WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BforBank v. Privacy Hero Inc. / Pat Honey Salt, Honey Salt ltd,
Case No. D2021-0765
1. The Parties
The Complainant is BforBank, France, represented by Nameshield, France.
The Respondent is Privacy Hero Inc., United Kingdom / Pat Honey Salt, Honey Salt ltd, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <bforbank.sucks> is registered with Rebel Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2021. On March 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 2021, 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 March 17, 2021, 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 March 17, 2021.
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 March 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2021. On the same date, the Center received an email communication requesting a four-day extension for the Response. The Center responded by email of April 16, 2021, asking for clarification of the correspondent’s relationship with the Respondent and also pointing out that the Rules make no provision for an extension of time after the due date for the Response had passed.
The Center appointed Adam Taylor as the sole panelist in this matter on April 21, 2021. 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 an online bank launched in October 2009 by Crédit Agricole Regional Banks. The Complainant offers banking, savings, investment and credit services under the name “BforBank”. Its main website is located at the domain name <bforbank.com>.
The Complainant owns European Union trade mark no. 8335598 for BFORBANK, filed on June 6, 2009, registered on December 8, 2009, in classes 9, 35, 36 and 38.
The disputed domain name was registered on January 20, 2021.
As of March 12, 2021, the disputed domain name resolved to a website entitled “Bforbank Sucks Customer Reviews and Feedback” and “Tell the world why Bforbank sucks!” with a series of one-star reviews about the Complainant. The website included links to similar websites relating to other brands.
When visited by the Panel, the site included the following:
“Everything.sucks is a non-profit organization and communications forum for social activism. This website allows users a voice to share their point of view online about what sucks in the world.
We occasionally buy a dot sucks domain and point it at a specific page. We do this to bring awareness to our site and because, well, we love the dot sucks domain. If you ask us if we would sell the domain, our answer is simple. Absolutely not. We will give it to you.
If the domain pointing at this page inspires passion in you and you want to build a fuller site around it, you can have it. That’s right, we will simply give it to you. We want to promote more sites on the Internet where people can share their voices…”
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions:
The disputed domain name is confusingly similar to the Complainant’s distinctive trade mark, which it incorporates entirely.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has not authorised the Respondent to use its trade mark.
The Respondent is not known by the disputed domain name. It is not identified in the WhoIs database by reference to the disputed domain name.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The website comprises unverifiable fake content and presents a misleading view of the Complainant’s activities.
The website contains no criticisms of the Complainant by the Respondent itself but, rather, consists of old posts copied from other websites.
The Respondent’s website is not a true “gripe” site and does not represent a genuine exercise of the right to free speech.
The Respondent has used its website as a pretext to justify its registration of the disputed domain name in order to take unfair advantage of the Complainant’s reputation for financial gain.
The disputed domain name was registered and is being used in bad faith.
The disputed domain name has not been used in connection with genuine noncommercial criticism of the Complainant by the Respondent or by third parties. The content has been automatically generated.
The Respondent’s real aim is to take unfair commercial advantage of the Complainant’s trade mark by directing Internet traffic to other websites of the Respondent or of a related third party.
The Respondent has found to have engaged in a pattern of such conduct in previous UDRP cases. See, e.g., Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836, in relation to the domain name <sanofi.sucks>.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the mark BFORBANK by virtue of its registered trade mark.
The disputed domain name consists of the Complainant’s trade mark, followed by the Top-Level Domain (“TLD”) / negative term: “.sucks”. TLDs are generally disregarded for the purposes of comparison with a trade mark under the first element.
In any case, section 1.13 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that a domain name consisting of a trade mark and a negative or pejorative term such as <[trademark]sucks.com> or <trademark.sucks> is considered confusingly similar to the complainant’s trade mark for the purpose of satisfying standing under the first element and that the merits of such cases, in particular as to any potential fair use, are typically decided under the second and third elements. This approach observed avoids gaming scenarios whereby appending a “sucks variation” would potentially see such cases fall outside the reach of the UDRP.
For the above reasons, the Panel concludes that the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(iii) of the Policy, the Respondent has used the disputed domain name for a website criticizing the Complainant.
UDRP jurisprudence recognises that the use of a domain name for fair use such as noncommercial free speech would in principle support a respondent’s claim to a legitimate interest under the Policy. See section 2.6 of WIPO Overview 3.0.
As explained in section 2.6.3 of WIPO Overview 3.0, where the domain name comprises the mark plus a derogatory term (e.g., <trademarksucks.tld>), panels tend to find that the respondent has a legitimate interest in using the trade mark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false. Some panels have found in such cases that a limited degree of incidental commercial activity may be permissible in certain circumstances (e.g., to offset registration or hosting costs associated with the domain name and website).
However, the Panel notes the following:
First, the Respondent has not filed a Response in this proceeding to contest the Complainant’s assertion that the Respondent has used its website as a pretext to take unfair advantage of the Complainant’s trade mark for financial gain.
Second, a previous UDRP case, which the Respondent unsuccessfully defended, concluded that the Respondent’s use of a similar website for another “sucks” domain was a pretext to create the appearance of legitimacy and that the Respondent’s real purpose was more likely to have been a commercial one. See Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836. Amongst other things, the panel observed that, in the absence of a plausible explanation from the Respondent, it was likely that the Respondent included links to its other “sucks” websites in order to increase their traffic, and therefore their potential sale price. The Panel thinks it reasonable to make the same inference in this case, especially as the Respondent has not appeared in this case to argue otherwise. This conclusion is not altered by the fact that the website at the disputed domain name purportedly offers to “give” the disputed domain name to whoever wants it. Even if this offer is genuine, it does not of itself provide a justification for the Respondent’s inclusion of links to its other “sucks” websites. Nor is the Panel convinced by the Respondent’s assertion that it generally links “dot sucks” domain names to other pages simply “to bring awareness to our site and because, well, we love the dot sucks domain”. This has all the hallmarks of a defensive statement following the previous UDRP case mentioned above.
Third, the Complainant has established that at least one of the reviews on the website is identical to a review on Trustpilot. In the absence of any justification from the Respondent, such as evidence that the reviewer independently posted the same review on the Respondent’s website or that the Respondent was authorised to reproduce the review, this supports the impression that the website was not genuinely created for free speech but, rather, for an ulterior and illicit commercial purpose.
Accordingly, for the above reasons, the Panel considers that, on the balance of probabilities, the disputed domain name was not registered for genuine and noncommercial criticism of the Complainant:
Nor is there any evidence that paragraphs 4(c)(i) or (ii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
As explained above, the Panel has concluded that the Respondent registered and used the disputed domain name for a website that purported to be a legitimate criticism site but that, on the balance of probabilities, was more likely to have been designed to profit by taking unfair advantage of the Complainant’s trade mark by increasing traffic to its other websites.
The Panel also notes that the Respondent has engaged in a pattern of such conduct. See, e.g., Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836.
In these circumstances, the Panel considers that the Respondent has registered and is using the disputed domain name in bad faith and that the Complainant has established the third element of paragraph 4(a) 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 <bforbank.sucks> be transferred to the Complainant.
Date: May 5, 2021