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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boursorama S.A. v. Pencreach Jacques

Case No. D2021-1112

1. The Parties

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

Respondent is Pencreach Jacques, France.

2. The Domain Name and Registrar

The disputed domain name <boursoramafr.info> is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2021. On April 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 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 Complainant on April 20 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 21, 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 Respondent of the Complaint, and the proceedings commenced on April 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2021. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2021.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on May 20, 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

Complainant is the Company BOURSORAMA S.A., founded in 1995, and is specializing online brokerage, financial information on the Internet and online banking. It has become a reference for online financial products in France and in Europe.

Complainant owns many trademarks throughout the world and provides evidence of one trademark registration for the sign BOURSORAMA, including:

- The European Union trademark registration No. 001758614 BOURSORAMA, registered on October 19, 2001, in classes 9, 16, 35, 36, 38, 41 and 42, and duly renewed since then.

Complainant is also operating several domain names reproducing the sign BOURSORAMA in connection its activities, and in particular the domain name <boursorama.com>, registered on February 28, 1998.

The disputed domain name <boursoramafr.info> has been registered on April 11, 2021 and redirects to a parking page with “Real content coming soon”.

5. Parties’ Contentions

A. Complainant

First, Complainant asserts that the disputed domain name is confusingly similar to its well-known and distinctive BOURSORAMA trademark

Complainant specifies that the addition of the letters “fr” (for “France”) and the generic Top-Level Domain (“gTLD”) suffix “.info” do not prevent the risk of confusion.

Then, Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant recalls that it must make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name and that once such prima facie case is made, the burden of demonstrating rights or legitimate interests in the disputed domain name shift to Respondent.

Complainant considers that Respondent is not identified in the WhoIs database as the disputed domain name, and is not commonly known by the disputed domain name.

Complainant further states that Respondent is not licensed by, affiliated or related with, or authorized by Complainant in any way to make any use of Complainant’s BOURSORAMA trademark or apply for registration of the disputed domain name.

Besides, Complainant underlines that the disputed domain name redirects to a parking page and that such use is not a bona fide offering of goods and services or a legitimate noncommercial or fair use.

Finally, Complainant comes down to the conclusion that Respondent registered and uses the disputed domain name in bad faith.

Complainant first underlines the well-known character and reputation of its BOURSORAMA trademark to claim that Respondent could not have registered the disputed domain name without constructive knowledge of Complainant’s rights in said trademark.

Then, Complainant considers that because the disputed domain name redirects to a parking page, Respondent has not demonstrated any activity under the disputed domain name. Complainant adds that it is not possible to foresee any plausible actual or contemplated active use by Complainant of the disputed domain name that would not be illegitimate. Complainant relies on previous panel decisions holding that the incorporation of a famous mark into a domain name in connection to an inactive website can be held as evidence of registration and use in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, and is therefore in default.

6. Discussion and Findings

According to Policy 4(a) there are three conditions that the Complainant must satisfy in order to obtain a decision that the disputed domain name registered by the Respondent be deleted or transferred to the Complainant:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has proved that it owns trademark rights in the BOURSORAMA sign.

Complainant emphasizes that the disputed domain name reproduces its BOURSORAMA trademark in its entirety.

This is usually considered sufficient to establish that a disputed domain name is confusingly similar to a complainant’s trademarks as soon as the disputed domain name incorporates the complainant’s trademark in its entirety, along with a term and the gTLD extension. It is clear that the part of the disputed domain name consisting of Complainant’s trademark is the dominant feature of the disputed domain name, being clearly recognizable. This is sufficient to establish that the disputed domain name is confusingly similar to Complainant’s trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). (See Compagnie Générale des Etablissements Michelin v. Zhichao, WIPO Case No. D2020-1886).

The Panel agrees and finds that the disputed domain name is confusingly similar to Complainant’s BOURSORAMA trademark.

Complainant considers that the addition of the letters “fr” and the gTLD suffix “.info” are not sufficient to prevent a finding of confusing similarity. Previous UDRP decisions have found that the mere addition of symbols such as a hyphen or of descriptive/geographical terms to a trademark in a domain name do not prevent a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).

It is also well established that the addition of a gTLD such as “.info”, is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark. As a result, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks, and that Complainant has satisfied the first element of the Policy. (See Accenture Global Services Limited v. Peubez Patrck, WIPO Case No. D2020-1974).

In that view, the Panel considers the addition of the letters “fr” and of the gTLD “.info” to be irrelevant in the assessment of the confusing similarity between Complainant’s BOURSORAMA trademark and the disputed domain name.

