). The “BIC” lighter is unquestionably considered an iconic product largely known by a large part of the public and declined in several colors and then graphics through the years. It has even been on view notably in the MOMA Museum since 2005.

Through financial, material, and human substantial investments, the Complainant developed a large customer base through “BIC” brands, which have achieved a reputation and notoriety in its field of activity and beyond. The public is able today to know and recognize that “BIC” is a key player for high-quality, safe, affordable, essential products notably in the lighters market.

The Complainant thus owns well-known prior rights on the denomination “BIC” through trademarks and domain names.

The Complainant is also the holder of a broad portfolio of domain names including the brand “BIC”. The main domain name is <bic.com> reserved through June 20, 1994.

Through careful watch, Complainant has detected the registration of the disputed domain name <flickmybic.com> which occurred on August 13, 2006.

COMPLAINANT

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

The disputed domain name reproduces the prior rights “BIC” and “FLICK MY BIC” in their entirety. Many decisions have recognized that the incorporation of a trademark in its entirety is sufficient to establish that the domain name is identical or similar to the registered mark. 

Moreover, Panels usually disregard the domain name suffix (or Top-Level Domain “TLD”) in evaluating confusing similarity. Therefore, this element is not likely to avoid the risk of confusion that may exist between the signs in question.  Nevertheless, the .com extension is the most important one for commercial purposes.

The Panel will easily understand that the disputed domain name is composed of three words “FLICK MY BIC” which is directly related to the lighter market and the iconic product of the Complainant. The addition of “FLICK MY”, when combined with “BIC”, directly refers to one of the main Complainant’s activities which further increases the risk of user confusion. Indeed, flick my bic refers to lighting or flicking a “BIC” lighter. In line with WIPO Overview 3.0, section 1.8, a domain name 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.

It increases the likelihood of confusion, as Internet users familiar with the Complainant’s activities may reasonably assume that <flickmybic.com> is an official or affiliated variation of the Complainant’s domain names for lighter’s range. Moreover, “flick my bic” was one of the marketing campaigns of the Complainant and duly registered as a trademark.

Therefore, the disputed domain name clearly creates a high risk of confusion with the Complainant’s prior rights.

For illustrative purposes, the Complainant would like to point out that its Group has already obtained many transfers in its favor for similar disputed domains, notably including descriptive terms in addition to BIC e.g.:

Thus, the disputed domain name is highly similar to the trademarks and domain names for which the Complainant has rights.

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

According to our research, and information given by our client, the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name is currently active and resolves to pay-per-click links related to the lighter field, which is therefore directly linked to the field of activity of the Complainant.

It should also be noted that the Complainant has not licensed nor authorized the Respondent to use its trademarks or domain names, nor has it allowed the Respondent to reserve or use a domain name incorporating the Complainant's rights or a variation.

In any case, the Respondent could not have been unaware of the existence of the Complainant’s trademarks and domain names at the time of registering the disputed domain name.

Indeed, a simple search on Google revealed that all results for "FLICK MY BIC " refer to the Complainant.

There is therefore no plausible legitimate reason for the Respondent to register or use this domain name. The only conceivable explanation is an attempt to mislead users, trade off the Complainant’s goodwill, and/or engage in deceptive or fraudulent practices.

Further to the Registrar verification, the Respondent is still anonymized as the provided data are: Domain Admin, TotalDomain Privacy Ltd (Panama). Accordingly, the Respondent cannot be identified and appears to operate a "Russian doll" scenario as explained in point 3.

Accordingly, the Respondent:

• is not making a bona fide offering of goods or services;
• is not commonly known by the disputed domain name;
• and is not engaged in any legitimate noncommercial or fair use of the domain name without intent for commercial gain.

It is consequently respectfully asked to the Panel to recognize that the Respondent did not intend to register nor use the disputed domain name in connection with any legitimate purpose or interest.

3. The disputed domain name was registered and is being used in bad faith;

First of all, the registration of a domain name identical/highly similar to a trademark in which the Complainant has rights while the Respondent has no right to the domain name or legitimate interests in this respect and without authorization, demonstrates in itself that the Respondent acted in bad faith.

Moreover, the bad faith of the Respondent may be presumed inasmuch as the trademark of the Complainant acquired a high reputation and fame in the industries in which it operates notably in lighters, but also beyond, through financial, material and humans’ substantial investments, for more than 80 years.

The Respondent could not have ignored the existence of the Complainant’s trademarks, at the time of the registration of the disputed domain name, with which it is confusingly similar/identical. 

