Decision for dispute CAC-UDRP-105636

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the holder of the European Union word mark BOURSORAMA registered under No. 001758614 since October 19, 2001, covering goods and services in classes 9, 16, 35, 36, 38, 41 and 42.

The Complainant, Boursorama S.A., is a French company and operator of a leading online information portal providing stock market, political and general financial information since 1995. The Complainant is also a provider of online banking and brokerage services.

The Complainant is the owner of the registered European Union word mark BOURSORAMA in several classes since 2001, and also owns domain names such as <boursorama.com>.

The disputed domain name <boursorama-code-parrainage.com> has been registered on July 14, 2023. According to the Complainant’s evidence, the disputed domain name was inactive on July 17, 2023. The Panel observes that the disputed domain name currently appears to resolve to a web page offering a referral code to obtain benefits when opening a Boursorama account.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED. 

The Complainant has, to the satisfaction of the Panel, shown the disputed 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).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

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.

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in Paragraph 4 (a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy and on the balance of probabilities that:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. The Respondent has no rights or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith.

The Panel has therefore dealt with each of these requirements in turn.

1. Identity of confusing similarity

 The Complainant must first establish that there is a trademark or service mark in which it has rights. Since the Complainant is the holder of the registered BOURSORAMA trademark, which is used in connection with the Complainant’s financial information and online banking business, it is established that there is atrademark in which the Complainant has rights.

The disputed domain name <boursorama-code-parrainage.com> incorporates the Complainant’s BOURSORAMA trademark in its entirety, merely adding the terms “code” and “parrainage” separated with hyphens. In the Panel’s view, these additions do not prevent the Complainant’s trademark from being recognizable within the disputed domain name (see section 1.8 of the WIPO Overview 3.0).

Additionally, it is well established that the Top Level Domains (“TLDs”) such as “.com” may be disregarded when considering whether the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights (see section 1.11 WIPO Overview 3.0). 

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. Accordingly, the Complainant have made out the first of the three elements that they must establish. 

2. No rights or legitimate interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

It is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no right or legitimate interest in the disputed domain name in order to shift the burden of proof to the Respondent (see section 2.1 WIPO Overview 3.0 and Champion Innovations, Ltd. V. Udo Dussling (45FHH), WIPO case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO case No. 2004-0110).

The Panel notes that the Respondent does not appear to be commonly known by the disputed domain name and that the Respondent has not acquired trademark or service mark rights. Both the Whois records and the additional registrar information relating to the disputed domain name indicate that the Respondent is using a privacy service and do not disclose the Respondent’s identity. The Respondent’s use and registration of the disputed domain name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.

Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner. The correlation between a domain name and the complainant’s mark is often central to this inquiry. Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 WIPO Overview 3.0). The disputed domain name incorporates the Complainant’s BOURSORAMA trademark in its entirety and simply adds the descriptive terms “code” and “parrainage”, which can be translated as “referral code”. The Panel finds that these terms can easily be considered as referring to a referral marketing campaign of the Complainant.

This is further confirmed by the content of the website linked to the disputed domain name. The Panel observes that the disputed domain name currently appears to resolve to a web page offering a referral code to obtain benefits when opening a Boursorama account. Typically, both the referrer and the user of such code earn rewards. The website clearly refers to the Complainant by mentioning the distinctive BOURSORAMA trademark and combining it with the term “Banque” (“bank”), directly referring to the Complainant’s banking business.

Therefore, the Panel finds that the disputed domain name carries a risk of implied affiliation with the Complainant and cannot be considered as a legitimate noncommercial or fair use in the circumstances of this case.

The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. In light of the above, the Complainant succeeds on the second element of the Policy.

3. Bad faith

The Complainant must prove on the balance of probabilities that the disputed domain name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

According to the Panel, the awareness of a respondent of the complainant and/or the complainant’s trademark rights at the time of registration can evidence bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070). In the instant case, the Panel finds that the Respondent must have been aware of the Complainant and its rights in the BOURSORAMA trademark at the moment it registered the disputed domain name:

- the disputed domain name incorporates the Complainant’s distinctive BOURSORAMA trademark in its entirety with the mere addition of descriptive terms which do nothing to avoid any confusion with the Complainant’s mark, quite the contrary;

- the website linked to the disputed domain name directly refers to the Complainant and its registered trademark;

- the Complainant’s trademark was registered more than 20 years before the registration of the disputed domain name;

- the well-known character of the Complainant’s BOURSORAMA trademark has been confirmed by previous UDRP panels (see BOURSORAMA v. PD Host Inc - Ken Thomas, CAC Case No. 101131; Boursorama SA v. Estrade Nicolas, WIPO Case No. D2017-1463).

In view of the nature of the disputed domain name and its use to resolve to a web page offering a referral code and directly referring to the Complainant and its trademark, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.

In the Panel’s view, the fact that the disputed domain name has been inactive at some point has no impact on the Panel’s assessment. The Panel does not see any good faith use to which the disputed domain name may be put by the Respondent in the circumstances of the present case.

By failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and is being used in bad faith.