Complainant is BPCE of Paris, France, represented by DBK - Société d’avocats, France.
Respondent is Jamie Hart of Kent, United Kingdom of Great Britain and Northern Ireland, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2016. On July 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on August 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2016. On August 11, 2016, Respondent submitted an informal communication to the Center, whereby he claimed that he is not the registrant of the disputed domain name and that his name and contact details were used without his knowledge or permission. Respondent did not submit any formal response. Accordingly, the Center notified Respondent’s default on August 23, 2016.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on August 29, 2016. 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
Complainant is a banking group under the laws of France. Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation “BPCE”, including in the United Kingdom, where Respondent is domiciled, e.g.:
- Word mark BPCE, European Intellectual Property Office (EUIPO), Registration No. 8375842; Registration Date: January 12, 2010; Status: Active.
Complainant evidently also owns numerous domain names reflecting the BPCE trademark, inter alia, as well as , which both redirect to Complainant’s official website promoting its products and services.
The disputed domain name was registered on April 2, 2016. Complainant has evidenced that at some point before the filing of this Complaint it redirected to a website at “www.” which also offered banking services while displaying the BPCE official logo.
Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant asserts to be the second-largest banking group in France and well-known on the international banking and financing market with presence in 46 countries worldwide.
Complainant contends that the disputed domain name is at least confusingly similar to Complainant’s BPCE trademark as it incorporates the latter in total with the mere addition of the descriptive words “group” as well as “transfers”.
Complainant also claims that Respondent has no rights or legitimate interests with respect to the disputed domain name since (1) Complainant never authorized Respondent to register and/or use any domain name incorporating its BPCE trademark, (2) the term “BPCE” has no meaning in the English language and is not commonly used and (3) the disputed domain name is used in order to attract Internet users to a website offering services in direct competition with those of Complainant, which deprives Respondent of the character of being bona fide.
Finally, Complainant argues that the disputed domain name was registered and is being used in bad faith by Respondent since (1) Complaint’s BPCE trademark, which predates the registration of the disputed domain name, is well-known in France and through the world, thus the registration of the disputed domain name should be deemed to have been done per se in bad faith, (2) the disputed domain name redirected at some point to a website at “www.”, the graphics, color codes and fonts of which presented obvious similarities with Complainant’s official website, while offering as well banking and financial services, and (3) should Respondent not be the true registrant of the disputed domain name and if his identity had been “faked”, this fact alone must be considered as an indication of bad faith. B. Respondent
Respondent did not file an official response with the Center. However, Respondent notified Complainant by letter of July 5, 2016, as well as the Center by e-mail of August 11, 2016, that he had no knowledge of the registration and making use of the disputed domain name and that his contact details had been used without his knowledge or permission as part of an identity fraud case, which Respondent got aware of in January 2016, when he recognized that money was stolen from his bank account since June 2015. Respondent has not submitted any evidence to support said contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That 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 Panel concludes that the disputed domain name is confusingly similar to the BPCE trademark in which Complainant has shown to have rights.
The disputed domain name incorporates the BPCE trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9), that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic and/or descriptive terms “group” as well as “transfers” (especially given the fact that those terms both directly point to Complainant’s company form and business) is not at all capable to dispel the confusing similarity arising from the incorporation of Complainant’s BPCE trademark into the disputed domain name.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of both parties’ contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate non-commercial or fair use thereof without intent for commercial gain.
Respondent in fact did not formally contest Complainant’s allegations, neither as they were included in a cease-and-desist letter of July 1, 2016 nor in the Complaint duly notified to Respondent by the Center on August 2, 2016. Respondent rather argued that he had no knowledge whatsoever of the registration and making use of the disputed domain name and that he apparently was a victim of an identity fraud case. Consequently, Respondent’s arguments must be understood in that Respondent himself is not claiming any rights or legitimate interests with respect to the disputed domain name.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
In the case at hand, the Panel was confronted with the fact that Respondent denies to have had any knowledge of the registration and making use of the domain name, but that somebody else as part of an identity fraud case abusively made use of Respondent’s contact information without being authorized to do so. Respondent, however, has not provided any evidence supporting this line of defense. In turn, Complainant has pointed to the fact that it is not able to check if Respondent’s pleading is true or not.
Against this background, the Panel needed to examine the two following alternative case scenarios:
(1) Respondent being the true registered owner of the disputed domain name
Complainant contends, and Respondent has not challenged this contention, that the disputed domain name at some point before the filing of this Complaint redirected to a website at “www.”, the graphics, color codes and fonts of which presented obvious similarities with Complainant’s official website, while offering as well banking and financial services. The Panel has no difficulties in finding that such registration and making use of the disputed domain name is a clear indication that the registrant of the disputed domain name intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s BPCE trademark as to the source, sponsorship, affiliation or endorsement of the registrant’s website. Under the assumption that Respondent here is the disputed domain name’s true registered owner, such circumstances are evidence of registration and making use of the disputed domain name by Respondent in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
(2) Respondent being the victim of an identity fraud case
Alternatively, if the assumption was true that Respondent’s contact details have been used without his knowledge or permission to register and make use of the disputed domain name, then Respondent’s arguments cannot be understood other than that Respondent in fact has nothing to do with the disputed domain name and, consequently, does not object to the relief requested by Complainant, namely a transfer of the disputed domain name. In this context, other UDRP panels considered that a genuine unilateral consent to transfer the disputed domain name by a respondent provides sufficient basis for an order for transfer without consideration of each of the paragraph 4(a) elements and that the Panel may proceed immediately to make an order for transfer pursuant to paragraph 10 of the Rules (see e.g. Infonxx.Inc. v. Lou Kerner, WildS,WIPO Case No. D2008-0434).
To sum up, the Panel finds that irrespective of which of the two above case scenarios proves to be true at hand, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 be transferred to Complainant.
Stephanie G. Hartung
Sole Panelist
Date: September 2, 2016
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