WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boursorama S.A. v. tangzhang yong

Case No. D2019-1820

1. The Parties

The Complainant is Boursorama S.A., France, represented by Nameshield, France.

The Respondent is tangzhang yong, China.

2. The Domain Names and Registrar

The disputed domain names <boirsorama.com>, <boursorams.com>, <boursorsma.com> are registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2019. On July 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 12, 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 in English on August 12, 2019.

On August 12, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on August 12, 2019. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on August 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2019.

The Center appointed Jonathan Agmon as the sole panelist in this matter on September 17, 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 a European company founded in 1995 in the business of e-commerce. It has three core businesses: online brokerage, financial information on the Internet, and online banking.

The Complainant is the owner of the trademark BOURSORAMA (European Union Trademark Registration No. 001758614) registered on October 19, 2001.

The Complainant also owns many domain names that incorporate its BOURSORAMA trademark, for example, <boursorama.com> registered on March 1, 1998.

The disputed domain names were registered on July 28, 2019. The disputed domain names resolve to blank pages.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions include the following:

The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s trademark and that any differences are insufficient to prevent a likelihood of confusion with the Complainant’s trademark.

The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names as it has not licensed or permitted the Respondent to use its trademark or register the disputed domain names.

The Complainant further argues that the disputed domain names were registered and are being used in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1 Language of Proceedings

Paragraph 11 of the Rules provides that:

“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreements for the disputed domain names is Chinese.

The Complainant requested that the language of the proceeding be English.

The Respondent did not comment on the language of the proceeding.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004.)

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) the disputed domain names consist of Latin letters, rather than Chinese characters;

(ii) the Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language; and

(iii) the Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel determines that English be the language of the proceeding.

6.2 Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has provided evidence that it owns the trademark BOURSORAMA.

The only difference between the disputed domain names <boirsorama.com>, <boursorams.com> and <boursorsma.com> and the Complainant’s trademark is the purposeful misspelling of BOURSORAMA. The disputed domain name <boirsorama.com> is purposefully misspelled by replacing the letter “u” with “i", which are letters that are on adjacent keys on a QWERTY and an AZERTY keyboard. The disputed domain names <boursorams.com> and <boursorsma.com> are purposefully misspelled by replacing the letter “a” with “s”, which are letters that are on adjacent keys on a QWERTY keyboard. The Panel is of the view that such typos of the Complainant’s mark in the disputed domain names constitute the act of typosquatting and do not avoid confusing similarity with the Complainant’s mark (see Schneider Electric S.A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd., WIPO Case No. D2015-2333; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9).

Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to the trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. (See WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant has provided evidence that they registered the BOURSORAMA trademark in the European Union long before the disputed domain names were registered and that they have not licensed or otherwise permitted the Respondent to use the Complainant’s trademark. (See LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.)

Furthermore, the disputed domain names presently resolve to blank pages. Thus, the Panel finds that there is no indication that the Respondent is either making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names (see “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246).

Finally, the evidence submitted by the Complainant shows that all the details of the registrant on the WhoIs database is blank. Thus, there is no evidence that the Respondent is commonly known by the disputed domain names.

In the present case, the Respondent did not submit a Response to the Complaint and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain names sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The complainant must also show that the respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned the registration for its trademark since 2001 and this registration was active at the time the Respondent registered the disputed domain names in 2019. Thus, the Complainant’s registration of the trademark predates the Respondent’s registration of the disputed domain names by almost 20 years. In view of the evidence filed by the Complainant, and the continued and widespread use of the trademark owned by the Complainant, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names. Therefore, it is unlikely that the Respondent did not know of the Complainant’s mark prior to registration of the disputed domain names (see Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The disputed domain names are misspellings of the Complainant’s BOURSORAMA trademark and thus are confusingly similar to the Complainant’s trademark. In such cases, UDRP panels would “normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant” (see WIPO Overview 3.0, section 1.9). In the particular circumstances of the present case, the Panel is of the view that the Respondent evinced an intention to confuse unsuspecting Internet users seeking or expecting the Complainant by registering the disputed domain names that are deliberate misspellings of the Complainant’s mark.

Finally, the disputed domain names are presently inactive and resolve to blank pages. Where passive holding is found, non-use of a domain name would not prevent a finding of bad faith, and a panel will look at the totality of circumstances in each case (see WIPO Overview 3.0, section 3.3; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Examples of factors considered by previous UDRP panels include: “(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 any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put.” In this case, the Panel is of the view that the particular circumstances strongly suggest that the Respondent’s non-use of the disputed domain names is in bad faith. The Complainant’s trademark is distinctive which shows bad faith on the Respondent as it specifically targeted the Complainant, the Respondent has failed to submit a response, and it is implausible that there is any good faith use to which the disputed domain names may be put (see WIPO Overview 3.0, section 3.3; Cloudflare, Inc. v. Private Registrant, Digital Privacy Corporation / Richard Sheng, WIPO Case No. DAI2019-0001; Philip Morris Products S.A. v. Han Ming, Lin Cheng, WIPO Case No. D2018-1635).

Based on the evidence presented to the Panel, including the confusing similarity between the disputed domain names and the Complainant’s trademark, the registration of the disputed domain names after the registration of the Complainant’s trademark, the Respondent’s non-use of the disputed domain names and the failure of the Respondent to submit a response, the Panel concludes that the disputed domain names were registered and are being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 names <boirsorama.com>, <boursorams.com>, and <boursorsma.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: October 1, 2019