The Complainant is Banque Delubac et Cie, France, represented by Nameshield, France.
The Respondent is Global Domain Privacy, France / Michel Vivier, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2020. On April 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2020, 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 April 26, 2020 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 April 27, 2020. 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 May 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2020. The Center appointed Alexandre Nappey as the sole panelist in this matter on May 30, 2020. 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 the French company Banque Delubac et Cie, an independent financial institution providing specialized banking services. The Complainant offers five main branches of business: judicial bank, bank of property administrators, savings management bank; investment bank; and, bank of companies and factoring. The Complainant owns several trademarks containing the term DELUBAC, in particular: - European Union trademark DELUBAC n° 017978583 registered since October 31, 2018 that covers services in classes 9, 16, 35, 36, 38, and 41. The disputed domain name At the time of the drafting of the decision, the disputed domain name is not active. The Complainant provided evidence that at the time of submission of the Complaint, the disputed domain name resolved to a website displaying a user access portal. 5. Parties’ Contentions A. Complainant The Complainant first alleges that the disputed domain name is confusingly similar to its trademark DELUBAC. Indeed, the trademark DELUBAC is included in its entirety in the disputed domain name. The addition of the dash and the word “patrimoine” (French word for “asset”) does not change the overall impression of the designation as being connected to the Complainant’s trademark. On the contrary, it worsens the likelihood of confusion as it directly refers to the investment funds provided by the Complainant’s subsidiary Delubac Asset Management. Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with nor authorized by the Complainant in any way. The Respondent has no rights or legitimate interests in respect of the disputed domain name, and Respondent is not related in any way to its business. The Complainant does not carry out any activity for, nor has any business with the Respondent. No license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark DELUBAC. Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith. - Registered in bad faith: The Complainant alleges that, by registering the disputed domain name, which consists of the association of the trademark DELUBAC and the term “patrimoine” (or “assets” in English) referring to the Complainant’s investment funds Delubac Patrimoine, the Complainant can state that the nature of the disputed domain name itself is a strong indication that the Respondent was targeting the Complainant at the time of registration, which is an evidence of bad faith. - Use in bad faith: The disputed domain name redirects to the Respondent’s website, which mainly consist of a user’s access portal. The Complainant claims the Respondent can collect personal information through this website, namely email addresses and passwords. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Notwithstanding the lack of a response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate 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. However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. Having consideration to the Parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above-mentioned elements are the following: A. Identical or Confusingly Similar The Panel is satisfied that the Complainant owns exclusive trademark rights in DELUBAC, which predate the registration of the disputed domain name. The Panel finds that the disputed domain name is confusingly similar to the registered DELUBAC trademark owned by the Complainant. Indeed, the disputed domain name incorporates the entirety of the Complainant’s DELUBAC trademark with the mere addition of the dictionary term “patrimoine” (French word for “assets”), which likely refers to the Complainant’s “assets management” activities (in French “gestion de patrimoine”) and to the Complainant’s subsidiary company named “Delubac Patrimoine”. See in similar circumstances: Banque Pictet & Cie SA v. HWYHK Solicitors, Hau Wong / Whoisguard Protected, Whoisguard, Inc.,WIPO Case No. D2014-2067 regarding “The addition of the words ‘asset’ and ‘management’ does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.” Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s marks under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Considering the difficulty to demonstrate a negative, UDRP panels generally find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the policy, then the burden of production shifts to the respondent to demonstrate its rights or legitimate interests. (See De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-1465). Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its DELUBAC trademark. It results from the circumstances of this case that the Respondent does not own any right in the trademark DELUBAC and is not commonly known by the disputed domain name. In light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. As the Respondent has not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that: “For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Since DELUBAC is a distinctive trademark and there is no evidenced relationship between the Parties, and since the disputed domain name is a combination of the trademark DELUBAC and the word “patrimoine” which directly refers to one of the Complainant’s activities (“gestion de patrimoine”, in English “assets management”), it may be assumed that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name. Moreover, the Complainant submitted evidence showing that the website operated under the disputed domain name encouraged Internet users to provide their email address and password. Such use allowed the Respondent to collect personal data from unsuspecting Internet users. It appears therefore that the Respondent, by making reference to the DELUBAC trademark, has been trying to create a likelihood of confusion in order to attract, for commercial gain, Internet users to its website and collect sensitive personal data from unsuspecting Internet users searching for the Complainant. The Panel finds that the Respondent’s use of the disputed domain name cannot therefore confer rights or legitimate interests on the Respondent and constitutes evidence of bad faith. See sections 3.1.4 and 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds that the Respondent registered the disputed domain name with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy. The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement 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 Alexandre Nappey
Sole Panelist
Date: June 15, 2020
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