1. THE DISPUTED DOMAIN NAME IS CONFUSINGLY SIMILAR TO THE TRADEMARK BOURSORAMA® OF THE COMPLAINANT.
The Uniform Domain Name Dispute Resolution Policy (the Policy) in its Paragraph 4(a)(i) indicates the obligation of Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
In accordance with the evidence provided, Complainant owns different trademarks and domain names with the term BOURSORAMA® with ownership at least since 2001.
In the present case, the disputed domain name is composed of the trademark BOURSORAMA® together with the generic terms „BANQUE” (French word which means BANK in English) and “FRANCE“.
Furthermore, the addition of the Top Level Domain Name “.com” in a domain is considered as a standard registration requirement and, therefore, it should be disregarded under the first element confusing similarity test (see paragraph 1.11 WIPO Overview 3.0).
Therefore, the Panel concludes that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy and the disputed domain name is confusingly similar to Complainant’s mark.
2. RESPONDENT’S LACK OF RIGHTS OR LEGITIMATE INTERESTS IN THE DISPUTED DOMAIN NAME
The second element of the Policy requires that the Complainant establishes that the Respondent has no rights or legitimate interests in the disputed domain name. The generally adopted approach by UDRP panels, when considering the second element, is that if a complainant makes out a prima facie case, the burden of proof shifts to the respondent to rebut it (see WIPO Overview 3.0., paragraph 2.1).
First of all, the Complainant asserts that the Respondent is not identified in the Whois database as the disputed domain name. In this sense, Complainant indicated that past panels have held that a Respondent was not commonly known by a disputed domain name if the Whois information was not similar to the disputed domain name and, consequently, the Respondent is not known as the disputed domain name.
In terms of the UDRP common practice, for a Respondent to demonstrate that it (as an individual, business, or other organization) has been commonly known by the domain name or a name corresponding to the domain name, it is not necessary for the respondent to have acquired corresponding trademark or service mark rights. The Respondent must however be “commonly known” (as opposed to merely incidentally being known) by the relevant moniker (e.g., a personal name, nickname, corporate identifier), apart from the domain name. Such rights, where legitimately held/obtained, would prima facie support a finding of rights or legitimate interests under the UDRP (see WIPO Overview 3.0, paragraph 2.3.).
The Registrar’s verification provided to this Center on 19.01.2022 identified “Lucie Dupont” as the Registrant’s contact of the disputed domain name. Absent of reply of Respondent, the Panel is of the opinion that the relevant moniker at the Whois database does not provide enough elements to support that the Respondent is commonly known apart from the domain name. Thus, the Panel is not able to find rights or legitimate interests under the UDRP on behalf of Respondent.
Furthermore, the Complainant indicates that they have not granted authorization to Respondent to use their BOURSORAMA® trademarks. Furthermore, the Complainant asserts that the Respondent is not affiliated with him nor authorized in any way to use the trademark BOURSORAMA®.
Moreover, the website associated with the disputed domain name resolves to a parking page with commercial links (PPC). UDRP past decisions have found that the use of a disputed 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 (see paragraph 2.9 WIPO Overview 3.0).
Panels have additionally noted that Respondent efforts to suppress PPC advertising related to the complainant’s trademark (e.g., through so-called “negative keywords”) can mitigate against an inference of targeting the complainant. In this particular case, Respondent did not reply the Complaint and, therefore, there is no evidence that Respondent took efforts to suppress PPC advertising.
The fact that Respondent did not reply to the Complaint gives an additional indication that Respondent lacks rights or legitimate interest since Respondent did not provide with evidence of the types specified in paragraph 4 (c) of the Policy, or of any circumstances, giving rise to rights or legitimate interests in the disputed domain name.
In light of the facts at hand, the Panel concludes that neither the Respondent nor the evidence establishes that the Respondent has any right or legitimate interest to the disputed domain name. The Complainant has therefore also satisfied the requirement under paragraph 4(a)(ii) of the Policy.
3. THE DISPUTED DOMAIN NAME HAS BEEN REGISTERED AND IS BEING USED IN BAD.
Paragraph 4(a)(iii) of the Policy indicates that Complainant must assert that the Respondent registered and is using the disputed domain name in bad faith. In this sense, Paragraph 4(b) of the Policy sets out four circumstances which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration 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 Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed 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 the Respondent’s website or other on-line 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.
The evidence submitted by Complainant confirms that its trademark BOURSORAMA® is distinctive and it has a strong reputation in the banking industry in France as well as in different countries. In this vein, Panels have consistently found that the registration of a domain name that is confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see paragraph 3.1.4 WIPO Overview 3.0).
In fact, Complainant referred to CAC Case No. 101131, BOURSORAMA v. PD Host Inc – Ken Thomas by which the Panel recognized the well know status of the trademark BOURSORAMA®. In this regard and absent of Respondent’s reply, the Panel finds that Respondent, prior to the registration of the disputed domain name was aware of Complainant’s trademark, in particular since the disputed domain name was registered on January 16, 2022 and Complainant’s trademarks were registered long before the registration of the disputed domain name.
As indicated by Complainant and confirmed by the Panel, the website associated with the disputed domain name resolves to a PPC website with commercial links, most of them in French language and mainly related to Finance and Banking services. Prior panels have held that a Respondent cannot disclaim responsibility for content appearing on the website associated with its domain. In this regard, the fact that Respondent may not have directly profited from the PPC cannot prevent a finding of bad faith.
This view is also supported by UDRP CAC cases such as Case Nr. 100364, eLeader Sp. Z.o.o.v v. Hyunjong Lee, where the Panel stated that a domain name registrant is normally deemed responsible for the content appearing on its website, even if it is not exercising direct control over such content.
In light of the above-mentioned findings, the Panel finds that the evidence submitted by the Complainant supports the argument that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line 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.
Therefore, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith and thus has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
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