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Dispute 101131

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On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 101131
Time of Filing 2015-12-09 12:36:53
Disputed domain name WWWBOURSORAMA.COM
Case Administrator
Name Lada Válková
Complainant
Organization BOURSORAMA
Authorized Representative
Organization NAMESHIELD S.A.S.
Respondent
Organization PD Host Inc - Ken Thomas
Other Legal Proceedings
The Panel is not aware of any other pending or decided legal proceedings relating to the disputed domain name.
Identification of rights
The Complainant is the owner of different trademark registrations for "BOURSORAMA". In particular Boursorama owns:

French Registration for "BOURSORAMA" no. 98723359 registered on March 13, 1998 and duly renewed for classes 09, 16, 35, 36, 38 and 42;

CTM Registration for "BOURSORAMA" no. 1758614 registered on October 19, 2001 and duly renewed for classes 09, 16, 35, 36, 38, 41 and 42;

The Complainant also relies on its use online of its various related domain names, including <boursorama.com> registered in 1998.

The disputed domain name was registered on January 10, 2004, I e. the Complainant's marks predate the registration of the disputed domain name.
Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

Founded in 1995, Boursorama, the Complainant, is one of the very first online financial platforms in Europe. One of the earliest of the emerging e-commerce providers, it enjoyed substantial growth due to its continuous expansion and grew into a pioneer and market leader in its three core businesses: online brokerage, financial information on the Internet and online banking. Today in France, Boursorama is the leading online banking provider.

The Complainant assumes that the disputed domain name is confusingly similar to its registered trademark "BOURSORAMA" as the disputed domain name contains the Complainant's trademark in its entirety. The mere addition of the prefix "www" at the beginning of the disputed domain name does not alter the finding of similarity between the signs. In this perspective it should be considered that the Complainant also owns the domain name <boursorama.com>.

Furthermore, according with the Complainant's statement, the Respondent lacks rights or legitimate interest in the domain name in dispute since the Respondent is not affiliated with it nor authorized by it in any way and the Complainant does not carry out any activity for, nor has any business with, the Respondent. In addition, according to the Whois information connected to <wwwboursorama.com>, the Respondent is not commonly known with the terms Boursorama or Wwwboursorama.

The Complainant also contends that the website in relation with the domain name in dispute only displays an inactive page since its registration and that the incorporation of a famous mark into a domain name coupled with an inactive website may be evidence of bad faith registration and use.
 
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
Rights
The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy).
Bad faith
The Complainant has, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
Paragraph 4(a) of the Policy provides that to obtain the transfer of the domain name, the Complainant must prove that each of the following elements is present:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A) The disputed domain name combines three elements: (1) the prefix “www” (2) the term "boursorama" and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “wwwboursorama"), as it is well-established that the top-level domain name “.com” should be disregarded for this purpose (see Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561; Burberry Limited v. Carlos Lim, WIPO Case No. D2011-0344; Magnum Piercing, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

Therefore, only the part <wwwboursorama> of the disputed domain name has to be considered while evaluating confusing similarity or identity.

In this respect the Panel notes that "boursorama" is identical to the Complainant’s trademark "BOURSORAMA" while "www", corresponds to the well-known acronym for "world wide web", and is an extremely common prefix (when succeeded by a period) to the domain name in a URL for a website on the Internet. The letters "www" thus have no distinguishing capacity in the context of domain names disputes (see Allianz SE v. Venkateshwara Distributor Private Limited/PrivacyProtect.org, WIPO Case No. D2010-0951). In fact, in the context of domain names, the letters "www" have the effect of focusing particular attention on the succeeding word, in this case the word "boursorama". This is because a casual reader of the domain name may wrongly think that there is a period between the "www" and the succeeding word, and so wrongly assume that the domain name is in fact comprised only of the succeeding word. In addition, the practical effect of preceding a trademark with the letters "www" in a domain name is so-called "typo-piracy" (see World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256 and CSC Holdings, Inc. v. Elbridge Gagne WIPO Case No. D2003-0273) - that is, attracting to a different website the Internet user who mistakenly fails to insert a period after the letters "www" when typing the URL of the intended website. In consideration of both the visual similarity and the potential typo-piracy, the disputed domain name is confusingly similar to the Complainant’s trademark "BOURSORAMA" (see Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066). Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B) The Complainant has long standing rights in the mark "BOURSORAMA". The Complainant provided prima facie evidence that the Respondent does not have rights or legitimate interests in respect of the disputed domain name as it is not commonly known under the disputed domain name and as the Respondent was never authorized or licensed or otherwise permitted by the Complainant to use the disputed domain name. The Respondent, in the absence of any response, has not shown any facts or elements to justify legitimate rights or interests in the disputed domain name. Therefore, on the basis of the evidences submitted and in the absence of a response the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C) The Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The contested domain name is linked to a mere inactive page (passive holding). It is well-established that passive holding of the domain name in dispute does not as such prevent a finding of bad faith (see between others Valero Energy Corporation and Valero Marketing and Supply Company v. Sherad Bhat - WIPO Case No. D2015-1167). The Panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the Complainant having a well-known trademark, no response to the complaint having been filed, and the Registrant's concealment of its identity. In the case at hand, the Respondent acted in bad faith especially because the Respondent, who has no connection with the well-known "BOURSORAMA" trademark, registered a domain name, which incorporates the well-known "BOURSORAMA" trademark and it is totally irrealistic to believe that the Respondent did not know the Complainant's trademark when registered the domain name <wwwboursorama.com> (see Compagnie Gervais Danone v. Zhengyongjun - WIPO Case No. D2015-007)

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
Decision
For all the following reasons, the Complaint is Accepted
and the disputed domain name(s) are to be
WWWBOURSORAMA.COM Transferred to the Complainant
Panellists
Name Avv. Guido Maffei
Date of Panel Decision 2016-01-13
Publication of the Decision
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