WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BPCE v. Whois Agent, Whois Privacy Protection Service, Inc. / Desmarchelier Herve

Case No. D2019-1575

1. The Parties

The Complainant is BPCE, France, represented by Inlex IP Expertise, France.

The Respondent is Whois Agent, Whois Privacy Protection Service, Inc., United States of America / Desmarchelier Herve, France.

2. The Domain Name and Registrar

The disputed domain name <smoneypro.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2019. On July 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar 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 July 9, 2019, 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 amended Complaint on July 12, 2019.

The Center verified that the Complaint together with the amended 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 of the Complaint, and the proceedings commenced on July 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2019.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on August 13, 2019. 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 BPCE, a French financial and banking services company.

The Complainant is the owner of the following French and European Union trademark registrations:

- French word trademark S-MONEY No. 3442839 registered on July 26, 2006,
- French word trademark SMONEY No. 3828686 registered on May 4, 2011,
- European Union word trademark SMONEY No. 10413871 registered on November 14, 2011,
- French figurative trademark S MONEY No. 3929892 registered on June 26, 2012.

The Complainant also owns the following domain names, which direct to the official website of S-MONEY “www.s-money.fr”, a payment platform which enables to collect funds and transfer cash to third party accounts:

- <smoney.fr> registered on May 19, 2011.

The disputed domain name <smoneypro.com> was registered by the Respondent on February 18, 2019, using a privacy service. While it previously resolved to a site reproducing the Complainant’s mark and purporting to be the Complainant’s subsidiary, at the date of the Decision, the disputed domain name states the following error message: “This site can’t be reached”.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First of all, the Complainant asserts that the disputed domain name is identical and highly similar to the prior rights of the Complainant. The Complainant points out that the disputed domain name is composed of the Complainant’s SMONEY trademark associated with the term “pro” which is the generic abbreviation of the word professional and is therefore descriptive. The Complainant argues that the addition of the term “pro” is not likely to prevent confusion between the disputed domain name and the Complainant’s prior rights, since the Complainant also used this term in connection with its trademark in order to refer to a specific offer dedicated to professionals.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name considering that the Respondent has no trademark rights in respect of the term “smoney”, neither business or legal relationship with the Complainant.

Thirdly, the Complainant argues that the disputed domain name was registered and is being used in bad faith. The Complainant points out that the Respondent used a privacy service in order to hide its identity when registering the disputed domain name and that the contact details provided by the Respondent for the registration of the disputed domain name, as revealed by the registrar, are false. The Complainant also alleges that, at the date of the Complaint, the disputed domain names resolves to a website usurping the identity of the Complainant. The Complainant provides in its Complaint screen capture of the website of the Respondent indicating that Smoney Pro is a subsidiary of the Complainant’s Group and reproducing the Complainant’s trademark in order to offer false payment services. The Complainant indicates that in all likelihood the aim of the Respondent is to lead the consumer to confusion in order to obtain contact details and personal data or even fraudulent payments.

On the basis of the above, the Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights on the SMONEY trademark.

Then, the Panel notices that the disputed domain name <smoneypro.com> is composed of (i) the leading element “smoney”, which is the exact reproduction of the SMONEY trademark, (ii) the term “pro”, and (iii) the generic Top-Level Domain (“gTLD”) “.com”.

The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

Furthermore, the Panel concurs with the opinion of several prior UDRP panels which have held that the fact that a domain name wholly incorporates a complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., BNP Paribas v. Ronan Laster., WIPO Case No. D2017-2167; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059; Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov, WIPO Case No. D2011-1474; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150).

Regarding the disputed domain name <smoneypro.com>, the Panel finds that the addition of the term “pro” to the SMONEY trademark does not prevent a finding of confusing similarity (it is the abbreviation of the word professional and can refer to an offer dedicated to professionals).

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie that the Respondent has no trademark rights in respect of the name “smoney”, neither business or legal relationship with the Complainant.

Moreover, the Panel notes that, it previously resolved to a site bearing the Complainant’s mark and at the date of the decision, the disputed domain name states the following error message: “This site can’t be reached”, what cannot be considered as a bona fide offering of goods or services. Finally, the Respondent has not provided any response to the Complainant’s contentions.

Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and are being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, 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 location or of a product or service on the respondent’s website or location.

First of all, the Panel finds that the Complainant’s trademarks were registered before the Respondent registered the disputed domain name. Then, according to the Panel, the Complainant has shown that the Respondent knew, or should have known, that its registration would be identical or confusingly similar to the Complainant’s trademark. Moreover, it appears that at the date of the Complaint, the disputed domain name resolves to a website usurping the identity of the Complainant.

Furthermore, the Respondent has employed a privacy service and has provided false contact information when registering the disputed domain name, in order to hide its identity which is an indication of its bad faith.

In addition, the Complainant has shown that the Respondent used the disputed domain name in order to usurp the Complainant’s identity for illegitimate activity including by using the Complainant’s mark to offer payment services. Even if, at the date of the decision, the disputed domain name states the following error message: “This site can’t be reached”, this does not prevent a finding of bad faith since according to prior UDRP panel decisions the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (See section 3.3 of the WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Indeed, the Panel considers the actual passive holding of the disputed domain name can prove that the Respondent acts in bad faith.

Therefore, in view of all the circumstances of this case, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).

7. Decision

For 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 <smoneypro.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: August 26, 2019