At least, a simple Google search would have necessarily directed the Respondent to the website of the Complainant, whose rights are old and well-known, all the more since the Respondent deliberately included the well-known trademark “BIC” in the disputed domain name.

Indeed, we reassert that the disputed domain name reproduces the prior rights “BIC” and “FLICK MY BIC” in their entirety and is highly similar, due to a direct reproduction of one advertisement/baseline of the Complainant.

The Respondent is exploiting the domain name through pay-per-click links related to Complainant’s field of activity. The Respondent is therefore clearly using the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant.

Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.

Prior decisions have also found that the use made of a domain name in relation to a pay-per-click website can be “confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers competing goods without any explanation” (D2017-0541 - bicrazor.com).

Also, it is worth noting that the Registrant name/organization was chosen to be anonymized through a privacy protection service. What we can say from that anonymization is that it is often used by scammers and can constitute a factor indicating bad faith. The Complainant sent a formal notice on 30/09/2025, which went unanswered.

The disclosure of the Respondent´s data in this UDRP proceeding reinforces the demonstration of bad faith, as the “disclosed” data refers to another privacy service, referred to as a “Russian doll” scenario.

Given all the elements of the case, it should be considered as constitutive of bad faith.

In consequence, we have a clear demonstration of bad faith. The domain was indeed not registered for any legitimate purpose but rather to capitalize on the notoriety of the Complainant for commercial gain.

As a consequence, the registration and use of the disputed domain name will be highly prejudicing for the Complainant, with a high risk that this deceptive and misleading domain name uses the prior rights of the Complainant, in a bad faith manner.

With respect to all set above, the Complainant considers having successfully established the bad faith of the Respondent in both registering and using the disputed domain name.

RESPONDENT

No administratively compliant Response was filed. 

To the satisfaction of the Panel, the Complainant has shown that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

To the satisfaction of the Panel, the Complainant has shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

To the satisfaction of the Panel, the Complainant has shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under the UDRP have been met, and there is no other reason why it would be unsuitable to provide the Decision.

1. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trademark rights in the mark “BIC”, with a registration dating back to 1951, as well as other registrations. The Complainant has also produced evidence of its United States trademark registration for “FLICK MY BIC” filed in 2003 and registered in 2007.

The Panel notes that the disputed domain name, corresponds entirely to the Complainant's “FLICK MY BIC” trademark, disregarding the generic Top-Level Domain ("gTLD") ".com". The disputed domain name also incorporates the Complainant's “BIC” trademark in its entirety, which remains clearly recognizable within the disputed domain name. As stated in section 1.7 of the WIPO Overview 3.1, which is persuasive to the Panel, where a complainant's trademark is recognizable within the disputed domain name, the incorporation of that mark is generally sufficient to establish confusing similarity.

To the extent that the disputed domain name may also be viewed as comprising the dictionary words "flick" and "my" together with the Complainant's “BIC” trademark, such additional terms do not prevent the Complainant's trademark from remaining readily recognizable within the disputed domain name. As noted in section 1.8 of the WIPO Overview 3.1, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity under the first element.

The gTLD ".com" is viewed as a standard registration requirement and, as such, is generally disregarded for the purpose of the confusing similarity assessment.

Accordingly, based on the information on record, in the absence of any evidence to the contrary, and on the balance of probabilities, the Panel finds that the disputed domain name is identical to the Complainant's “FLICK MY BIC” trademark and confusingly similar to the Complainant's “BIC” trademark. The Complainant has therefore satisfied the requirements of paragraph 4(a)(i) of the Policy.

2. Rights or Legitimate Interests

Based on the information on record, the Panel finds that the Complainant has established such a prima facie case. The Complainant states that it has not authorized, licensed or otherwise permitted the Respondent to use its “BIC” or “FLICK MY BIC” trademarks, or to register any domain name incorporating those marks. There is no evidence before the Panel suggesting that the Respondent has acquired any trademark or other intellectual property rights corresponding to the disputed domain name.

Nor is there any evidence indicating that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. The Registrar's verification identifies the underlying registrant by a name that bears no apparent resemblance to the disputed domain name, and nothing in the record suggests any association between the Respondent and the terms "BIC" or "FLICK MY BIC".

The evidence submitted by the Complainant further shows that the disputed domain name resolves to a parking page displaying pay-per-click ("PPC") links relating to lighters, which fall within the Complainant's field of commercial activity. This may be analyzed further below, but in the circumstances of this case, this may be relevant since such use appears to capitalize on the reputation of the Complainant's trademark by attracting Internet users expecting to reach a website associated with the Complainant. As noted in section 2.9 of the WIPO Overview 3.1, which is persuasive to the Panel, the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering of goods or services where such links compete with or capitalize on the reputation and goodwill of the Complainant's mark or otherwise mislead Internet users.