Therefore, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Previous Panels have continuously held that “Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1”. (See Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Domain Administrator, See PrivacyGuardian.org / Ghuilo Dhulio, WIPO Case No. D2020-2200).

Complainant contends that Respondent is not commonly known by the disputed domain name. Noting the WhoIs information, and the evidence provided, the Panel finds that there is no evidence or reason to suggest that Respondent is commonly known by the disputed domain name.

Complainant further states that Respondent is not licensed by, affiliated or related with, or authorized by Complainant in any way to make any use of Complainant’s BOURSORAMA trademark or apply for registration of the disputed domain name. This is generally considered as a factor affirming that Respondent lacks rights or legitimate interests in the disputed domain name: “The Respondents are not a licensee of, or otherwise affiliated with, the Complainant, and have not been authorized by the Complainant to use its registered trademarks. The Respondents have not provided any evidence that they have been commonly known by, or have made a bona fide use of, the disputed domain name, or that they have, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website containing a number links (labelled ‘Related Links’), two of which contain the name ‘Rothschild’, whilst others are unrelated to the Complainant and its financial services business. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name.” (See N. M. Rothschild & Sons Limited v. Domains By Proxy, LLC and Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-2066). Consequently, the Panel finds that Respondent does not have rights nor legitimate interests in the disputed domain name.

Besides, Complainant claims that the disputed domain name redirects to a parking page that such use is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. Previous panels have indeed held that “The fact that the Domain Name was previously used to point to a parking page containing sponsored links does not represent a bona fide offering of goods or services” (see Instagram, LLC v. Jane Dew, WIPO Case No. D2019-0708). The Panel notes that the disputed domain name redirects to a parking page with the message “content coming soon”. Similarly, previous panels have found that “Respondent’s use of the disputed domain names to establish “website coming soon” pages is not a bona fide offering of goods or services” (See LEGO Juris A/S v. Nofel Izz, JID, WIPO Case No. D2019-2601).

The Panel agrees and considers that the disputed domain name is not used in connection to a bona fide offering of goods and services or a legitimate non-commercial or fair use.

Therefore, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

- Regarding bad faith registration

Complainant underlines the well-known character of its BOURSORAMA trademark and claims that Respondent could not have registered the disputed domain name without constructive knowledge of Complainant’s rights in said trademark.

In similar settings, previous Panels have held that the disputed domain name had been registered in bad faith (see Bouygues v. Laurent Bertrand, WIPO Case No. D2016-1683; Bouygues v. Angelique Benetti, WIPO Case No. D2019-1101). Moreover, Complainant claims that given the reputation and distinctiveness of Complainant’s trademark, it can be inferred that Respondent was aware of Complainant when it registered the disputed domain name (see Ferrari S.p.A v. American Entertainment Group. Inc., WIPO Case No. D2004-0673).

Considering the well-known character of Complainant’s marks at least in France and in the European Union, the Panel considers that Respondent was aware of Complainant’s rights when registering the disputed domain name.

- Regarding use in bad faith

Complainant alleges that the disputed domain name redirects to a parking page, and thus that Respondent has not demonstrated any activity in good faith under the disputed domain name. Complainant also adds that it is not possible to foresee any plausible actual or contemplated active use by Respondent of the disputed domain name that would be legitimate.

In similar circumstances, previous panels have found that such passive holding of the disputed domain name amounted to bad faith use:

“The Disputed Domain Name resolves to a parking page. The fact that the Disputed Domain Name is not being used does not preclude a finding of bad faith (see section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Section 3.3 of the WIPO Overview 3.0 considers passive holding and explains that: While panelists will look at the totality of the circumstances in each case, 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 particular circumstances of this case which lead to a conclusion of bad faith use are:

- the Trade Mark has a strong reputation and is widely known throughout the world, as evidenced by numerous registrations worldwide and the Complainant’s evidence of its reputation and size;

- the Respondent has not submitted a response or provided any evidence of actual or contemplated good-faith use; and

- the Respondent has taken active steps to conceal its true identity through a privacy service (see section 3.6 of WIPO Overview 3.0).

The Respondent’s failure to respond to the Complainant’s demand letter is additional evidence of bad faith (see Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022).

In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.” (See Anglo American PLC v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Karren Mayo, WIPO Case No. D2019-1635).

Similarly, the Panel finds that the use of the disputed domain name for a parking page displaying the message “content coming soon” does not prevent a finding of bad faith in the circumstances of this case.

As a result, the Panel finds that Complainant has satisfied 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 name <boursoramafr.info> be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist
Date: June 1, 2021

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