WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BPCE v. Nilice Prince Abadassi
Case No. D2021-2372
1. The Parties
The Complainant is BPCE, France, represented by DBK Law Firm, France.
The Respondent is Nilice Prince Abadassi, Benin.
2. The Domain Name and Registrar
The disputed domain name <bpceb-groupe.com> is registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2021. On July 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 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 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2021. An informal communication was sent to the Center on August 24, 2021.
The Center appointed William R. Towns as the sole panelist in this matter on October 8, 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 banking group formed by the merger of Caisse d’Epargne and Banque Populaire, leading to the creation of Groupe BPCE (“Banques Populaires Caisses d’Epargne”). The Complainant currently is one of the largest banking groups in France, operating in retail banking, financing and insurance fields. The Complainant has acquired a well-established presence in the international market, with subsidiaries in over 40 countries, including GCE Technologies. The Complainant has traded under the BPCE name since 2009, and has secured registrations its BPCE trademark mark in a number of jurisdictions, including among the following:
- European Union Trademark (“EUTM”) Reg. No. 8375875, applied for June 19, 2009, and registered January 12, 2010, in Class 36;
- EUTM Reg. No. 8375842, applied for June 19, 2009, and registered January 1, 2010, in Class 36;
- French (“FR”) trademark Reg. No. 3653852, applied for and registered May 29th, 2009, in Classes 9, 16, 35, 36, 38, 41 and 45; and
- International Trademark Reg. No. 1033662 (figurative), registered December 15, 2009, in Class 36.
The Complainant also has obtained a United States (“US”) registration for its GROUPE BPCE (figurative)trademark, US Reg. No. 5743541, applied for May 25, 2018, and registered May 7, 2019, in Class 36.
The Complainant and its subsidiary GCE Technologies have registered multiple domain names reflecting the Complainant’s BPCE mark, including <bpce.fr>, registered in 2008, and <groupebpce.fr>, registered in 2009. The Complainant’s domain names are utilized by the Complainant with its websites.
The Respondent registered the disputed domain name on April 29, 2021. The Respondent then directed the disputed domain name to a French language website identified as BPCEB-GROUPE, offering banking and financial services. Visitors to the website were encouraged to open new accounts, and promised, among others, immediate personal and business credits of 50 EUR and 300 EUR respectively. The Complainant upon learning of the Respondent’s website dispatched cease and desist letters to the Respondent on June 25 and a reminder on July 8, 2021, to which the Respondent offered no reply. The Complainant then initiated this proceeding under the Policy. The disputed domain name at present does not resolve to an active website.
5. Parties’ Contentions
A. Complainant
The Complainant maintains that the disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant submits that the BPCE mark is recognizable in the disputed domain name, and emphasizes that the addition of the letter “b” at the end of “bpce” does not prevent a finding of confusing similarity. The Complainant further adds that the inclusion of the hyphen (“-“) in the disputed domain name likely would go unnoticed by consumers and not be taken into account by comparison. The Complainant also emphasizes that the descriptive term “groupe” calls attention to BPCE, which is a banking group.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent has no right to use the disputed domain name, and that the Complainant has never authorized the Respondent to register or to use any domain names incorporating the Complainant’s BPCE mark.
The Complainant opines that the disputed domain name is calculated to confuse and deceive, falsely suggesting that any services provided thereunder would be linked to the Complainant. According to the Complainant, it is clear under the attendant circumstances that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant observes that the Complainant’s trademark registration significantly pre-dates the Respondent’s registration of the disputed domain name, and asserts that at the Respondent when registering the disputed domain name clearly knew or should have known of the Complainant BPCE mark, which according to the Complainant is a well-known mark and enjoys an extensive and worldwide reputation.
In light of the foregoing, the Complainant submits that the Respondent’s registration and use of a domain name containing a well-known mark in and of itself constitutes bad faith. The Complainant reiterates that the Respondent is using the disputed domain name to create consumer confusion, offering on the Respondent’s website banking and financial services identical to the Complainant’s banking and financial services, and potentially disclosing sensitive and confidential banking data of others.
The Complainant asserts that the Respondent’s bad faith registration and use of the disputed domain name further is made manifest by the Respondent’s attempted concealment of its identify and employment of false or fictitious identity and contact information. The Complainant contends that the Respondent has made a similar bad faith use of other domain names, citing the decision in Credit Mutuel Arkea v. Nilice jose Abadassi, WIPO Case No. D2019-1122. The Complainant concludes that the Respondent’s “habitual and recidivist behavior” is demonstrative of the Registrant’s bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s GROUPE BPCE and BPCE marks, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
The Complainant’s BPCE and GROUPE BPCE marks are clearly recognizable in the disputed domain name.2 Neither the Respondent’s inclusion in the disputed domain name of a second letter “b” in “bpceb” (emphasis added), or the instertion of a hyphen (“-”) between “bpceb” and “groupe” prevents a finding of confusing similarity. See, e.g., BPCE v. WhoisGuard Protected, WhoisGuard, Inc. / Fransis Coarno, Danstic, WIPO Case No. D2020-0967 (finding <bpce-investment.com> confusingly similar to BPCE mark). When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 Top-Level Domains (“TLDs”) (in this case “.com”) generally are disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s BPCE and GROUPE BPCE marks. The Respondent notwithstanding registered a domain name appropriating the Complainant’s BPCE and GROUPE BPCE marks in its entirety, which the Respondent has used to create Internet consumer confusion, offering banking and financial services in an apparent attempt to access confidential banking information for potentially malicious purposes.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the 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 has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is clearly evident from the record that the Respondent was aware of the Complainant and had the Complainant’s BPCE and GROUPE BPCE marks firmly in mind when registering the disputed domain name. The record evinces that the Respondent did so with the aim of exploiting and profiting from the Complainant’s marks, engaging in what this Panel concludes to be an unlawful attempt by the Respondent to impersonate or pass itself off as the Complainant. The Respondent’s use of the disputed domain name for such illegal activity can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13 and cases cited therein.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain name. To the contrary, the Respondent intentionally and maliciously pointed the disputed domain name to a website impersonating the Complainant’s BPCE bank. And there is no evidence whatsoever that the Respondent at any time has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent had the Complainant’s BPCE and GROUPE BPCE marks firmly in mind when registering the disputed domain name, and the Panel further finds that the Respondent has acted opportunistically and in bad faith, in all likelihoodseeking to access confidential banking information from unsuspecting individuals for malicious purposes.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <bpceb-groupe.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: October 22, 2021
1 See WIPO Overview 3.0, section 1.7.
2 Id.
3 See WIPO Overview 3.0, section 1.8 and cases cited therein.
4 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.