WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boursorama S.A. v. Julio Jaime
Case No. D2019-3197
1. The Parties
The Complainant is Boursorama S.A., France, represented by Nameshield, France.
The Respondent is Julio Jaime, Finland.
2. The Domain Names and Registrar
The disputed domain names <clients-boursorama.best˃, ˂clients-boursorama.host˃ and ˂clients-boursorama.site> (the “Domain Names”) are registered with Registrar of Domain Names REG.RU LLC.
3. Procedural History
The Complaint involving the Domain Name <clients-boursorama.host˃ was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2019. The Complainant involving the Domain Names <clients-boursorama.best˃ and ˂clients-boursorama.site> was filed in English with the Center on January 2, 2020. On December 30, 2019 and January 2, 2020, the Center transmitted by email to the Registrar a request for registrar verifications in connection with the Domain Names. On January 9 and 15, 2020, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the Domain Names which differed from the named Respondents and contact information in the Complaints. The Center sent email communications to the Complainant on January 10 and 23, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 10 and 15, 2020, the Center sent email communications in English and Russian regarding the language of the proceeding. The Complainant requested English to be the language of the proceeding on January 10 and 15, 2020. The Respondent did not comment on the language of the proceeding. The Complainant filed an amended Complaint in English on January 27, 2020, which has also added the Domain Names <clients-boursorama.best˃ and ˂clients-boursorama.site> to the current 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 Russian of the Complaint, and the proceedings commenced on January 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2020.
The Center appointed Olga Zalomiy as the sole panelist in this matter on March 5, 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 online brokerage and online banking company.
The Complainant is the owner of the several BOURSORAMA trademark registrations, such as the European Union trademark No. 001758614 registered on October 19, 2001.
The Respondent registered the Domain Name ˂clients-boursorama.host˃ on December 28, 2019. The Respondent registered the Domain Name ˂clients-boursorama.site˃ on December 31, 2019 and the Domain Name ˂clients-boursorama.best˃ on January 1, 2020. The Domain Names do not resolve to any active websites.
5. Parties’ Contentions
A. Complainant
The Complainant claims that it is a pioneer and leader in online brokerage, Internet financial information and online banking. The Complainant asserts that it is the owner of several trademark registrations for the BOURSORAMA trademark, such as the European Union trademark No. 001758614 registered on October 19, 2001. The Complainant alleges that it owns a number of domain names incorporating its BOURSORAMA trademark.
The Complainant states that the Domain Names are confusingly similar to its well-known and distinctive trademark BOURSORAMA and its associated domain names. The Complainant contends that the addition of the word “clients” in the Domain Names is not sufficient to avoid likelihood of confusion with the Complainant’s mark. The Complainant argues that the addition of the new generic Top-Level Domains (“gTLDs”) “.host”, “.site” and “.best” does not prevent the likelihood of confusion between the Domain Names and the Complaint and its trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant asserts that the Respondent is not commonly known by the Domain Names because its WhoIs information is not similar to the Domain Names. The Complainant states that the Respondent is not affiliated, licensed or authorized by the Complainant to use the Complainant’s mark in any way. The Complainant contends that the Respondent cannot use the Domain Names in good faith without avoiding the likelihood of confusion with the Complainant’s trademark. The Complainant asserts the Domain Names are inactive.
The Complainant argues that the Domain Names were registered and are being used in bad faith. The Complainant contends that given the distinctiveness of the Complainant’s trademark and reputation, it is inconceivable that the Respondent could have registered the Domain Names without actual knowledge of the Complainant’s rights in the BOURSORAMA trademark. The Complainant alleges that inactiveness of the Domain Names demonstrates the lack of legitimate use of the Domain Names. The Complainant claims that the Respondent registered and used the Domain Names to create likelihood of confusion with the Complainant’s trademark as to source, affiliation or endorsement.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Under paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the parties agree to use a different language, or the registration agreement provides otherwise. The Panel has the right to determine the language of the administrative proceeding based on the circumstances of the case.
Because the language of the Registration Agreement for the Domain Names is Russian, the default language of the administrative proceeding should be Russian. The Complainant requested that English be the language of the administrative proceeding because of the following: (i) the Complainant is unable to communicate in Russian. It would put a significant financial burden on the Complainant if it is required to translate the Complaint and accompanying documents into Russian; (ii) the Domain Names are comprised of the words in Romain characters and not in Cyrillic; (iii) the English language is the language that is most widely used in international relations; and (iv) the Center notified the Respondent of the proceeding in Russian and gave the Respondent an opportunity to object to the choice of the language of the proceeding.
Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, […] (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint”. See section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel grants the Complainant’s request that English be the language of this proceeding because of the following circumstances: (i) the Center notified the Respondent of the proceeding in both English and Russian, but the Respondent failed to respond to such notice and invitation to file a response in the proceeding; (ii) the Complainant is not conversant with the Russian language and would have to incur significant additional cost in the proceeding, if it were required to proceed in the Russian language; (iii) the Domain Names are comprised of the English word “clients”, the Complainant’s trademark and the gTLDs “best”, “host” and “site”, each of which is an English word, which indicates that the Respondent understands English.
6.2. Substantive Issues
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Names:
(i) the Domain Names are 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 Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The evidence of file shows that the Complainant owns the European Union trademark registration for the BOURSORAMA trademark. Pursuant to section 1.2.1 of the WIPO Overview 3.0, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.
The Domain Names incorporate the Complainant’s BOURSORAMA trademark in its entirety. The only difference between the foregoing Domain Names and the Complainant’s BOURSORAMA trademarks are the addition of the descriptive word “clients” followed by a hyphen (“-”) and by gTLDs “.best”, “.host” or “.site”. It is well established that 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 name1 and the only deviation from this is the inclusion of numbers, letters or a term2 as a prefix or a suffix, such prefix or suffix does not negate the confusing similarity between the disputed domain name and the mark. In this case, the descriptive word “clients” and the hyphen, do nothing to distinguish or to negate the confusing similarity between the Domain Names from the Complainant’s BOURSORAMA trademark. Because “[t]he applicable gTLD in a domain name […] is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”3, the gTLDs “.best”, “.host” and “.site”. do not negate the confusing similarity between the Domain Names and the Complainant’s trademark.
Thus, the Domain Names are confusingly similar to the Complainant’s BOURSORAMA trademark and the first element of the UDRP has been satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the UDRP, the Complainant must make out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.
The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Names because (i) the Complainant never authorized, consented to, or licensed the Respondent to use the BOURSORAMA mark or to register any domain name incorporating the Complainant’s mark, (ii) the Complainant does not have any business with the Respondent, and (iii) the Respondent has not been commonly known by the Domain Names.
The Respondent’s non-use, or passive holding, of the Domain Names is further evidence that it does not have any rights or legitimate interests in the Domain Names. See, e.g., Bayerische Motoren Werke AG v. David Weiss, Weiss Ent, WIPO Case No. D2017-2145 (“The Panel agrees that the use of the disputed domain name in connection with a ‘coming soon’ website is analogous to non-use or passive holding, which does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use.”)
The Respondent has not been commonly known by the Domain Names. The WhoIs information on file shows that the Respondent identified itself as “Julio Jaime”. In addition, the Respondent provided no evidence that the Respondent owns trademark registrations under the Domain Names.
The Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Names shifted to the Respondent. Because the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied the second element of the UDRP.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Names were registered and are being used in bad faith. The Complainant contends that that the Respondent registered the Domain Names in bad faith because it knew of the Complainant’s trademark at the time of the Domain Names’ registration. The evidence on file shows that the composition of the Domain Names is similar to the domain name of the Complainant ˂clients-boursorama.com˃, and that the Domain Names are registered more than eighteen years after the Complainant’s trademark registration. Given the distinctiveness of the Complainant’s mark, the registration of the Domain Names - many years after the registration of the Complainant’s mark and the composition of the Domain Names that include the descriptive word “clients” along with the Complainant’s trademark, it is likely that the Respondent targeted the Complainant at the time of the Domain Names’ registration and registered the Domain Names in bad faith to trade on the goodwill of the Complainant’s trademark.
It is well-established that non-use of a domain name would not prevent a finding of bad faith under certain circumstances4. The following circumstances have been considered “relevant in applying the passive holding doctrine 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; and
[…]
(iv) the implausibility of any good faith use to which the domain name may be put”. 5.
All of those circumstances are present in this case. The Complainant’s mark is distinctive. The Respondent failed to submit a response or to provide any evidence of actual or contemplated good-faith use of the Domain Names. In the Panel’s view, any good faith use of the Domain Names is implausible.
Therefore, the Panel finds that the Domain Names were registered and are being used in bad faith. The third element of the UDRP has been satisfied.
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 Domain Names <clients-boursorama.best˃, ˂clients-boursorama.host˃ and ˂clients-boursorama.site> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: March 16, 2020
1 Section 1.7, WIPO Overview 3.0.
2 Section 1.8, WIPO Overview 3.0.
3 Section 1.11, WIPO Overview 3.0.
4 Section 3.3, WIPO Overview 3.0.
5 Id.