WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Banque Postale v. Abdelilah Hichar
Case No. D2017-1403
1. The Parties
The Complainant is La Banque Postale of Paris, France, represented by Nameshield, France.
The Respondent is Abdelilah Hichar of Murcia, Spain.
2. The Domain Name and Registrar
The disputed domain name <labanquepostale.promo> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2017. On July 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 22, 2017, 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.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2017.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on August 24, 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 is a French bank created on January 1, 2006, as a subsidiary of La Poste, the national French postal service.
The Complainant is the owner of many European Union and French trademarks LA BANQUE POSTALE, registered since 2004. For instance, the Complainant is the owner of the French Trademark Registration No. 3274418 LA BANQUE POSTALE, registered on February 16, 2004.
The Complainant also owns the domain name <labanquepostale.com>, created on February 17, 2004.
The trademark LA BANQUE POSTALE is also registered in the Trademark Clearinghouse (“TMCH”) since July 24, 2013.
The Domain Name was registered on March 15, 2017. The Domain Name does not resolve to an active website.
5. Parties’ Contentions
The Complainant argues that the Domain Name is identical to its LA BANQUE POSTALE trademarks and domain names.
The Domain Name reproduces exactly the Complainant’s trademarks and domain names.
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the Domain Name to advance its rights or legitimate interests.
The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark.
The Domain Name has been registered and is being used in bad faith. The Domain Name is passively held by the Respondent and at the same time deprives the Complainant of reflecting its own mark in the Domain Name.
The Complainant requests that the Domain Name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must prove that each of the three following elements is satisfied:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
A. Identical or Confusingly Similar
The Complainant has shown that it owns trademark rights in LA BANQUE POSTALE trademark.
The Domain Name consists of LA BANQUE POSTALE trademark in its entirety followed by the generic Top−Level Domain (“gTLD”) “.promo”.
It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy. See Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249.
Since the addition of a new gTLD such as “.promo” in a domain name may be technically required, this element may generally be disregarded when assessing whether a domain name is confusingly similar to a trademark and does not serve to distinguish a domain name from a complainant’s trademark.
In view of the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and it has commercially used for several years.
The first element of the Policy has, therefore, been met.
B. Rights or Legitimate Interests
The Panel finds that with regard to whether the Respondent has any rights or legitimate interests in respect of the Domain Name (paragraph 4(c) of the Policy), the Complainant has made an adequate prima facie showing that the Respondent does not have such rights or legitimate interests.
“La Banque Postale” does not correspond to the Respondent’s name, and there is no evidence that the Respondent is otherwise commonly known neither as “La Banque Postale”, nor as the Domain Name.
The Complainant also declares that the Respondent has not been authorized or licensed to use the Domain Name.
The Respondent did not come forward with any evidence that it has any rights or legitimate interests in respect of the Domain Name. Moreover, as the website associated with the Domain Name is inactive, no rights or legitimate interests can be inferred from its use.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the Domain Name.
The second element of the Policy has, therefore, been met.
C. Registered and Used in Bad Faith
The Domain Name resolves to a website without any content and it does not appear to have been used for any commercial or noncommercial purpose.
The Panel agrees that the doctrine of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003,is applicable: “[T]he point is that paragraph 4(b) recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith.”
Given the evidence of the Complainant’s prior rights on the LA BANQUE POSTALE mark and its reproduction in full in the Domain Name, the registration of the Domain Name in the “.promo” gTLD for a trademark associated with a well-known bank (which may confuse Internet users who assume that the Domain Name refers to a promotion sponsored by the Complainant, see BHP Billiton Innovation Pty Ltd v. Cameron Jackson, WIPO Case No. D2015-1782), the failure to respond to the Complaint, together with the fact that the Domain Name resolves to an inactive website, would suffice to satisfy the requirement that the Domain Name was registered and used in bad faith.
Accordingly, the Panel finds that the Domain Name has been registered and is being used 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, <labanquepostale.promo>, be transferred to the Complainant.
Date: September 7, 2017