The Complainant is BPCE, France, represented by DBK – Société d’avocats, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Fransis Coarno, Danstic, Benin. 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 20, 2020. On April 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 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 22, 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 24, 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 April 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2020. The Center appointed Daniel Peña as the sole panelist in this matter on May 25, 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 a French joint stock company acting in the financial services sector. The Complainant is the second largest banking group in France and pursues a full range of banking, financing and insurance activities, working through its two major Banque Populaire and Caisse d’Epargne cooperative banking networks and through its different subsidiaries. The Complainant has put down deep roots in its local markets. Its 105,000 employees serve a total of 36 million customers, 9 of whom have decided to become cooperative shareholders. The Complainant is well known in the international market and is present in more than 40 countries via its various subsidiaries. The Complainant is the owner of numerous trademarks, including: - the European Union trademark BPCE registered under number 8375842 on June 19, 2009, for services in class 36; - the French trademark BPCE registered under number 3653852 on May 29, 2009, for services in classes 9, 16, 35, 36, 38, 41 and 45; - The International trademark BPCE registered under number 1033662 on December 15, 2009, for services in class 36. The Complainant is also the owner of numerous domain names, directly and also via its subsidiary GCE TECHNOLOGIES, such as The disputed domain name The disputed domain name leads to website about banking services. At the time of this decision, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its BPCE trademarks. The disputed domain name entirely reproduces the BPCE trademark of the Complainant with the generic term investment, which is related to financial services. Consequently, there is a likelihood of confusion between the disputed domain name and the Complainant’s prior trademarks rights. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no trademark rights on the expression “bpce”. The Respondent is not commonly known by the disputed domain name, nor does it have a business or legal relationship with the Complainant, nor does the Respondent have any authorization from the Complainant to register the domain name or a domain name corresponding to the BPCE trademarks. The Complainant alleges that the disputed domain name has been used to take advantage of the reputation of the Complainant’s trademarks in order to access confidential banking information for malicious purposes. Furthermore, the Complainant contends that on the website at the disputed domain name it is indicated that the website is published by “BPCE BANQUE, SA” and that “BPCE BANQUE” is approved as a credit institution and investment service provider by the Prudential Control and Resolution Authority. However, the Complainant alleges, after a search on the trade register companies website, it appears that the company “BPCE BANQUE SA” does not exist. The Complainant asserts that the Respondent is using the disputed domain name to intentionally attempt to attract Internet users, for commercial gain, to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Considering these requirements, the Panel rules as follows: A. Identical or Confusingly Similar The Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Respondent’s incorporation of the Complainant’s trademark BPCE in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. Mere addition of the dictionary term “investment” and a hyphen symbol to the Complainant’s mark does not prevent a finding of confusing similarity. The addition of other terms (whether descriptive, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. The nature of such term(s) may however bear on assessment of the second and third elements. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain “.com” to the disputed domain name does not prevent a finding of confusing similarity for purposes of the Policy (see Carlsberg A/S v. Xu Guo Xing,WIPO Case No. D2017-0301; Philip Morris USA Inc. v. Shimei Wang,WIPO Case No. D2016-2517; Livelle v. Martijn Noordermer,WIPO Case No. D2016-2524). The Panel is satisfied that the disputed domain name is identical or confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth. Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). Furthermore, the unrebutted claim of the Complainant that the disputed domain name is being used for phishing at sensitive data supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.13) The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark BPCE is such that the Respondent, must have had knowledge of the trademark before registering the disputed domain name. The Respondent appears to have chosen the disputed domain name in order to deliberately attract Internet users to its website in the mistaken belief that it was the website of the Complainant, or otherwise linked to or authorized by the Complainant. That impression is only reinforced by the content of the Respondent’s site whereby reference is made to a company also dedicated to financial services that does not appear to exist in the Companies Register but whose commercial name reproduces that of the Complainant. As such, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website. Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith. In addition, the risk of the disputed domain name being used for phishing, supported by the Complainant’s claims and evidence, affirms a finding of bad faith (see WIPO Overview 3.0, section 3.4). The Panel concludes that the disputed domain name was registered and is being used in bad faith. 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 Daniel Peña
Sole Panelist
Date: June 8, 2020
Full & Egal Universal Law Academy