WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BPCE v. Registration Private, Domains By Proxy, LLC of Arizona/ Sophie Gadoud, Shady's corporation

Case No. D2021-2305

1. The Parties

The Complainant is BPCE, France, represented by DBK, Law Firm, France.

The Respondent is Registration Private, Domains By Proxy, LLC of Arizona, United States of America (‘United States” or “US”) / Sophie Gadoud, Shady's corporation, France.

2. The Domain Name and Registrar

The disputed domain name <ma-banquepopulaire.com> is registered with Wild West Domains, LLC (the “Registrar”).

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 name. On July 19, 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 August 12, 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 August 13, 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 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2021.

The Center appointed Elise Dufour as the sole panelist in this matter on November 4, 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 one of the largest banking groups in France, working through its two major Banque Populaire and Caisse d’Epargne cooperative banking networks.

The Complainant owns numerous trademark registrations and notably the following ones:

- BANQUE POPULAIRE, French nominal trademark, n° 3113485 with a registration date of July 25, 2001, duly renewed, and covering services in classes 36 and 38;

- BANQUE POPULAIRE +X, French figurative trademark, n° 4605979 with a registration date of December 9, 2019 and covering goods and services in classes 9, 35 and 36.

The Complainant is also the owner of numerous domain names incorporating the trademark BANQUE POPULAIRE, all of which resolve to corresponding active websites, such as notably <banque-populaire.com> registered in 1998, <banquepopulaire.com> registered in 2001, <banque-populaire.fr> registered in 2002, <banquepopulaire.info> registered in 2007.

The disputed domain name <ma-banquepopulaire.com> was registered on April 14, 2021.

According to the evidence submitted by the Complainant, the disputed domain name used to resolve to an inactive page, or to dangerous content with potential attempt of phishing.

On August 31, 2021, the disputed domain name resolved to a web page displaying the message “503 Service Unavailable”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that (i) the disputed domain name is identical or confusingly similar to the Complainant’s well-known trademarks; (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the Respondent registered and is using the disputed domain name in bad faith.

(i) The Complainant claims that the domain name is identical or confusingly similar to its well-known trademarks and domain names. Indeed, the disputed domain name incorporates entirely the Complainant’s trademark BANQUE POPULAIRE with the addition of the French possessive adjective “ma”, a dash, and the generic Top-Level Domain (“gTLD”) “.com”, which does not prevent a finding of confusing similarity. On the contrary, as a translation of “my” in French, for the Complainant, this addition will be either understood as a reference to the personal portal of Banque Populaire customers or will be disregarded by Internet users. The other additional elements, namely the dash and the gTLD “.com”, are not to be taken into account to assess the likelihood of confusion between the signs.

(ii) The Complainant stresses that it has never authorized the Respondent to register and/or use any domain name incorporating Complainant’strademarks, nor granted any license or any authorization to use its trademarks. Moreover, for the Complainant, the Respondent does not make a legitimate noncommercial or a fair use of the disputed domain name.

(iii) Due to the strong reputation and well-known character of the trademark BANQUE POPULAIRE, the Complainant considers that the Respondent could not have ignored the existence of the Complainant’s trademark at the time the disputed domain name was registered. Consequently, for the Complainant, the choice of the disputed domain name does not seem to be a mere coincidence, but on the contrary seems to have been done on purpose to generate a likelihood of confusion with the domain names and the trademarks of the Complainant.

The Complainant also claims that the Respondent’s use of the disputed domain name is made in bad faith, as the disputed domain name is used to resolve to a website which has been identified by a safety warning notice as containing potentially dangerous content with potential attempt of phishing. By doing this, the Respondent is taking advantage of the reputation and goodwill of the Complainant’s trademarks and image in an effort to attract users and generate traffic on his website and possibly gain revenue. Finally, for the Complainant, the passive holding of the disputed domain name does not prevent a finding of bad faith registration and use, in summary: the recognition of the Complainant’s trademarks, the lack of response, the Respondent’s concealing of identity, and the implausibility of any good faith use to which the domain name may be put, should be considered sufficient to establish bad faith in passive holding of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent.

