Decision for dispute CAC-UDRP-107747

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

French Trademark Registration No. 3009973 BOURSO for various goods and services in classes 9, 35, 36, 38, 41 and 42 with a priority date of 22 February 2000.

International Trademark Registration No. 1757984 BoursoBank (Stylised) for various goods and services in classes 9, 35, 36, 38, 41 and 42 with a priority date of 28 August 2023.

The Complainant is an international e-commerce business that provides online brokerage services, financial information and online banking. In France alone it has approximately 6 million online banking customers. Its online banking platform is available from a portal located at www.boursorama.com. This platform has over 41.5 million visits each month. The Complainant asserts, and the Respondent does not dispute, that it has a significant reputation in BOURSO in France and overseas.

The Complainant is the owner of trademarks containing or consisting of the words "BOURSO" and "BOURSOBANK", including the above French registration and International Registration.

Further, the Complainant owns a number of domain names containing the word BOURSO including <bourso.com> which it has registered since 11 January 2000 and <boursobank.com> which it has registered since 23 November 2005.

The disputed domain names were both registered on 16 December 2024 in the name of the Respondent. Neither of the disputed domain names resolves to an active webpage. However <b-boursobank.com> is used to publish a webpage on a subdomain which reproduces the Complainant's stylised logo and contains fields enticing users to enter personal details. The Complainant alleges, and the Respondent does not dispute, that this conduct evidences the Respondent is engaging in a phishing scheme. The Complainant further alleges the Respondent knew about the Complainant's reputation in the BOURSO trademark at the time of registering the disputed domain names. This allegation is also not disputed by the Respondent.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain names 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 names are 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 names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are 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 (4)(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain names registered by the Respondent should be transferred to the Complainant:

1) the disputed domain names are identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
3) the disputed domain names have been registered and are being used in bad faith.

The Panel is satisfied that the Complainant has established all three elements in relation to both the disputed domain names for the principal reasons set out below.

RIGHTS IN AN IDENTICAL OR CONFUSINGLY SIMILAR TRADEMARK

The Complainant has claimed registered rights over trade marks containing or consisting of the words BOURSO and BOURSOBANK. This includes the above mentioned registrations in relation to numerous goods and services, including various financial services.

To satisfy paragraph 4(a)(i) of the Policy it is enough that the Panel is satisfied that the Complainant has registered rights in a single trademark in a single jurisdiction that predates the registration of the disputed domain name (even if that single jurisdiction is not one in which the Respondent resides or operates) (Koninklijike KPN N.V. v. Telepathy, Inc D2001-0217 (WIPO 7 May 2001); see also WIPO Case Nos. D2012-0141 and D2011-1436).

Hence here registered rights in BOURSO are established.  Further, registered rights in BoursoBank (Stylised) are also established.

The next question is whether the disputed domain names are confusingly similar to either or both of these trademarks.

At the outset, the inclusion of the descriptive word "Bank" would make little difference in the eyes of consumers when observing BOURSO and BoursoBank (Stylised).  It is the BOURSO element that is the most significant brand indicator to a consumer. 

Next, when comparing both BOURSO and BoursoBank (Stylised) to both of the disputed domain names the similarities are striking.  Again, the word BOURSO is the most significant brand indicator and it is completely reproduced in both of the disputed domain names.  Neither the "b-" prefix or "-fr" suffix are likely to detract attention from these striking similarities. 

Both the disputed domain names are confusingly similar to both the Complainant's  BOURSO and BoursoBank (Stylised) registered trademarks referred to above.

NO RIGHTS OR LEGITIMATE INTERESTS

The Respondent's name bears no resemblance to the disputed domain names. Further, neither of the disputed domain names appear to resolve to webpages indicating rights or legitimate interests in the Respondent. In fact, the use of <b-boursobank.com> to publish a webpage on a subdomain which reproduces the Complainant's stylised logo and contains fields enticing users to enter personal details indicates the very opposite of a legitimate interest. It indicates an intention to use that disputed domain name for phishing.

There is no basis to conclude that the Respondent has any rights or legitimate interests in the disputed domain names.

BAD FAITH

Given that;

(a).  The Complainant has a significant reputation in the BOURSO trademark;

(b).  Both disputed domain names were registered on the same day; and

(c).  the Respondent completely reproduced the Complainant's stylised logo on a subdomain to the <b-boursobank.com> disputed domain name;

It is beyond all doubt that the Respondent knew of the Complainant's reputation and rights in the BOURSO trademark and BoursoBank (Stylised) trademark at the time of registering the disputed domain names.

 As the Panel has found the Respondent had such prior knowledge of the BOURSO trademark at the time of registering the disputed domain names it can only follow that is purpose in registering the disputed domain names was to opportunistically profit from such confusing similarity. The Respondent targeted the Complainant's well-known name for this purpose. Such opportunism has been recognised as bad faith by numerous panels. The Panel refers to the commentary of the learned Gerald M Levine, Domain Name Arbitration, Legal Corner Press, 2nd ed. 2019, pp.432 to 434. The Respondent's use of one of the disputed domain names to attempt to engage in phishing by encouraging internet users to enter their personal details in fields further supports this conclusion.

Both disputed domain names have been registered and are being used in bad faith.