WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boursorama SA v. Ellen Howe, NA
Case No. D2016-2605
1. The Parties
The Complainant is Boursorama SA of Boulogne Billancourt, France, represented by Nameshield, France.
The Respondent is Ellen Howe, NA of Hemet, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <boursorama.club> (the “Domain Name”) is registered with Todaynic.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2016. On December 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 23, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On December 27, 2016, the Center sent an email communication in both Chinese and English to the Parties regarding the language of the proceeding. On December 28, 2016, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that 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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on January 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default January 24, 2017.
The Center appointed Linda Chang as the sole panelist in this matter on January 30, 2017. 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.
4. Factual Background
The Complainant, founded in 1995 in France, is active in the field of online brokerage, financial information on the Internet and online banking. The Complainant operates a national financial and economic information site “www.boursorama.com”, and its Boursorama Bank is a leading French online bank. The Complainant states that it had over 505,000 customers as of late 2013.
The Complainant is the owner of several BOURSORAMA trademarks, including European Union TradeMark No. 001758614 registered on October 19, 2001; French Trademark No. 98723359 registered on March 13, 1998; and FrenchTrademark No. 3676765 registered on September 16, 2009.
The Complainant also owns a number of domain names incorporating the BOURSORAMA trademark, in particular, <boursorama.com> registered on March 1, 1998; <boursorama.net> registered on September 24, 1998; <boursorama.biz> registered on November 15, 2001; <boursorama.fr> registered on June 3, 2005; <boursorama.eu> registered on July 24, 2006; and <boursorama.info> registered on February 20, 2007.
The Domain Name was registered by the Respondent on December 20, 2016. At the time of filing of the Complaint, the Domain Name resolved to a website featuring contents highly similar to the Complainant’s website. The Domain Name is currently inactive.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to its BOURSORAMA trademark since it includes in its entirety the BOURSORAMA mark without adjunction of any letter or word. Addition of the suffix “.club” is insufficient to escape the finding that the Domain Name is identical to the BOURSORAMA trademark and does not prevent the likelihood of confusion between the Domain Name and the Complainant.
The Complainant further contends that the Respondent is neither affiliated with the Complainant nor authorized by it in any way, and is not related to in any way to the Complainant’s business. The Respondent therefore has no rights or legitimate interests in respect of the Domain Name.
The Complainant finally contends that the Domain Name was registered and is being used in bad faith. Given the distinctiveness of the Complainant’s trademark and reputation, the Respondent registered the Domain Name with full knowledge of the trademark. The Respondent is attempting to pass itself off as the Complainant by displaying contents highly similar to that of the Complainant’s official website, in order to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to source, affiliation or endorsement.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
According to paragraph 11 of the Rules, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) further allows the Panel to determine the language of the proceeding having regard to the circumstances of the proceeding. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to take into account of all relevant circumstances of the case to ensure fairness to both parties, and the maintenance of an inexpensive and timely proceeding.
Though the language of the Registration Agreement for the Domain Name is Chinese, the Complainant requested that English be the language of this proceeding based on the following reasons:
- The Complainant operates its international business primarily in English and is unable to communicate in Chinese.
- The Domain Name is in Latin characters as the English language rather than Chinese script.
- The Respondent is located in the United States and seems to understand English.
- The proceeding will be unduly delayed and substantial translation expenses would have to be incurred if the Complainant has to submit documents in Chinese.
The Panel notes that the Respondent did not object to the use of English as the language of the proceeding after being notified of the Complainant’s language request in both Chinese and English, and that the Respondent further chose not to file a response after being notified of the proceeding in both Chinese and English.
In light of the Respondent’s decision not to participate in this proceeding, the Panel finds it inappropriate to require translation of the Complaint into Chinese, which would place undue burden on the Complainant and cause undue delay to this proceeding. The Panel also considers the fact that the Respondent is apparently located in the United States, which suggests the likely possibility that the Respondent is proficient in English and able to use English to participate in this proceeding.
In all the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has adduced sufficient evidence to demonstrate its established rights in the BOURSORAMA trademark.
The Panel agrees that “.club” being a new generic Top-Level Domain does not function as a distinguishing factor, and the dominant part of the Domain Name is “boursorama”, which reproduces the Complainant’s BOURSORAMA trademark in its entirety.
Accordingly, the Panel finds that the Domain Name is identical to the Complainant’s BOURSORAMA trademark.
C. Rights or Legitimate Interests
The Complainant contends that the Respondent is neither affiliated with the Complainant nor authorized by it in any way, and is not related to in any way to the Complainant’s business.
In the circumstances where the Complainant possesses exclusive rights to the BOURSORAMA trademark while the Respondent seems to have no trademark rights in BOURSORAMA, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, and the burden of production shifts to the Respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Respondent however has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the Domain Name. In fact, the Respondent appears to have been using the Domain Name to redirect Internet users to an online site featuring contents highly similar to the Complainant’s official website, which the Panel finds is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.
The Panel thus concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Panel finds it inconceivable that the Respondent had no actual notice of the Complainant’s trademark rights at the time of registering the Domain Name, especially given the fact that the Respondent included a coined trademark BOURSORAMA in the Domain Name and pointed the Domain Name to a website targeting customers of the Complainant. The Panel concludes that the Respondent was attempting to create an impression of association with the Complainant and its BOURSORAMA trademark at the time of registration and the Domain Name was registered in bad faith.
The Panel notes that the website associated with the Domain Name featured highly similar contents to the Complainant’s website. The Panel therefore holds that Respondent attempted to trade on the fame of the Complainant’s trademark for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the goods sold on or through the Respondent’s website.
The Panel further finds that customers of the Complainant accessing the Respondent’s website might have been misled into believing that the website is associated with the Complainant and then mistakenly login into the Respondent’s website by transmitting their usernames and passwords. The Panel considers that the Respondent appeared to be using the website for phishing purposes and obtaining information by deception, which is further evidence of bad faith. See Halifax plc v. Sontaja Sunducl, WIPO Case No. D2004-0237.
Based on the above facts and reasons, the Panel finally concludes that the Respondent registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <boursorama.club> be transferred to the Complainant.
Date: February 23, 2017