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

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 was registered and is being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The disputed domain name wholly incorporates the Complainant’s trademarks BANQUE POPULAIRE, which is clearly recognizable. As long established by previous UDRP panels, this may be sufficient to determine that a disputed domain name is identical or confusingly similar to the Complainant’s trademarks.

The addition of the French possessive adjective “ma”, meaning “my” in English, and the use of a dash between “ma” and the Complainant’s trademark does not prevent the disputed domain name to be confusingly similar to the Complainant’s trademark.

Finally, the generic Top-Level Domain (“gTLD”) “.com” extension may be ignored for the purposes of comparison, such element being a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See section 1.11, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

The Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, the Respondent may then, inter alia, demonstrate rights or legitimate interests in the disputed domain name by proving that one of the following circumstances of paragraph 4(c) of the Policy is applicable to the case:

(i) before any notice of the dispute, the Respondent used, or made 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 an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

On the basis of the submitted evidence and arguments, the Panel considers that the Complainant has successfully established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name:

Indeed, the Panel notes that the Complainant has never authorized the Respondent to register and/or use any domain name incorporating the Complainant’s trademarks, nor granted any license or any authorization to use its trademarks.

As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see section 2.1 of the WIPO Overview 3.0).

The Respondent did not to reply to the Complainant’s contentions and did not provide any explanation or evidence of rights or legitimate interests in the disputed domain name. The Panel considers that if the Respondent had rights or legitimate interests in respect of the disputed domain name, the Respondent would have probably submitted a response to the Complaint.

Furthermore, the evidence demonstrates that, at the time of filing of the Complaint, the disputed domain name directed to a website identified by an antivirus program as containing potentially dangerous content with potential attempt of phishing, which cannot qualify as bona fide offer of goods and services. Furthermore, and as previous UDRP panels have held, use of a disputed domain name for illegal activity (e.g. phishing, distributing malware etc…) can never confer rights or legitimate interests on a respondent (see section 2.13 of the WIPO Overview 3.0).

Accordingly, the Complainant has provided evidence supporting its prima facie claim that the Respondent lacks any rights or legitimate interests in the disputed domain name. The Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain name.

Thus, the Panel concludes that the Respondent does not have any rights or legitimate interests in the disputed domain name and the Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

With regards to the registration of the disputed domain name, which encompasses the trademark BANQUE POPULAIRE with the addition of the French possessive term “ma” separated by a dash, the Panel considers it unlikely that, at the time of the registration of the disputed domain name, the Respondent did not know about the Complainant’s trademark BANQUE POPULAIRE.

Indeed, given the fact that the Complainant’s trademarks are well-known in the banking and insurance services, the Respondent cannot credibly claim to have been unaware of the existence of the Complainant’s previous trademarks (see section 3.2.2 of the WIPO Overview 3.0) and previous UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (section 3.1.4 of the WIPO Overview 3.0).

As to the use of the disputed domain name in bad faith, as previously mentioned, at the time of filing of the Complaint, the disputed domain name resolved to a website identified by an antivirus program as containing potentially dangerous content with potential attempt of phishing. This constitutes strong indication that the disputed domain name is used for fraudulent purposes (see section 3.4 of the WIPO Overview 3.0).

The website at the disputed domain name has however been deactivated, and now resolves to an inactive website with the legend "service unavailable". As previous UDRP panels have considered, a passive holding situation constitutes bad faith when associated with other elements such as the degree of notoriety of the mark or lack of response, as is the case here (see section 3.3 of the WIPO Overview 3.0).

Therefore, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).

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 <ma-banquepopulaire.com> be transferred to the Complainant.

Elise Dufour
Sole Panelist
Date: November 18, 2021