WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bforbank S.A. v. Transure Enterprise Ltd/Above.com Domain Privacy
Case No. D2010-1300
1. The Parties
The Complainant is Bforbank S.A. of Paris, France, represented by Casalonga Avocats, France.
The Respondent is Transure Enterprise Ltd of Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland; Above.com Domain Privacy of Beaumaris, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <bfobank.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2010. On August 4, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 6, 2010, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 9, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 13, 2010. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2010.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on September 21, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The administrative proceedings were conducted in English for this was the language of the disputed domain name’s Registration Agreement.
4. Factual Background
The Complainant, a spin-off of French retail banking group Crédit Agricole, is a company registered in Nanterre that is licensed to operate the first-ever wholly online bank in France. The Complainant’s launch was preceded by an intense advertising campaign in the French media, including television, the press, and some of the most popular websites in France.
Three months after kickoff in October 2009, the Complainant had already raised Euro 800 million in deposits from more than 15,000 clients, namely individuals with a tax domicile registered in France.
To identify and distinguish its online banking services, the Complainant has used, advertised, and registered as early as November 2009 the mark BFORBANK in France, the European Community, and a number of other countries via the Madrid Protocol, with respect to international class 35, among others.
The Complainant runs its business through the portal “www.bforbank.com”, aside from owning more than 20 other domain names comprising the mark BFORBANK.
For its part, the Respondent registered the disputed domain name on February 12, 2010. The disputed domain name is linked to a website featuring sponsored listings about Internet banking and financial services.
5. Parties’ Contentions
The Complainant puts forward the following factual and legal submissions:
i. The disputed domain name is almost identical to the Complainant’s trademark as the latter is fully incorporated into the former, save for the letter “r”, which makes no difference as to the sign’s overall impression, and neither does the “.com” gTLD;
ii. The Respondent’s registration of the disputed domain name clearly constitutes typosquatting, a practice entailing both confusing similarity and lack of legitimate interests in the disputed domain name;
iii. The Complainant has neither licensed nor otherwise authorized use of its BFORBANK mark by the Respondent;
iv. As the disputed domain name is being used in connection with pay-per-click links, the Respondent is neither making a bona fide offering of goods or services, nor a legitimate use of the domain name without intent for commercial gain to misleadingly divert Internet users;
v. All the sponsored links on the Respondent’s website relate to banking and financial services or products provided by the Complainant under the BFORBANK mark;
vi. The circumstances of the instant case indicate that the disputed domain name has been registered primarily for the purposes of disrupting the Complainant’s business and taking advantage of its potential BFORBANK clients;
vii. It is well settled under the Policy that typosquatting in and of itself constitutes bad faith registration;
viii. The Respondent’s exploitation of the disputed domain name is without any doubt made in bad faith in an attempt to attract, for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorhip, affiliation, or endorsement of the Respondent’s website;
ix. Finally, by using the shield identity services of the Registrar, the Respondent has engaged in a pattern of conduct implying registration of identical or confusingly similar domain names in bad faith, as evidenced in numerous UDRP decisions involving the Respondent, which are annexed to the Complaint.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to make out its case, the Complainant must demonstrate that the following three conditions are met:
i. The disputed 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 interest in respect of the disputed domain name; and
iii. The disputed domain name has been registered and is being used in bad faith.
The Respondent’s default
Even though the Respondent’s default does not dispense the Complainant with the burden of establishing the three elements required by paragraph 4(a) of the Policy (see section 4.6 of the WIPO Overview of WIPO Panels Views on Selected UDRP Questions (“WIPO Overview”)), the Panel may accept all reasonable and supported allegations and inferences made in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint) and also Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. FA95095 (holding that the respondent’s default allows all reasonable inferences of fact in the allegations of the complainant to be deemed true).
A. Identical or Confusingly Similar
As noted by the overwhelming majority of UDRP panels, the question under paragraph 4(a) of the Policy is whether the disputed domain name is confusingly similar to the Complainant’s mark, not whether the website to which the domain name resolves will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini, WIPO Case No. D2002-0834 (A complainant need not establish actual confusion because the test is objective, not subjective).
