Paragraph 4(a) of the Policy requires the Complainant to prove three elements in order to the transfer of the domain name:
(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 has been registered and is being used in bad faith.
(i) Rights
Complainant demonstrates it has valid trademark rights in the BOURSORAMA sign.
The Panel recognizes that Complainant’s trademark rights in the BOURSORAMA sign are established.
The Panel also agrees that the disputed domain name is confusingly similar to Complainant’s BOURSORAMA trademark, the addition of the generic term “CLIENT” and the suffix “.COM” do not permit to dismiss the likelihood of confusion with the BOURSORAMA trademark.
Under Policy 4(a)(i), top-level domains are indeed generally disregarded in the similarity test, see ARCELORMITTAL (SA) v. acero, Case n° 102399 (CAC March 20, 2019) “As stated in WIPO Overview 3.0 “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” (see par. 1.7).
In the present case the Complainant’s “ArcelorMittal” trademark is clearly recognizable in the disputed domain name. The addition of the “mx” element does not change an overall impression of the disputed domain name and indicates connection with Mexico where the Complainant has business activity.
The .com domain zone shall be disregarded under the identity or the confusing similarity test as it does not add anything to the distinctiveness of the disputed domain name.
Therefore, the Panel finds that the first requirement of the Policy has been satisfied.”.
Thereby, the Panel concludes that Complainant has satisfied Policy 4 (a) (i).
(ii) No rights nor legitimate interests
Complainant shall provide a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, under Policy 4(a)(ii). The burden of proof thereto shifts to Respondent.
This standard has been recognized throughout continuous case law, see LESAFFRE ET COMPAGNIE v. Tims Dozman, Case No. 102430 (CAC, April 2, 2019) “The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP (please see, for example, WIPO case no. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd.).”.
Complainant asserts that Respondent is not commonly known under the disputed domain name, and that Complainant never granted any authorization to Respondent to use Complainant’s trademark nor to register the disputed domain name.
Furthermore, Respondent did not provide a reply to the complaint. Previous panels have held that such mutism from the Respondent’s part was proof that Complainant and Respondent had no relation and that Respondent is not commonly known under the disputed domain name (see FILEHIPPO S.R.O. v. whois agent, Case No. 102279 (CAC January 31, 2019), “In the absence of a response, the Panel accepts the Complainant's allegations as true that the Respondent has no authorization to use the Complainant’s trademarks in the disputed domain name. Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.”).
The Panel concludes that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, and has therefore satisfied Policy 4 (a)(ii).
(iii) Registration and Use in Bad Faith
Complainant argues that the registration of a domain name that wholly incorporates a Complainant’s well-known registered trademark is sufficient to establish confusing similarity, see WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows (“Given the Complainant’s numerous trademark registrations for, and its wide reputation in, the word <TELSTRA>, as evidenced by the facts established in paragraphs 4.2 to 4.5, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name <telstra.org>. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration.
These findings, together with the finding in paragraph 7.2 that the Respondent has no rights or interests in the domain name, lead the Administrative Panel to conclude that the domain name <telstra.org> has been registered by the Respondent in bad faith.”).
Complainant contends that Respondent registered the domain name with full knowledge of Complainant’s trademark, which shows that said registration has been done in bad faith, see CAC Case No. 101131, BOURSORAMA v. PD Host Inc - Ken Thomas (“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 unrealistic to believe that the Respondent did not know the Complainant's trademark when registered the domain name.”).
In addition, all of the results of a search of the term BOURSORAMA refers to the Complainant.
Following the above, the Panel considers that Respondent has registered the disputed domain name with prior knowledge of Complainant’s trademark.
The lack of use of the domain name by Respondent cannot be considered as good faith use either. Passive holding can amount to bad faith use as there is no circumstances in which the use of the disputed domain name could be legitimate, given Complainant’s reputation.
The Panel thus considers that the disputed domain name has been registered and used in bad faith by Respondent within the meaning of paragraph 4 (a)(iii) of the Policy.
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