The Complainant is Financo S.A., France, represented by Nameshield, France.
The Respondent is Wilfried Tokponto, Benin.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2021. On September 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 7, 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 September 20, 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 September 20, 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 October 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on November 15, 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 BackgroundFounded in 1986, the Complainant is a financial company specializing in consumer credit. With 400 employees, the Complainant manufactures and distributes financial solutions tailored to individual projects.
The Complainant owns the following registered trademarks: FINANCO (design mark), French Trademark Reg. No. 3747380, registered on June 18, 2010 in international classes 9, 16, 35, 36, 38 and 42; and FINANCO (word mark), European Union Trademark Reg. No. 015695125, registered on March 15, 2020 in international classes 35 and 36 (hereinafter collectively referred to as the “FINANCO Mark”).
The Complainant also registered the domain names
The Disputed Domain Name was registered on August 31, 2021 and resolved to a French website offering loan, consumer credit and other financial services that competed with the services provided by the Complainant on its website at “www.financo.fr”. 1
5. Parties’ Contentions A. ComplainantThe following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s FINANCO Mark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- the Disputed Domain Name was registered and is being used in bad faith; and
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(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 SimilarThis element consists of two parts: first, does the Complainant have rights in a relevant trademark, and second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the FINANCO Mark.
It is uncontroverted that the Complainant has established rights in the FINANCO Mark based on its several years of use as well as its registered trademarks for the FINANCO Mark in France and the European Union. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the FINANCO Mark.
The Disputed Domain Name consists of the FINANCO Mark in its entirety followed by the dictionary or descriptive term “finance”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be deemed confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a dictionary or descriptive term to a trademark does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s FINANCO Mark.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate InterestsUnder the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its FINANCO Mark. Nor does the Complainant have any type of business relationship with the Respondent. Based on the initial use made of the Disputed Domain Name to resolve to the Respondent’s competing website, on which it was offering financial services, the Panel finds that the Respondent was not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. Past UDRP panels have held that using a disputed domain name to resolve to a website offering competing services to that of the complainant is not a use indicative of rights or legitimate interests. On the contrary, here, the Respondent used the FINANCO Mark for commercial gain and to deceive Internet users who mistakenly believed that they arrived at the Complainant’s official website.
Finally, the composition of the Disputed Domain Name, comprising the entirety of the FINANCO Mark, carries a risk of implied affiliation and cannot constitute fair use here, as it effectively suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad FaithThe Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, based on the circumstances here, the Panel concludes that the Respondent registered and was using the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s FINANCO Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving webpage. The Respondent’s registration and initial use of the Disputed Domain Name indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its FINANCO Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”). 2
Second, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
Third, the Panel finds that the Respondent knew that the Complainant had rights in the FINANCO Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name several years after the Complainant first used and obtained its trademark registrations for the FINANCO Mark and the Respondent used the Complainant’s FINANCO Mark to promote its competing financial services on its resolving website, making clear that the Respondent was well aware of the Complainant and its FINANCO Mark, and thus, demonstrating bad faith. Therefore, it strains credulity to believe that the Respondent had not known of the Complainant or its FINANCO Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (respondent’s knowledge of the registration and use of a trademark prior to registering the domain name constitutes bad faith). In sum, the Panel finds it likely that the Respondent had actual knowledge of the Complainant’s FINANCO Mark when registering the Disputed Domain Name.
Finally, the Respondent’s registration of the Disputed Domain Name was an attempt to disrupt the Complainant’s business by diverting Internet users who were searching for the Complainant’s products and services at its official website, as well as to prevent the Complainant from registering the Disputed Domain Name. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. The Panel thus concludes that the Respondent has registered and was using the Disputed Domain Name in bad faith.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.
7. DecisionFor 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
Lynda M. Braun
Sole Panelist
Date: November 29, 2021
1 As of the writing of the Decision, however, the Disputed Domain Name resolved to a landing page that states: “ERROR. It looks like the page you're trying to visit doesn't exist. We are sorry that you have experienced an error.”
2 The Panel also finds that the current use of the Disputed Domain Name to resolve to an inactive landing page demonstrates bad faith use of the Disputed Domain Name by the Respondent. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com,WIPO Case No. D2005-0615.