WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boursorama S.A. v. Pencreach Jacques
Case No. D2021-1195
1. The Parties
The Complainant is Boursorama S.A., France, represented by Nameshield, France.
The Respondent is Pencreach Jacques, France.
2. The Domain Name and Registrar
The disputed domain name <boursoramaclient.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 19, 2021. On April 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 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 April 23, 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 April 23, 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 April 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2021.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on May 26, 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 a French corporation rendering online banking, online brokerage, and financial information services on the Internet. It indicates that it has over 2.6 million customers and that its websites receive over 50 million visits per month.
The Complainant offers its services under several domain names, including <boursorama.com>, which hosts an information portal about the financial sector.
The Complainant is the owner in particular of the European Union Trade Mark registration No. 001758614 over the word mark BOURSORAMA, filed on July 13, 2000, and registered on October 19, 2001.
The disputed domain name was registered on April 17, 2021. In the course of this proceeding the Registrar disclosed the identity of the Respondent, who appears to be an individual domiciled in France.
The disputed domain name redirects users to a website entitled “Auto Diag Service”. Available solely in French, this website promotes the services of an apparently Moroccan based entity, which is active in the field of diagnostic, installation of devices, and maintenance, for vehicles. Several attempts made by this Panel to access this website indicate that it might host malware. Access to the main page and to other pages was denied by the navigation software.
5. Parties’ Contentions
On the first element of the Policy, the Complainant claims that the disputed domain name is confusingly similar to its “well-known and distinctive” trade mark BOURSORAMA. It adds that the addition of the word “client” is not sufficient to avoid such confusion.
On the second element of the Policy, the Complainant indicates that the Respondent is not known under the disputed domain name as is clear from its identity, and has no business relationship whatsoever with the Complainant. The Respondent is not affiliated with, or authorized by, or a licensee of, the Complainant. The Complainant also argues that the use of the disputed domain name to redirect users to the website of “Auto Diag Service […] fails to confer rights and legitimate interests, as it is used to promote unrelated services”.
On the third element of the Policy, the Complainant contends on the one side that “given the distinctiveness of the Complainant's trade mark and reputation, the Complainant contends that it is inconceivable that the Respondent could have registered the disputed domain name without actual knowledge of the Complainant's rights in the trademark”. On the other side, it claims that “the disputed domain name points to the website of the company Auto Diag Service […] The Complainant contends that the Respondent attempts to attract internet users by creating a likelihood of confusion with the Complainant’s trademark. The Respondent is obtaining commercial gain from its use of the domain name and the resolving website”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
i. the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established rights over the trade mark BOURSORAMA.
This trade mark is reproduced identically and clearly perceivable in the disputed domain name.
The addition of the word “client” does not influence this finding. Indeed, as stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, “in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Noting the trade mark is clearly recognizable in the disputed domain name the addition of the term “client” does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the trade mark of the Complainant.
The Complainant has therefore satisfied the first requirement of the Policy, under article 4(a)(i).
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. 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.
In that sense, the Panel finds that the Complainant has made a prima facie case against the Respondent, which has not been commonly known by the disputed domain names and is not affiliated with the Complainant nor has it been licensed or otherwise permitted to use any of the Complainant’s trade marks or to register domain names incorporating the Complainant’s trade mark BOURSORAMA.
The Panel is also satisfied that the redirection of users to the website of a third party does not amount to fair use, here. The composition of the disputed domain name is totally unrelated to the website “Auto Diag Service”. Failing any explanation by the Respondent, the Panel cannot find any reasonable explanation as to why there could be any legitimate reason to register the disputed domain name incorporating the Complainant’s well-known trade mark for unrelated goods or services, and it is therefore likely that the disputed domain name was registered in order to take unfair advantage of the Complainant’s trade mark.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s well-known trade mark and a descriptive term, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, and absent specific allegations by the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, a complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Indisputably, the disputed domain name was specifically registered to target the Complainant. Indeed, it combines the trade mark BOURSORAMA, which is both inherently distinctive and well-known in France, with a words that evokes the Complainant’s activities. Indeed, as a whole the combination “boursoramaclient” is very likely to be perceived by the French public as a reference to the online tool through which a client can access his/her area, with all his/her personal and financial details.
Therefore, the Panel finds that the disputed domain names was registered in bad faith.
Regarding the use of the disputed domain names, the Complainant claims that the Respondent is seeking commercial gain by creating a likelihood of confusion with its trade mark BOURSORAMA. In the Panel’s view, such confusion obviously exists, as anyone faced with the combination “boursoramaclient” expects to access the services hosted by the Complainant. In this case, such confusion is solely initial, as users are directed towards a website that is totally unrelated to the Complainant or to its field of activity. However, such initial confusion is sufficient for a finding of bad faith use, as apparently the website towards which users are directed hosts malware, possibly as part of a phishing scheme. Diverting Internet users for fraudulent purposes of this nature amounts to use in bad faith. See WIPO Overview 3.0, section 3.4.
In any event, irrespective of such actual use and threat of a phishing scheme, the Panel cannot reasonably foresee any use of the disputed domain name in good faith. The connection with the Complainant’s reputed trade mark is too obvious.
Furthermore, it is apparent that the Respondent has engaged in a pattern of registering domain names that infringe the rights of the Complainant. See, e.g., Boursorama S.A. v. Pencreach Jacques, WIPO Case No. D2021-1112, in which the Panel ordered the transfer of the domain name <boursoramafr.info> to the Complainant. This is additional evidence of bad faith registration and use.
Accordingly, a finding of registration and use in bad faith is in order, and the third criteria element set out in paragraph 4(a) of the Policy is also 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 name <boursoramaclient.info> be transferred to the Complainant.
Date: June 9, 2021