{ "case_number": "CAC-ADREU-007847", "time_of_filling": null, "domain_names": [ "cic-immobilier.eu" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Benoît WIESEL (CREDIT INDUSTRIEL ET COMMERCIAL)" ], "complainant_representative": null, "respondent": [ "Alain MILLET" ], "respondent_representative": null, "factual_background": "The Complainant, Credit Industriel et Commercial (“CIC”) is a subsidiary of the banking group Credit Mutuel based in France. It provides banking and financial services. The Complainant is the registered owner of the following trade marks:\r\n1.\tFrench trademark \"CIC\" No. 1358524 registered 6 October 1986;\r\n2.\tEuropean Union trademark \"CIC\" No. 005891411 registered 10 May 2007;\r\n3.\tFrench trademark \"Agence Immobilière CIC\" No. 4322390 registered 14 December 2016; and\r\n4.\tInternational trademark \"CIC BANQUES\" No. 585098 registered 10 April 1992.\r\n\r\nThe Complainant owns a number of websites that incorporate the term CIC. It owns www.cic.fr and has owned this website since the 28 May 1999.\r\n\r\nThe Respondent is Alain Millet also based in France. He is the registered owner of the disputed domain name . The disputed domain name was registered on 30 April 2018.", "other_legal_proceedings": "There are no other legal proceedings related to the disputed domain name.", "discussion_and_findings": "Rights\r\n\r\nThe Complainant has established that it owns the French, European and International trademarks for CIC. The French CIC trademark was registered under number 1358524 on 6 October 1986 and the European Union trademark \"CIC\" No. 005891411 was registered 10 May 2007. \r\n\r\nThe disputed domain name incorporates in entirety the Complainant’s CIC trademark and is identical to EU TM 00589141 with the exception of a hyphen and the word \"immobilier\". The inclusion of the common word “immobilier” which is a generic descriptive term for real estate does not distinguish the mark and the “.eu” element is not relevant here. \r\n\r\nAccordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and the Complaint succeeds under this element of the Policy. \r\n\r\nNo rights or legitimate interests\r\n\r\nThe Complainant says that it has neither licensed nor authorised the Respondent to use its CIC trade mark and that it does not carry out business with the Respondent. It also submits that the Respondent is not commonly known by the terms CIC or CIC IMMOBILIER. Moreover, the Complainant submits that the Respondent does not appear to have any registered rights in CIC or CIC IMMOBILIER. \r\n\r\nThe Panel notes that the CIC mark is very well reputed in France and the Respondent is both based in France and has been in a previous dispute with the Complainant, which suggests that the Respondent was more likely than not well aware of the Complainant’s business and trademark when it registered the disputed domain name, but did so in any event for its own purposes. \r\n\r\nThe Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to respond or to rebut this case, therefore and for the reasons set out below under “Bad Faith” the Panel finds that the Complainant succeeds under Article 21 (1) (a) of EC Regulation No 874\/2004.\r\n\r\nBad faith\r\n\r\nThe Complainant’s French word mark number 1358524 for CIC was registered in 1986 and the disputed domain name was only registered in 2018. In circumstances that the Complainant’s brand is renowned in France and internationally, it is more likely than not that the Respondent was aware of the Complainant’s business and CIC mark when it registered the disputed domain name.\r\n\r\nThe disputed domain name does not resolve to an active website and it appears that it has been held passively since its registration. Previous panels have found that holding a disputed domain name passively will not prevent a finding of bad faith in appropriate circumstances. Section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition provides that the relevant factors include a consideration of (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 evidence of actual or contemplated good faith use; (iii) the Respondent’s concealment of its identity or provision of false contact details and (iv) the implausibility of any good faith use to which the disputed domain name may be put.\r\n\r\nIn this case the Complainant’s CIC trademark has, in the Panel’s view, a high degree of distinctiveness and through use over many years has developed a very considerable degree of reputation and goodwill in France. The Respondent has no rights or legitimate interests and appears to have no credible explanation for the choice of the disputed domain name. \r\n\r\nIt is also appropriate to refer to the Respondent’s previous track record in respect of the Complainant’s trademarks. In the UDRP decision D2019-0022 ibid the WIPO Administrative Panel ordered that the Respondent transfer the disputed domain names: , , , , , to the Complainant. Moreover, before the UDRP decision issued the Respondent provided an undertaking to not renew the disputed domain name at its expiration date. In this regard the Panel also finds that the Respondent has engaged in a pattern of conduct as set out in Article 21 (3)(b)(i) of the EC Regulation No 874\/2004.\r\n\r\nAlthough under the Regulation the Complainant is only required to make out a case for registration or use in bad faith, in the circumstances the Panel finds that the Respondent has both registered and has also used the disputed domain name in bad faith and the Complaint also succeeds under this element of the Policy.", "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant", "panelists": [ null ], "date_of_panel_decision": "2020-02-24 00:00:00", "informal_english_translation": "The Complainant owns registered trademark rights for the CIC trademark. The disputed domain name wholly incorporates the CIC mark and as a result the disputed domain name is confusingly similar to the Complainant’s trademarks. \r\n\r\nThere is no evidence that the Respondent was permitted to use the Complainant’s CIC trademark and no evidence that it was making a bona fide or non-commercial use of the disputed domain name. \r\nThe CIC trademarks enjoy an established reputation and are distinctive. As a result, it is likely that the Respondent knew of the existence of the Complainant’s CIC mark and the disputed domain name was registered with prior knowledge of the Complainant’s trademark. \r\n\r\nIt appears that the disputed domain name has been held passively since its registration. Moreover, It appears that a pattern has emerged whereby the Respondent targets the Complainant’s trademarks. Following UDRP decision D2019-0022 on 2 April 2019 the Respondent was ordered to transfer similar disputed domain names to the Complainant. The Respondent also proceeded to renew the disputed domain name despite providing an undertaking before the 2019 UDRP decision issued that he would not renew the disputed domain name at its expiration date. \r\n\r\nAs a result the Panel finds that the disputed domain name was both registered and has been used in bad faith.", "decision_domains": [], "panelist": null, "panellists_text": null }