WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BPCE v. Marie Dubocage
Case No. D2021-2304
1. The Parties
The Complainant is BPCE, France, represented by DBK - Société d’avocats, France.
The Respondent is Marie Dubocage, France.
2. The Domain Names and Registrar
The disputed domain names <banquepopulaire-fr-se-connecter-identifier.fun>, <banquepopulaire-fr-se-connecter-identifier.online>, <banquepopulaire-fr-se-connecter-identifier.space>, and <banquepopulaire-fr-se-connecter-identifier.website> are registered with eNom, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On July 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 27, 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 July 31, 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 August 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2021.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on September 10, 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 major French financial and banking institution. Among its main subsidiaries is the French Banque Populaire, an institution that was originally created in the late 19th Century.
Banque Populaire offers in particular banking, financial, and insurance services online, through a number of domain names, including <banquepopulaire.fr>.
As a basis for its Complaint, the Complainant relies in particular on the French trade mark BANQUE POPULAIRE (word) No. 3113485 which was filed on July 25, 2001.
The disputed domain names were registered on May 17, 2021. In the course of the proceeding, the Registrar disclosed the identity of the Respondent, an individual domiciled in France.
As evidenced in the Complaint through a number of screenshots, the disputed domain names are used to distribute malware. The navigation software of the Complainant has therefore blocked the access to the webpages hosted under these disputed domain names. Otherwise, the main pages of three of the disputed domain names are inactive (<banquepopulaire-fr-se-connecter-identifier.fun>, <banquepopulaire-fr-se-connecter-identifier.online>, <banquepopulaire-fr-se-connecter-identifier.space>), and the remaining one (<banquepopulaire-fr-se-connecter-identifier.website>) displays information regarding its registration through the Registrar.
5. Parties’ Contentions
In essence, the Complainant argues as follows:
On the first element of the Policy, the Complainant states that “The Litigious Domain Names contain in their entirety the well-known Trademarks and Domain Names with addition of the French words ‘se connecter’ and ‘identifier’ with separative dashes, which does not prevent a finding of confusing similarity. On the contrary, as they are the French translation of ‘connect’ and ‘identify’, they will be understood as a reference to the personal portal of Banque Populaire customers or will be disregarded by the Internet Users”.
On the second element of the Policy, the Complainant indicates that it has never authorized in any manner the Respondent to register domain names that incorporate its trade mark BANQUE POPULAIRE. It adds that the Respondent is not making a bona fide use of the disputed domain names, as they are used to distribute malware, possibly as part of a phishing scheme.
On the third element of the Policy, the arguments of the Complainant are threefold. First, it claims that the disputed domain names were registered in bad faith because of the fame of its trade marks. It mentions the existence of prior UDRP cases involving its trade marks BPCE, CAISSE D’EPARGNE, and BANQUE POPULAIRE. For the latter trade mark, the case referred to is BPCE v. Sidoine Tonami, 3S-Computing, WIPO Case No. D2017-0410. Second, the Complainant indicates that the disputed domain names were registered in bad faith because of the confusing similarity with its BANQUE POPULAIRE trade mark, its website and its activities. Confusion is created with the incorporation of the reputed BANQUE POPULAIRE trade mark, the addition of words that suggest the ability for customers to connect themselves to their accounts and services, and the use of the disputed domain names to distribute malware. Finally, the Complainant adduces bad faith because of the fact that the Respondent identity was hidden in the public WhoIs records of the disputed domain names.
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 names to the Complainant:
i. the disputed domain names are 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 names; and
iii. the disputed domain names have been registered and are 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 names transferred to it, according to paragraph 4(i) of the Policy.
A. Identical or Confusingly Similar
The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain names are confusingly similar to a trade mark or a service mark in which it has rights.
The Complainant has established rights over the BANQUE POPULAIRE trade mark.
The Complainant’s BANQUE POPULAIRE trade mark is clearly perceivable in the disputed domain names. All are configured identically, with the reproduction of the BANQUE POPULAIRE trade mark in first position, followed by the expression “se connecter identifier”, which means “to connect to identify”. The BANQUE POPULAIRE trade mark and the remaining words are separated with hyphens.
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 trademark, 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”. This is clearly so here.
Therefore, the Panel finds that the first element of the Policy is satisfied.
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 names. These circumstances are:
i. before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names 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 names, 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 names, 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 names. 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 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 its BANQUE POPULAIRE trade mark. Besides, according to the evidence submitted by the Complainant, the Respondent uses the disputed domain names to distribute malware. This is obviously not a bona fide offering of services by the Respondent.
Therefore, the second element of the Policy is also satisfied.
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.
As a preliminary remark, the Panel notes that the Complainant has not provided evidence of the alleged reputation of the trade mark BANQUE POPULAIRE. Indeed, the evidence submitted concerns primarily the activities of BPCE, and the case law relied upon refers mostly to the trade marks BPCE and CAISSE D’EPARGNE. Accordingly, the claim of reputation relies exclusively on a prior decision of the Center, which indicates that the Complainant’s BANQUE POPULAIRE trade mark enjoys “goodwill and reputation” (BPCE v. Sidoine Tonami, 3S-Computing, WIPO Case No. D2017-0410).
In any event, this has little impact in the assessment of this case. Clearly, the disputed domain names were specifically designed to target the Complainant. Indeed, they combine the BANQUE POPULAIRE trade mark with indications that directly refer to the Complainant’s activities. As a whole, the combination “banque-populaire-se-connecter-identifier” can solely be perceived by the French public as a reference to an 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 were registered in bad faith.
The disputed domain names have also been used in bad faith, for the reasons explained below:
First, 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, is presumed to have full knowledge of the Complainant’s trade marks: this is confirmed by the configuration of the disputed domain names. As configured with an express reference to online access, the Panel cannot foresee any possible legitimate use of the disputed domain names: the connection is too obvious. The disputed domain names will be perceived by Internet users as hosting webpages allowing connections to the private areas facilitated by the Complainant.
Second, and in any event, the Panel also finds that the disputed domain names are used in bad faith: the screenshots provided in the Complaint show that the Respondent intends to distribute malware to Internet users, 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.
Accordingly, the Panel finds that the third 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 names, <banquepopulaire-fr-se-connecter-identifier.fun>, <banquepopulaire-fr-se-connecter-identifier.online>, <banquepopulaire-fr-se-connecter-identifier.space>, and <banquepopulaire-fr-se-connecter-identifier.website> be transferred to the Complainant.
Date: September 21, 2021