WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BPCE v. Luis Carlos Veloso
Case No. D2019-2945
1. The Parties
The Complainant is BPCE, France, represented by Inlex IP Expertise, France.
The Respondent is Luis Carlos Veloso, Brazil.
2. The Domain Name and Registrar
The disputed domain name <smoneyag.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 November 29, 2019. On December 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2019, 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 December 5, 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 December 9, 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 December 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2020.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on January 23, 2020. 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 financial and banking services company, which operates internationally in 40 countries (including Germany and Brazil), has over 30 million customers and 105,000 employees. The Complainant provides banking, financial, and real estate financing services to individuals, professionals, enterprises and institutions, in France and internationally. In Latin America, the Complainant operates through its subsidiary Natixis, S.A. The Panel, in use of the general powers articulated in the Policy, has visited the Complainant’s website and performed various searches over the Internet.
Among other products, the Complainant provides under the trademarks S-MONEY and SMONEY a digital payment solution or platform, which adapts itself to professional activities, enabling to collect funds and transfer cash to third-parties’ accounts for remote and proximity payments and to integrate payments (money pool, crowdfunding, marketplace, m-commerce, etc.).
The Complainant holds registered trademark rights in the marks S-MONEY and SMONEY, alone or in combination with other figurative elements, of which the following are sufficiently representative for the present proceeding:
French Trademark No. 3442839 S-MONEY, word, filed on July 26, 2006 and renewed on June 16, 2017, registered in classes 9, 35, 36, and 38;
French Trademark No. 3828686 SMONEY, word, filed on May 4, 2011 and registered on August 26, 2011 in classes 9, 35, 36, and 38;
French Trademark No. 3929892 SMONEY, figurative, filed on June 26, 2012 and registered on October 19, 2012 in classes 35, 36 and 38;
European Union Trade Mark No. 10413871 SMONEY, word, filed on November 14, 2011 and registered on April 23 2012 in classes 9, 35, 36, and 38.
The Complainant further owns a domain name portfolio comprising its marks SMONEY and S-MONEY, including, inter alia, <s-money.fr> and <s-money.fr>, both registered on May 19, 2011, which are linked to its corporate website in connection with its products and services.
The disputed domain name was registered on July 16, 2019. At the date of this decision, the disputed domain name is resolving to a white landing page lacking any content apart from a message informing that the site cannot be accessed, inviting to contact the website hosting provider for more information, and the image of a server and a computer screen. However, according to evidence provided by the Complainant, the disputed domain name was linked to a website in Portuguese, offering financial services, which included in its heading, before the text content of the site, the word “Smoney” (with its first letter “s” in uppercase) followed by a logo consisting of a letter “s”. The said website provided contact through an email address and two telephone numbers, including an address in Paris, France, very similar to one of the Complainant’s locations shown in Google (differing only in the street number, “168Bis-170” in the website linked to the disputed domain name, and “170” in the Complainant’s location as shown in Google).
5. Parties’ Contentions
Key contentions of the Complaint may be summarized as follows:
The disputed domain name is confusingly similar to the Complainant’s trademark rights. The disputed domain name reproduces the Complainant’s trademarks SMONEY/SMONEY placed in leading position, adding the letters "ag", which are the descriptive German abbreviation for the term “Aktiengesellschaft" equivalent to stock company.
The Respondent has no rights or legitimate interests in the disputed domain name, having no prior rights (including trademark rights) in the term “smoney”. The Complainant has neither authorized nor licensed the Respondent to use its trademarks, not existing any relationship between the Parties. The Respondent has pretended to be the Complainant including in the website linked to the disputed domain name the mark SMONEY in the top of the page, offering financial services, and including a location in almost the same address of one of the Complainant’s locations.
The disputed domain name was registered and is being used in bad faith. The Respondent has hidden his identity when registering the disputed domain name to avoid being notified of a UDRP proceeding. In addition, the Respondent included the Complainant’s trademark in the website linked to the disputed domain name and mentioned an almost identical address to one of the Complainant’s, with the intention to mislead the consumers, taking advantage of the reputation and credibility of the Complainant, presumably to obtain contact details and personal data of Internet users and/or fraudulent payments. The use of the disputed domain name for an illegitimate activity such as phishing evidences the Respondent’s bad faith, and the misuse of information derived from phishing activity may lead to tainting or tarnishing the trademark. It is in the interest not only of the Complainant but also of the consumers to avoid the use of the disputed domain name for misleading the Internet users.
The Complainant has cited previous decisions under the Policy that it considers supportive of its position.
The Complainant requests the transfer of the disputed domain name.
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 divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute.
Paragraph 15(a) of the Rules provides that “a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Policy. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A. Identical or Confusingly Similar
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 identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element, although the nature of such additional term(s) may bear on assessment of the second and third elements. See sections 1.7 and 1.8 of WIPO Overview 3.0.
Further, the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements. See section 1.11, WIPO Overview 3.0.