The Panel has also considered whether there is any indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Based on the information on record, there is no evidence of such use. Rather, the record indicates that the disputed domain name has been used for a commercial PPC parking page, a use which, in the circumstances of this case, is not consistent with a legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy.

The Respondent has not submitted a Response and has therefore failed to rebut the Complainant's prima facie case or to provide any explanation for its registration and use of the disputed domain name. While the Respondent's default does not by itself establish the Complainant's case, the Panel may draw appropriate inferences from the absence of any evidence contradicting the Complainant's assertions.

Accordingly, based on the information on record, in the absence of any evidence to the contrary, and on the balance of probabilities, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy.

3. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name was registered and is being used in bad faith.

Based on the information on record, the Panel finds that the Complainant has established longstanding rights in the “BIC” trademark, which has been registered since at least 1951 and extensively used worldwide in connection with stationery products, disposable razors and, since the early 1970s, disposable lighters. The record further demonstrates that the “BIC” trademark has acquired substantial goodwill and recognition through decades of continuous commercial use and promotion.

The disputed domain name was registered on August 13, 2006. The Complainant also relies on its “FLICK MY BIC” trademark, which proceeded to registration after the registration of the disputed domain name. The Panel notes that the corresponding trademark application was filed prior to the registration of the disputed domain name and therefore formed part of the public record. The Complainant, however, has not explained the chronology of the adoption or use of the “FLICK MY BIC” designation prior to the registration of the disputed domain name. In the circumstances of this case, the Panel does not consider it necessary to make any finding on whether the Respondent was aware of that trademark application at the time of registration. Nevertheless, based on the record at hand and on the balance of probabilities, it is plausible that the Respondent was aware of the trademark application at the time of the registration of the disputed domain name.

Rather, the Panel's assessment is based on the totality of the circumstances. The disputed domain name wholly incorporates the Complainant's distinctive and longstanding “BIC” trademark, which had been registered and extensively used for many decades before the registration of the disputed domain name. The additional terms "flick" and "my" are closely associated with the operation of a lighter, one of the Complainant's best-known products. On the balance of probabilities, the combination of those terms with the Complainant's distinctive trademark does not appear to have been selected by coincidence.

The Complainant has further submitted evidence that the disputed domain name resolves to a parking page displaying pay-per-click ("PPC") links relating to lighters, namely products falling within the Complainant's field of activity. Such use supports the inference that the Respondent registered and has used the disputed domain name to capitalize on the goodwill associated with the Complainant's trademark by attracting Internet users for commercial gain. As noted in section 3.5 of the WIPO Overview 3.1, which is persuasive to the Panel, the use of a domain name to host a parked page comprising PPC links may support a finding of bad faith where the Respondent seeks to capitalize on the Complainant's reputation.

The Respondent has chosen not to participate in this proceeding and has therefore provided no explanation for its registration or use of the disputed domain name. While the Respondent's default does not by itself establish bad faith, the absence of any evidence rebutting the Complainant's case reinforces the reasonable inferences arising from the record.

The Panel has also considered the Respondent's use of privacy services and the Respondent's failure to reply to the Complainant's cease-and-desist letter. Although neither circumstance is, by itself, indicative of bad faith, both may be taken into account as part of the overall factual matrix. See section 3.6 of the WIPO Overview 3.1.

The Panel further notes that the Complaint was filed approximately nineteen years after the registration of the disputed domain name. However, panels have consistently held that the doctrine of laches does not generally apply under the UDRP and that delay in bringing a complaint does not, by itself, bar relief or cure an otherwise abusive registration. See section 4.17 of the WIPO Overview 3.1. In the circumstances of this case, the Panel does not consider that the passage of time alters its assessment of the evidence or the Respondent's conduct.

Considering the totality of the evidence, the Panel finds that the Respondent more likely than not registered the disputed domain name with knowledge of the Complainant's well-established “BIC” trademark and has intentionally used the disputed domain name to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the associated website, within the meaning of paragraph 4(b)(iv) of the Policy.

Accordingly, based on the information on record, in the absence of any evidence to the contrary, and on the balance of probabilities, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has therefore satisfied the requirements of paragraph 4(a)(iii) of the Policy.

4. Decision

For the reasons mentioned above and according to the provisions in Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders the transfer of the disputed domain name to the Complainant.