Westmore · UDRP DecisionB-boursorama.com
The Panel ordered transfer of <b-boursorama.com>. It found the domain confusingly similar to the Complainant’s BOURSORAMA trademark, found no rights or legitimate interests based on the unrebutted prima facie case and inactive use, and found registration and use in bad faith under the passive-holding doctrine and the circumstances indicating that the Respondent knew of and targeted the distinctive mark.
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The decision illustrates how a domain that adds only a letter and hyphen to a distinctive trademark can satisfy confusing similarity and, even without active website content, support transfer where the respondent defaults, offers no plausible legitimate use, and the overall circumstances demonstrate trademark targeting.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Boursorama S.A. v. regae agency, regae agency Case No. D2021-0725 1. The Parties The Complainant is Boursorama S.A., France, represented by Nameshield, France. The Respondent is regae agency, regae agency, Benin. 2. The Domain Name and Registrar The Disputed Domain Name <b-boursorama.com> (the “Disputed Domain Name”) is registered with Register SPA (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2021. On March 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 12, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 15, 2021. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2021. The Center appointed Nicholas Weston as the sole panelist in this matter on April 21, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a subsidiary of French multinational investment bank and financial services company Société Générale SA, and operates three core businesses in online brokerage, online financial information and online banking. Its online bank has more than 2.3 million customers. The Complainant holds registrations for the trademark BOURSORAMA in numerous countries, which it uses to designate a range of goods and services from computer software, financial information services and telecommunications. European Union Trademark Registration No. 001758614, for example, shows a filing date of July 13, 2000 and was registered on October 19, 2001. The Complainant owns the domain name <boursorama.com> and is France’s first online bank. The Respondent registered the Disputed Domain Name <b-boursorama.com> on March 8, 2021. The Disputed Domain Name resolves to an inactive parking webpage. 5. Parties’ Contentions A. Complainant The Complainant cites European Union Trademark Registration No. 001758614 registered on October 19, 2001 for the mark BOURSORAMA, as prima facie evidence of ownership. The Complainant submits that the mark BOURSORAMA is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <b-boursorama.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the BOURSORAMA trademark and that the similarity is not removed by the additional letter “b” and hyphen, or the addition of the generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent is not a licensee of the Complainant, is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, and given the passive use of the Disputed Domain Name, has made no demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and prior use of the Complainant’s trademarks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark BOURSORAMA in numerous countries including France. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree , WIPO Case No. D2002-0358 ). Turning to whether the Disputed Domain Name is identical or confusingly similar to the BOURSORAMA trademark, the Panel observes that the Disputed Domain Name comprises: (a) the letter “b”; (b) followed by a hyphen; (c) followed by an exact reproduction of the Complainant’s trademark BOURSORAMA; (d) followed by the gTLD “.com”. It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains , WIPO Case No. D2012-0286 ). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “b-boursorama”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, in this case, the letter “b” and a hyphen: (see Oki Data Americas, Inc. v. ASD, Inc ., WIPO Case No. D2001-0903 ; Wal-Mart Stores, Inc. v. Kuchora, Kal , WIPO Case No. D2006-0033 ; ArcelorMittal (SA). v. Songguangxiu, WIPO Case No. DCC2018-0013 ). This Panel finds that the addition of the letter “b” and a hyphen before the Complainant’s registered trademark are additional elements that do not prevent the trademark BOURSORAMA from being recognizable in the Disputed Domain Name. The addition of the letter “b” and a hyphen does not prevent a finding of confusing similarity between Disputed Domain Name and the trademark. The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles , WIPO Case No. D2000-1306 ; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 ). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is not its name, there is no license from the Complainant to use the Complainant’s trademark, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, and the evidence is that it resolves to an inactive placeholder webpage with no substantive content. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903 , supra . The uncontested evidence is that the Respondent has not made, and is not currently making, a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy. Nor, alternatively, does paragraph 4(c)(ii) of the Policy apply. Moreover, the Panel finds that the Disputed Domain Name carries a risk of implied affiliation (see WIPO Overview 3.0 , section 2.5.1 ). This Panel accepts that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and, in the absence of a Response by the Respondent, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, the trademark BOURSORAMA is so inherently distinctive that it is most unlikely the Respondent might have registered the Disputed Domain Name without knowing of it. See Boursorama S.A. v. WhoisGuard, Inc. / Margaret Robinson, WIPO Case No. D2020-0083 (“The Panel is satisfied that the Complainant’s BOURSORAMA Mark is well known in its industry in Europe”); Boursorama S.A. v. Rachid Gormoz , WIPO Case No. D2020-2299 (“The Respondent’s reproduction of the Complainant’s inherently distinctive BOURSORAMA trademark in the disputed domain names convinces the Panel that the Respondent was aware of the Complainant’s trademark at the time of obtaining the disputed domain names”); Boursorama S.A. v. David Lopez , WIPO Case No. D2020-2546 (“Under the circumstances of this case, including the composition of the disputed domain name and reputation of the Complainant’s trademark, it can be inferred that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name”). On the issue of use, the Complainant’s evidence is that the Disputed Domain Name is passively held. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. While panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the “passive holding” doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put” (see WIPO Overview 3.0 , section 3.3 ). This Panel notes that the evidence is that three of these factors are present in this proceeding. In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark BOURSORAMA and incorporated it in the Disputed Domain Name preceded by the addition of the letter “b” and a hyphen, without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the trademark to target the Complainant’s rights. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <b-boursorama.com> be transferred to the Complainant. Nicholas Weston Sole Panelist Date: April 25, 2021
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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