WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boursorama S.A. v. Rachid Gormoz
Case No. D2020-2299
1. The Parties
The Complainant is Boursorama S.A., France, represented by Nameshield, France.
The Respondent is Rachid Gormoz, Morocco.
2. The Domain Names and Registrar
The disputed domain names <clientes-boursorama.com> and <clientes-boursorama.online> are registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2020. On September 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 3, 2020, 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 for the disputed domain names.
The Center verified that the 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 September 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2020.
The Center appointed Zoltán Takács as the sole panelist in this matter on October 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
Founded in 1995 the Complainant is France’s leading online bank with more than 2.3 million customers.
The Complainant is owner of several BOURSORAMA trademarks, including the European Union Trademark Registration (“EUTM”) No. 001758614 for the word mark BOURSORAMA, registered on October 19, 2001, for goods and services of classes 9, 16, 35, 36, 38, 41 and 42 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks.
Since February 28, 1998, the Complainant owns the domain name <boursorama.com>, which links to its institutional website.
The disputed domain names <clientes-boursorama.com> and <clientes-boursorama.online> were registered on August 31, 2020, and have not resolved to an active website since registration.
5. Procedural issues
The first procedural issue is whether the Complainant is entitled to file a Complaint relating to two domain names against the Respondent.
Paragraph 3(c) of the Rules provides that a complainant may relate to more than one domain name provided that the domain names are registered by the same domain name holder. Since the disputed domain names have been registered by the Respondent, the Panel finds that this criteria is fulfilled.
Paragraph 11 of the Rules directs that in absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. The language of the Registration Agreements for the disputed domain names is English which the Panel establishes as the language of this administrative proceeding.
6. Parties’ Contentions
The Complainant contends that the disputed domain names <clientes-boursorama.com> and <clientes-boursorama.online> are confusingly similar to its BOURSORAMA trademark since it is clearly recognizable within the disputed domain names and the generic words “clientes” (meaning “clients” in French) added by the Respondent are not sufficient to avoid confusing similarity.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy.
The Complainant claims that it is reasonable to infer that the Respondent has registered the disputed domain names with full knowledge of its BOURSORAMA trademark and that it is not possible to conceive of any legitimate use of the domain names by the Respondent.
The Complainant requests that the disputed domain names be transferred from the Respondent to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(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
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain names are identical or confusingly similar to the trademark or service mark.
It has been a consensus view among previous UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced evidence of having registered rights in the BOURSORAMA trademark and for the purpose of this administrative proceeding, the Panel finds that the EUTM No. 001758614 satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainant’s trademark rights in the BOURSORAMA trademark, the Panel next assesses whether the disputed domain names <clientes-boursorama.com> and <clientes-boursorama.online> are identical or confusingly similar to the Complainant’s BOURSORAMA trademark.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) would not prevent a finding of confusing similarity under the first element.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.int” etc.) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
The Complainant’s BOURSORAMA trademark is clearly recognizable within the disputed domain names.
The descriptive elements in the disputed domain names (terms “clientes”, meaning “clients” in French) in view of the Panel do not prevent a finding of confusing similarity between the disputed domain names <clientes-boursorama.com> and <clientes-boursorama.online> and the Complainant’s BOURSORAMA trademark.
The fact of confusing similarity between the Complainant’s BOURSORAMA trademark and the disputed domain names stems from the evident use of the Complainant’s BOURSORAMA trademark in the disputed domain names and the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the BOURSORAMA trademark.
The Complainant has never authorized the Respondent to use its BOURSORAMA trademark in any way, and its prior rights in the BOURSORAMA trademark precede the date of registration of the disputed domain names.
According to section 2.1 of the WIPO Overview 3.0, 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 a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the 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.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have acquired the domain name 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 the 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.”
The disputed domain names have not resolved to active websites since registration and there is no evidence that the disputed domain names are used in any active way.
According to section 3.3 of the WIPO Overview 3.0, from inception of the UDRP, UDRP panels have consistently found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding.
Factors that 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,
(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.
The Respondent’s reproduction of the Complainant’s inherently distinctive BOURSORAMA trademark in the disputed domain names convinces the Panel that the Respondent was aware of the Complainant’s trademark at the time of obtaining the disputed domain names and chose to register them in order to illegitimately exploit the reputation behind the Complainant’s trademark.
The Respondent’s lack of any rights or legitimate interests in the disputed domain names, absence of any conceivable good faith use of the disputed domain names by the Respondent, failure to react and respond to conclusive evidence submitted by the Complainant in view of the Panel support and undisputed presumption of the Respondent’s evident targeting of the Complainant’s trademark rights and suggest that the Respondent’s non-use of the disputed domain names is in bad faith.
In view of the Panel, noting the above discussed facts and circumstances, paragraph 4(a)(iii) of the Policy is satisfied.
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 <clientes-boursorama.com> and <clientes-boursorama.online> be transferred to the Complainant.
Date: October 15, 2020