Accordingly, from a side-by-side comparison between “bfobank” being the relevant portion of the disputed domain name, and the Complainant’s BFORBANK mark, it becomes noticeable that the only element not reproduced in the disputed domain name is the letter “r”.
Such difference may be enough to avoid a finding of identity between the two signs, but not to prevent confusion on the Internet with the Complainant’s trademark when looking at the disputed domain name’s overall impression. To the contrary, the fact that registration of the disputed domain name can only be characterized as typosquatting reinforces this conclusion.
Indeed, the authority is legion under the Policy that confusing similarity is warranted where, as here, the disputed domain name is a common misspelling or predictable mistyping of a distinctive mark. See Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541 (finding the domain name <guinnes.com> to be confusingly similar to the mark GUINESS); and Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584 (finding that the domain name <deloitt.com> was confusingly similar to the mark DELOITTE).
Moreover, given its lack of own meaning, the disputed domain name constitutes in the Panel’s view no more than a slavish imitation of the Complainant’s inherently distinctive trademark.
As a result, this Panel finds that the Complainant has met the first threshold of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has furnished proof that no “bfobank” trademark is registered by either the Respondent or any third party with the French Trademark Office (INPI), the European Trademark Office (OHIM) or the World Intellectual Property Organization (WIPO).
Further, the Complainant warrants and represents that the Respondent has been granted no license, nor has it been authorized in any way to use the Complainant’s BFORBANK mark.
In light of the above circumstances, the Complainant posits that the Respondent has no rights or legitimate interest in the disputed domain name as it is using the latter to take advantage of typos made by Internet users searching for the Complainant’s website so as to divert them to third parties’ sites for commercial gain.
Given that typosquatting is a form of piracy aimed at capitalizing on spelling mistakes to attract hits to a an unintended website, in principle, no right or legitimate interest can arise out of a practice involving deception of Internet users. See National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011 (typosquatting, as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site. Nor does it constitute a legitimate noncommercial or fair use of the domain name without intent for commercial gain misleadingly to divert consumers).
More particularly, the evidence on record shows prima facie that the Respondent is not:
i. commonly known by the disputed domain name as its corresponding website is not even attributed to an entity by the name of Bfobank;
ii. using <bfobank.com> in connection with a bona fide offering of goods or services for the resolving website includes references to financial services which are identical to those provided by the Complainant under its BFORBANK mark;
iii. making a legitimate noncommercial or fair use of <bfobank.com> without intent for commercial gain because Internet users are misleadingly diverted to the Respondent’s website featuring sponsored links;
Based on the foregoing considerations and in view of the Respondent’s default, the Panel concludes that none of the defenses set forth in paragraph 4(c) of the Policy is available to the Respondent.
Accordingly, the Complainant has demonstrated the second limb of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
As established by countless Panels, typosquatting in and of itself entails bad faith registration and use of a domain name in the context of the Policy. See for instance Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568 (typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter intenationally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source of the website); and also Sahibinden Bilgi Teknolojileri Pazarlama ve Ticaret Anonim Sirketi v. Tansel Buyukkarakas Bekir Kahraman, WIPO Case No. D2009-1541 (It has been accepted in several previous panel decisions that typosquatting itself is evidence of bad faith registration and use).
Here, the finding of bad faith is reinforced by the fact that the BFORBANK mark is used exclusively on the Internet, which makes this Panel infer that the Respondent sought at all times to profit from a trademark that is intensely used over the world wide web, which would guarantee an increased number of typos being made by Internet users in trying to gain access to the Complainant’s website.
Moreover, the sponsored listings contained in the disputed domain name’s website relate to the very same online banking services provided by the Respondent under its BFORBANK mark, which shows that by using the <bfobank.com> domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's BFORBANK mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site and content thereof, thus falling under the bad faith scenario described in paragraph 4(b)(iv) of the Policy.
In closing, it is to be acknowledged that, as documented by the Complainant, numerous UDRP panels have ruled against Above.com in several other default proceedings, which reveals a pattern of bad faith conduct on the part of the Respondent.
Based on the above circumstances, the Panel is satisfied that the Complainant has discharged its burden as required by paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <bfobank.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Dated: October 5, 2010