The Complainant is BPCE of Paris, France, represented by DBK - Société d’avocats, France.
The Respondent is Moises Barron of East Chicago, Indiana, United States of America. 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 March 1, 2017. On March 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2017.
The Center appointed James Bridgeman as the sole panelist in this matter on April 18, 2017. 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 French joint stock company which carries on a banking, financing and insurance business through two cooperative banking networks, Banque Populaire and Caisse d’Epargne and its subsidiaries using the BANQUE POPULAIRE trademark and service mark.
The Complainant and its subsidiaries are the owners of more than 60 French trademark registrations incorporating the term “Banque Populaire” and associated to other denominative elements including the following trademark registrations:
French trademark BANQUE POPULAIRE, registered under number 3113485 on July 25, 2001, for services in classes 36 and 38;
European Union Trademark BANQUE POPULAIRE + X EURO, registered under number 863886 on June 29, 1998, for services in classes 16 and 36; and
French trademark +X BANQUE POPULAIRE, registered under number 3929244 on June 22, 2012, for services in classes 9, 35 and 36.
The Complainant is also the owner of numerous domain names, all of which resolve to corresponding active websites, including:
- , registered in 2002,
- , registered in 1998,
- , registered in 2002,
- , registered in 2001,
- , registered in 2007.
The disputed domain name was registered on February 15, 2016.
For a period until February 25, 2016, when it became inactive, the disputed domain name resolved to a website that identically reproduced the content of the Complainant’s website including the Complainant’s trademarks, logos, graphics, colour codes and fonts used.
On February 23, 2016 the Complainant sent a cease and desist letter by email and registered letter to the Respondent requesting the transfer of the disputed domain name to the Complainant but did not receive any response. 5. Parties’ Contentions A. Complainant
The Complainant relies on its rights in the above listed registered trademarks and claims to have a protectable goodwill in the BANQUE POPULAIRE mark in France and other jurisdictions. It has 108,000 employees serving a total of 35 million customers, with a commercial presence in 46 countries via its various subsidiaries.
The Complainant submits that the disputed domain name is confusingly similar to its BANQUE POPULAIRE mark as the disputed domain name partially incorporates the Complainant’s trademark with addition of the descriptive terms “support”. The element “bpopulaire” is an abbreviation of “Banque Populaire” that creates important visual, phonetical and conceptual similarities with the Complainant’s mark.
The similarities are such as to lead the public to believe that the disputed domain name is actually an official domain name belonging to the Complainant or its subsidiary.
The use of a descriptive term “support” as an element in the disputed domain name does not avoid the likelihood of confusion with the Complainant’s mark, but on the contrary, such use may be taken to refer to the Complainant’s support services confusing the Complainant’s customers who may have a technical problem. The Complainant submits that the generic Top-Level Domain (“gTLD”) extension “.info” is not relevant for the purposes of comparison but insofar as it may be relevant the disputed domain name remains confusingly similar as the Complainant owns the domain name .
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never authorised the Respondent to register or use any domain name incorporating its BANQUE POPULAIRE mark. Neither has the Complainant ever granted any license or authorisation to use its trademark in a domain name. The disputed domain name has been linked to a website which a recent search shows is no longer active. While the Respondent’s website was active it was used as a phishing site which is not a legitimate commercial use of the disputed domain name.
The Complainant furthermore submits that the disputed domain name was registered and is being used by the Respondent in bad faith.
The Complainant submits that because of the extent of the Complainant’s rights and reputation in the use of the BANQUE POPULAIRE mark, pre-dating the registration of the disputed domain name, the Respondent must have been aware of the Complainant’s rights in the BANQUE POPULAIRE mark at the time the disputed domain name was registered. (Citing the decision of the panel in The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113 where the panel referring to earlier decisions under the Policy held that “registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435.”).
Bad faith on the part of the Respondent is furthermore indicated by the fact that the graphics, color codes (purple, blue and white) and fonts used on the website to which the disputed domain name resolves are identical to those on the Complainant’s website. These elements constitute the visual identity of the Complainant used for its communication. It clearly appears that these elements were illegitimately copied without any valid authorization from the rights holders in order to attract and deceive the Complainant’s customers for criminal purposes related to “phishing” financial information in an attempt to defraud the Complainant’s customers.
