WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boursorama S.A. v. Pencreach Jacques
Case No. D2021-1198
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 <boursorama-client.top> 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 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 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 26, 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 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2021.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on June 1, 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 brokerage, online banking, and financial information services on the Internet.
The Complainant owns several domain names, notably <boursorama.com> (Annex 5 to the Complaint).
The Complainant is the owner of several trade mark registrations, such as (Annex 4 to the Complaint):
- The European Union Trade Mark registration No. 001758614 for the word mark BOURSORAMA, registered on October 19, 2001, in classes 9, 16, 35, 36, 38, 41 and 42
The disputed domain name was registered on April 17, 2021. Presently, no active webpage resolves from the disputed domain name.
5. Parties’ Contentions
The Complainant claims to be a pioneer and leader in its three core businesses, having 2.6 million customers and being the first French online banking platform, as well as the first French financial and economic information site.
According to the Complainant, the disputed domain name incorporates entirely its distinctive trade mark BOURSORAMA with the addition of a hyphen, the term “client” and the extension “.top”, such addition not being sufficient to exclude a confusing similarity between them.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:
i. the Respondent is not commonly known by the disputed domain name;
ii. the Respondent is not affiliated with nor authorized by the Complainant in any way, not having been granted authorization or license to make any use of the Complainant’s trademark, or apply for the registration of the disputed domain name;
iii. the disputed domain name is inactive which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Regarding the registration of the disputed domain name in bad faith, the Complainant claims that its trade mark is so well-known that “it is inconceivable that the Respondent could have registered the disputed domain name without actual knowledge of Complainant’s rights in the trademark”.
Finally, regarding the use of the disputed domain name in bad faith, the Complainant indicates that “the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”.
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 trademark 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.
The disputed domain name incorporates the Complainant’s trade mark in its entirety with the addition of a hyphen and the term “client”. This addition does not prevent the disputed domain name from being confusingly similar with the trade mark BOURSORAMA, which remains immediately perceivable. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
Moreover, the disputed domain name is incorporates the generic Top-Level Domain (“gTLD”) “.top”. The addition of this gTLD does not change the overall impression given by the disputed domain name. Indeed, as to assessing the identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
i. before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
ii. the Respondent (as individuals, businesses, or other organizations) has been commonly known by the disputed domain name, in spite of not having acquired trade mark or service mark rights; or
iii. the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainant has made a prime facie case that the Respondent has not been commonly known by the disputed domain name 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 a domain name incorporating its BOURSORAMA trade mark. Also, according to the evidence submitted by the Complainant, the inactivity of the disputed domain name indicates that it is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
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 designed to target the Complainant. Indeed, it combines the trade mark BOURSORAMA, which is both inherently distinctive and well known in France, with a word “client” that evokes the Complainant’s activities. Indeed, as a whole the combination “boursorama-client” 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 name was registered in bad faith.
Regarding the use of the disputed domain name, the Complainant relies on the doctrine of bad faith passive holding. In the opinion of this Panel, the conditions for a finding of bad faith passive holding are satisfied in this case. See WIPO Overview 3.0, section 3.3. Indeed, the Respondent, who is domiciled in France, can hardly ignore the existence and reputation of the trade mark BOURSORAMA of the Complainant in the field of banking services. This presumption of knowledge is confirmed by the configuration of the disputed domain name, as explained above. Hence, the Panel cannot foresee any possible legitimate use of the disputed domain name: the connection is too obvious. The disputed domain name will be perceived by Internet users as hosting webpages allowing connections to the private areas facilitated by the Complainant. Furthermore, the Respondent has not submitted a response or provided any evidence of actual or contemplated good faith use.
Besides, 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, 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 <boursorama-client.top> be transferred to the Complainant.
Date: June 14, 2021