WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Oney Bank v. Boriiis Boriiis

Case No. D2021-4129

1. The Parties

The Complainant is Oney Bank, France, represented by Safebrands, France.

The Respondent is Boriiis Boriiis, France.

2. The Domain Name and Registrar

The disputed domain name <oney.finance> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2021. On December 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 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 December 29, 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 amended Complaint on December 30, 2021. The Respondent sent an informal communication to the Center on December 29, 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 January 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2022. The Center proceeded to panel appointment on February 8, 2022.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on February 11, 2022. 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 company specialized in consumer credit, electronic payments and payment card management.

For the purpose of its activities, the Complainant has registered several trademarks (hereafter the ONEY Trademarks including:

- the International Registration for the trademark ONEY No. 865742 registered on August 11, 2005, for products and services in Classes 9, 36 and 38;

- the International Registration for the trademark ONEY No. 947985 registered on July 11, 2007, for products and services in Classes 9, 36 and 38;

- the International Registration for the semifigurative trademark ONEY No. 1171086 registered on May 3, 2013, for products and services in Classes 9, 35, 36, 38, 39, 41 and 42;

- the International Registration for the semifigurative trademark ONEY No. 1337835 registered on October 17, 2016, for products and services in Classes 9, 35, 36, 38, 42.

The Complainant also registered a domain name containing the ONEY trademark namely <oney.com> and owns the following company name incorporation: “Oney Bank.”

The disputed domain name resolves to a parking website comprising pay-per-click (“PPC”) links related to online credit or other banking or finance activities.

5. Parties’ Contentions

A. Complainant

First, the Complainant stands that the disputed domain name is identical to the Complainant’s ONEY Trademarks and domain names. The Complainant contends that the disputed domain name consists of the word “oney” which is identical to its ONEY Trademarks, and that the generic Top-Level Domain (“gTLD”) of a domain name is of no importance when studying similarity between signs. The Complainant also argues that the combination of the radical “oney” and the gTLD “.finance” refers to the Complainant’s activities since the latter is a bank.

Second, the Complainant contends that the Respondent does not have any rights in respect of the registration of the disputed domain name since it has no prior registered trademarks containing the word “oney”.

Moreover, the Complainant finds that the Respondent does not have any legitimate interests in respect of the disputed domain name. The Complainant underlines that the term “oney” is not a generic term necessary to describe a product or a service. The Complainant contends that the disputed domain name is linked to a parking page with commercial links which refer to the Complainant’s services and activities and that such use of the disputed domain name is increasing the risk of confusion with the Complainant and does not constitute a legitimate noncommercial or fair use of the disputed domain name.

Furthermore, the Complainant adds that it has tried to contact the Respondent in order to resolve this situation amicably with no success. The Complainant adds that these prior exchanges with the Respondent demonstrates that the Respondent does not justify of a bona fide offering of goods and services or justification of a legitimate noncommercial 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.

Lastly, the Complainant stands that the disputed domain name was registered in bad faith since it was registered by reproducing the Complainant’s ONEY Trademarks which is a fanciful term. The Complainant also adds that the disputed domain name is linked to a parking page referring to the Complainant’s activities. The Complainant recalls that when trying to resolve amicably this matter, the Respondent has requested high amounts in exchange for the transfer of the disputed domain name, once 1,500 euros, and 4,000 euros another time. The Complainant argues that such requests demonstrate the Respondent’s will to make unfair commercial use of the Complainant’s distinctive trademark by providing pay-per-click links to the both Complainant and Complainant’s competitors websites and, selling the disputed domain name in excess of its out-of-pocket costs directly related to the disputed domain name.

B. Respondent

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

However, the Panel notes that in an informal communication to the Center, the Respondent has answered that the disputed domain name was available when he bought it which demonstrate that the Complainant does not use it and that it has offered the Complainant to buy the disputed domain name in exchange for 4 ethereums (i.e. around 9,680 euros at the moment this Decision is issued).

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has right;

(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.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights in the ONEY Trademarks.

Then, the Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.

This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a disputed domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the disputed domain name, the disputed domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

Regarding the disputed domain name, the Panel finds that it is composed of:

- the ONEY Trademarks;

- the gTLD “.finance”.

This gTLD is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is identical to the Complainant’s trademark.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

- before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

- 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.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, prior UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Indeed, it appears that the Complainant did not authorize the Respondent to register and use the ONEY Trademarks in the disputed domain name or in any other manner.

Furthermore, the Panel finds that there is no evidence that the Respondent is known by the term of the disputed domain name or that the Respondent has the intent to use the disputed domain name in connection with a bona fide offering of goods and services since the disputed domain name resolves to a parking website comprising PPC links.

According to prior UDRP panel decisions, the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. UDRP panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark (see section 2.9 of the WIPO Overview 3.0).

However, the Panel finds that:

- the disputed domain name does not consist of dictionary word or phrase but of the Complainant’s trademark which is a fanciful term, and

-the disputed domain name is used to host PPC links related to online credit or other banking or finance activities, which correspond to the Complainant’s activities.

Since the Respondent did not reply to the Complainant’s contentions and only offered the transfer of the disputed domain name, in an informal communication, in exchange of the payment of a large amount of money, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

Therefore, according to the Policy, paragraph 4(a)(iii), the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name <oney.finance>.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is 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) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted 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 the respondent’s website or location.

First, the Panel considers that it is established that the Complainant’s ONEY Trademarks were registered before the registration of the disputed domain name and that the Complainant’s company name is also composed of the “oney” term. Therefore, there is a presumption of bad faith registration of the disputed domain name, given the fact that the disputed domain name wholly reproduces the ONEY Trademarks, which consists moreover of a fanciful term.

Furthermore, the Panel finds that the disputed domain name resolves to a parking page comprising PPC links, related to online credit or other banking or finance activities, which correspond to the Complainant’s activities. This use of the disputed domain name constitutes an intentional attempt of the Respondent to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s ONEY Trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, which is a scenario constituting evidence of the Respondent’s bad faith in using the disputed domain name.

Furthermore, Panel finds that the following circumstances reinforce the fact that the Respondent has registered and is using the disputed domain name in bad faith:

- the Respondent appear to have used a fake name when registering the disputed domain name;

- the Respondent has not provided any substantial response to the Complainant’s contentions;

- the Respondent has at multiple occasion offered to exchange the disputed domain name against large amounts of money and has through the course of its exchanges with the Complainant and the Center kept increasing the requested amount of money for the transfer of the disputed domain name.

Considering all of the above, it is not possible to conceive of any plausible actual or contemplated good faith registration and use of the disputed domain name by the Respondent.

Therefore, in view of all the circumstances of this case, the Panel holds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).

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 <oney.finance> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: February 24, 2022