In the present case the Respondent has posted on his website unauthorized copies of pages from the Complainant’s website including a page inviting customers to enter their “Postal Code”, “Username” and “Password” which is an unequivocal proof of phishing activity.
Previous decisions of panels established under the Policy have held that the use of a disputed domain name for defrauding Internet users by the operation of a “phishing” website is perhaps the clearest evidence of registration and use of a domain name in bad faith. In this regard the Complainant cites the decisions of the panels in The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado,WIPO Case No. D2012-2093 and First American Financial Corporation v. VistaPrint Technologies Ltd,WIPO Case No. DCO2016-0008.
Furthermore the Complainant, citing the decision in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003), submits that in the circumstances of the present case the Respondent’s passive holding of the disputed domain name indicates bad faith registration and use. In this regard the Complainant submits in particular that: (i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in France; (ii) the Respondent will not be able to provide any evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name; (iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name; (iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement; and (v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as passing off, infringing consumer protection legislation, or infringing the Complainant’s rights under trademark law.
The Complainant submits therefore that in accordance with paragraph 4(b)(iv) of the Policy the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location to which the disputed domain name has resolved, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to establish that:
i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. the disputed domain name has been registered and is being used in bad faith A. Identical or Confusingly Similar
The Complainant has provided convincing evidence that it is the owner of, and has rights in, the trademark and service mark BANQUE POPULAIRE through its above-listed trademark registrations and its extensive use of the mark in France and 46 other jurisdictions across the world.
Having compared both, this Panel accepts the Complainant’s submissions that the disputed domain name is confusingly similar to the Complainant’s BANQUE POPULAIRE mark.
The element “populaire” is the dominant element in the disputed domain name and the Complainant’s mark. The element “support” is descriptive and indicative of a website that provides technical support so in the context of the present case does not serve to distinguish the domain name from the Complainant’s mark. Similarly the gTLD extension (“.info”) may be ignored in the circumstances of the present case for the purposes of comparison.
This Panel accepts the Complainant’s submission that when taken in combination with the other elements of the mark the letter “b” is indicative of the word bank. In reaching this decision this Panel is fortified by the fact that, as held below, the Respondent has established web pages that are identical to those on the Complainant’s website in order to trap innocent Internet users.
The Complainant has therefore satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant, as owner of the BANQUE POPULAIRE mark, has not granted any right or license to the Respondent to use its mark or any similar mark in a domain name.
Furthermore the Complainant has provided evidence that the Respondent is using the disputed domain name to present a website which is identical to the Complainant’s site to engage in phishing for information from the Complainant’s customers, contrary to a bona fide offering of goods or services contemplated under the Policy.
It is well established that where a complainant makes out a prima facie case in this regard the burden of production shifts to the respondent to provide evidence of such rights or legitimate interest. In this case the Respondent has failed to file a Response or provide any evidence or submissions.
In the circumstances this Panel finds that the Complainant has also satisfied the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
In the absence of any Response or other explanation, this Panel finds on the balance of probabilities that the disputed domain name was registered and is being used in bad faith.
This Panel accepts the Complainant’s submission that when the disputed domain name was registered on February 15, 2016 the registrant of the disputed domain name must have been aware of the Complainant’s goodwill and reputation in the BANQUE POPULAIRE mark and the Complainant’s Internet presence through the websites to which the Complainant’s above-listed domain names resolve.
On the evidence this Panel finds that the disputed domain name was intentionally selected and registered in order to target and mislead innocent Internet users and to take predatory advantage of the goodwill and reputation of the Complainant and its mark for the purposes of diverting Internet traffic to the Respondent’s website which has been set up for the purposes of phishing as alleged by the Complainant.
This Panel therefore finds that the Complainant has also satisfied the third and final element of paragraph 4(a) of the Policy and is entitled to succeed in this proceeding. 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 the Complainant.
James Bridgeman
Sole Panelist
Date: May 1, 2017
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