WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BGC France Holdings v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Jean Lanister, Onitux BG EOOD
Case No. D2021-1842
1. The Parties
The Complainant is BGC France Holdings, France, represented by SELARL W Avocats, France.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Jean Lanister, Onitux BG EOOD, Bulgaria.
2. The Domain Names and Registrar
The disputed domain names <bgcfholdings.com>, <bgc-france.com>, and <bgcfranceholdings.com> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2021. On June 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 21, 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 the first amended Complaint on June 25, 2021. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed the second amended Complaint on July 9, 2021.
The Center verified that the Complaint, together with the first and second amended Complaints, 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 July 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2021.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on August 17, 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 holding company of AUREL BGC, a global brokerage company servicing the financial markets.
The Complainant, via its parent company BGC PARTNERS L.P., has protected the BGC mark through various trademark registrations, such as BGC, French registration number 3293742, registered on May 25, 2004. BGC PARTNERS L.P. has confirmed the Complainant’s right to enforce such trademark registrations and authority to file the present UDRP Complaint.
According to the Registrar, the Domain Names were registered on February 23, 2021, April 16, 2021 and April 23, 2021, respectively. At the time of drafting the Decision, the Domain Names resolve to error pages. However, Complainant has provided evidence that the Domain Names have been used in connection to the sending of fraudulent emails.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations and the right to enforce such rights. The Complainant argues that the Domain Names are confusingly similar to the Complainant’s trademark.
The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent cannot establish rights in the Domain Names, as it has not made any use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services. On the contrary, the Complainant argues and documents that the Respondent uses the Domain Names in order to commit fraud.
The Complainant argues that the Respondent has registered and used the Domain Names to attract, for commercial gain, Internet users to a website or other online location by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement. Based on the malicious use of the Domain Names, the Respondent was aware of the trademark when registering the Domain Names. The Respondent’s use of the Domain Names to set up email accounts in an attempt to defraud by proposing fictitious investments has been reported to the police and is clearly done in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark BGC. The test for confusing similarity involves a comparison between the trademark and the Domain Names. In this case, the Domain Names incorporate the Complainant’s trademark with the addition of “-france”, “fholdings”, and “franceholdings”. The additions do not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”; see WIPO Overview 3.0, section 1.11.
The Panel finds that the Domain Names are confusingly similar to trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not granted any authorization to the Respondent to register the Domain Names containing the Complainant’s trademark or otherwise make use of its trademarks. There is no evidence that the Respondent has registered the Domain Names as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Names on the basis of use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering. Indeed, based on the evidence in the Complaint, the Domain Names seem to be employed in a criminal fraud scheme. The Respondent’s use of the Domain Names is not bona fide, but rather evidence of bad faith. See WIPO Overview 3.0, section 2.13.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Based on the malicious use of the Domain Names, the Respondent must have been aware of the Complainant when the Respondent registered the Domain Names. The Panel finds that the Respondent has used the Domain Names to attract, for commercial gain, Internet users to online locations, namely email addresses associated with the Domain Names, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement. Furthermore, use of the Domain Names to send fraudulent emails is clear evidence of bad faith. See WIPO Overview 3.0, section 3.4. The Respondent’s use of a privacy service to hide its identity is in this context further evidence of bad faith.
For the reasons set out above, the Panel concludes that the Domain Names were registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 Domain Names, <bgcfholdings.com>, <bgc-france.com>, and <bgcfranceholdings.com>, be transferred to the Complainant.
Date: August 24, 2021