The Complainant indisputably has rights in the registered trademarks SMONEY/S-MONEY. The disputed domain name incorporates the trademark with no hyphen SMONEY, followed by the letters “ag”, which may have various meanings included in the dictionary and do not avoid confusing similarity with the mark. The Complainant’s trademark SMONEY/S-MONEY is directly recognizable in the disputed domain name, and the gTLD “.com” adds no distinctive meaning, being a technical requirement, generally disregarded for the purpose of the analysis of confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name to the Respondent, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant has alleged that the Respondent is not a licensee nor has he been otherwise authorized to use the trademarks SMONEY or S-MONEY, existing no relationship between the Parties. Furthermore, as the Complainant has asserted the disputed domain name has been used in connection with a website in the same business of the Complainant (the banking and financial sector), including the Complainant’s trademark as well as a location almost identical to one of the Complainant’s, creating a high risk of implied affiliation and confusion for Internet users.
This effectively shifts the burden of producing evidence of rights or legitimate interests in the disputed domain name to the Respondent. However, the Respondent has chosen not to reply to the Complaint, not providing any explanation or evidence of rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in the disputed domain name by demonstrating, without limitation:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
A core factor in assessing fair use of a domain name is whether the domain name falsely suggests affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety (with no hyphen), followed by the letters “ag”, which may point to an intention to confuse Internet users seeking for or expecting the Complainant corroborated by the website content that was linked to the disputed domain name. Among other possible meanings included in the dictionary, the letters “ag” are the common abbreviation for “Aktiengesellschaft” (a company form similar to a limited company in Germany) when these letters are used in capitals after the name of the company. This possible meaning of the letters “ag” is corroborated by the content of the website that was linked to the disputed domain name. Screenshots included in the Complaint show various references to the term “Smoney” followed by the letters “AG” in capitals (“Smoney AG” or “Grupo Smoney AG”) and said website referred to the same business of the Complainant (banking and financial services). Therefore, the Panel considers that there is a risk of implied affiliation and confusion that may lead Internet users to believe that the disputed domain name is owned or related to the Complainant or to a subsidiary of the Complainant (probably of German origin).
The Panel further notes the high presence over the Internet of the trademarks SMONEY/ S-MONEY in connection to the Complainant’s online platform for payment, transfer and banking services.
It is further remarkable the Respondent has taken down the website linked to the disputed domain name, since being notified of the Complaint, not replying to the Complaint and not providing any explanation connected to the above-mentioned circumstances (included in paragraph 4(c) of the Policy) or any other that may be considered as a fair use or legitimate interest in the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all the cumulative facts and circumstances indicate that the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith”.
At the time of the disputed domain name’s registration, this Panel considers unlikely that the Respondent did not know about the SMONEY and S-MONEY marks, and did not have these marks in mind. Several factors in this case lead to this conclusion.
The Panel notes the extensive presence of the Complainant’s trademarks (SMONEY/ S-MONEY) over the Internet, and their use internationally, including, among other jurisdictions, Brazil, where the Complainant operates through a subsidiary (Natixis, S.A.) and where the Respondent is located (according to the information provided in the disputed domain name’s WhoIs). The Complainant also operates in Germany. The Panel, in use of the general powers articulated in the Policy, has visited the Complainant’s site and performed various searches over the Internet.
Under these circumstances, the disputed domain name incorporates the Complainant’s trademark in its entirety (with no hyphen), which intrinsically creates a likelihood of confusion or a risk of implied affiliation, adding the letters “ag” that may also point to the Complainant or one of its subsidiaries, possibly referring to the abbreviation of “Aktiengesellschaft”. Further, the disputed domain name was used in connection to a website that directly referred to the Complainant’s trademark SMONEY being related to the same business (banking and financial services), which increases the intrinsic risk of confusion and association. Said website indicated in its contact details an address in Paris (France), which does not seem to be related to the Respondent and it is almost identical to one of the Complainant’s locations, and the Respondent has hidden his identity when registering the disputed domain name. All these circumstances point to an intention to create confusion or affiliation with the Complainant to mislead Internet users.
The Panel further notes that the reaction of the Respondent to the Complaint, taking down the website linked to the disputed domain name and not providing any explanation or evidence supporting any rights or legitimate interests in the disputed domain name.
The Policy’s non-exhaustive list of bad faith circumstances in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
Taking into account all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered and used, targeting the marks SMONEY or S-MONEY, with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its trademark, trying to misleadingly attract Internet users to the Respondent’s website, and disrupting the Complainant’s business. It is further highly probable that the Respondent acted in bad faith with the intention to obtain sensible private information and/or fraudulent payments from its website visitors or through emails connected to the disputed domain name, in a fraud or phishing scam, based on the association with the trademarks SMONEY/S-MONEY and the Complainant, presumably acting as one of its subsidiaries.
All the above-mentioned leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of the Policy.
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 <smoneyag.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: February 5, 2020