Complainant is Boursorama S.A., France, represented by Nameshield, France.
Respondent is henkie jan, Netherlands.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 16, 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 Respondent of the Complaint, and the proceedings commenced on December 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 12, 2022.
The Center appointed Phillip V. Marano as the sole panelist in this matter on January 19, 2022. 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 BackgroundComplainant is a French financial institution that provides investment and online banking services, operated primarily through Complainant’s
The disputed domain name was registered on December 12, 2021. At the time this Complaint was filed, the disputed domain name did not resolve to any website content.
5. Parties’ Contentions A. ComplainantComplainant asserts ownership of the BOURSORAMA trademark and has adduced evidence of the trademark registration in the European Union, with earliest priority dating back to October 19, 2001. The disputed domain name is confusingly similar to Complainant’s BOURSORAMA trademark, according to Complainant, because the addition of “auth” and “.website” do not change the overall commercial impression of the disputed domain name as being connected to Complainant’s trademark.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any evidence that Respondent is known by the term “boursorama”; the lack of any relationship, license, or authorization between Complainant and Respondent; and Respondent’s passive holding of the disputed domain name incorporating Complainant’s distinctive and well known trademark.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: the distinctive nature of Complainant’s BOURSORAMA trademark, which prior UDRP panels have concluded to be well known; and Respondent’s passive holding of the disputed domain name.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsTo succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
i. The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; and
ii. 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.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true […] UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); see also The Vanguard Group, Inc. v. Lorna Kang,
WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the BOURSORAMA trademark has been registered in the European Union with priority dating back to October 19, 2001, nearly twenty years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the BOURSORAMA trademark have been established pursuant to the first element of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s BOURSORAMA trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s BOURSORAMA trademark because, disregarding the “.website” generic Top-Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0, section 1.7 (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar [...]”). In regards to gTLDs, such as “.website” in the disputed domain name, they are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.1.
The combination with the term “-auth” does not prevent a finding of confusing similarity between Complainant’s BOURSORAMA trademark and the disputed domain name. WIPO Overview 3.0, section 1.8 (Additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity under the first element); see also AT&T Corp. v. WorldclassMedia.com,
WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”); and OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam,
WIPO Case No. D2017-1583 (“[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark.”).
In view of Complainant’s registration for the BOURSORAMA trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s trademark and that Complainant has established the first element of the Policy.
B. Rights or Legitimate InterestsComplainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0, section 2.1.
It is evident that Respondent, identified by the Registrar as “henkie jan”, is not commonly known by the disputed domain name or Complainant’s BOURSORAMA trademark.
Based on the limited yet undisputed facts and circumstances in the record before it, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. This is especially the case where a domain name is so obviously connected with a distinctive and well known trademark that the very registration by a registrant with no connection to a complainant suggests opportunistic bad faith. The Panel concludes from the record that Respondent had Complainant’s BOURSORAMA trademark, which has been recognized by prior UDRP panels as distinctive and well known for purposes of the Policy, in mind when registering the disputed domain name, and that Respondent most likely registered the disputed domain name in order to exploit and profit from Complainant’s trademark rights. See e.g., Boursorama SA v. Estrade Nicolas,
WIPO Case No. D2017-1463 (“Given the […] longstanding of use of the Complainant’s trademark, and the distinctive nature of the mark BOURSORAMA, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark.”). Accordingly, Respondent’s passively holding the disputed domain name in and of itself cannot constitute a bona fide offering of goods or services. Philip Morris USA Inc. v. Gabriel Hall,
WIPO Case No. D2015-1779.
In view of the absence of any evidence supporting any Respondent rights or legitimate interests in the disputed domain name, and Respondent’s passive holding of the disputed domain name, which incorporates Complainant’s distinctive BOURSORAMA trademark, the Panel concludes that Complainant has established the second element of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy prescribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating a descriptive term) to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (particularly where no conceivable good faith use could be made). WIPO Overview 3.0, Section 3.1.4. Complainant has adduced evidence of recognition of the BOURSORAMA trademark and cited several UDRP panel decisions in agreement that Complainant’s BOURSORAMA trademark is considered to be “well known” for purposes of the Policy. See e.g., Boursorama SA v. Estrade Nicolas,
WIPO Case No. D2017-1463; Boursorama S.A. v. WhoisGuard, Inc. / Margaret Robinson,
WIPO Case No. D2020-0083 (“The Panel is satisfied that the Complainant’s BOURSORAMA Mark is well known in its industry in Europe.”); Boursorama S.A. contre Eurl Heranval,
WIPO Case No. D2017-0179 (“The BOURSORAMA trademark has a highly distinctive character and a presence in the country where the Respondent resides […] the BOURSORAMA trademark is exploited ‘notoriously in France and abroad in relationship with online financial services’ and is as such ‘widely known’” (citations omitted)). As such, the Panel finds it is unconceivable that Respondent could have registered the disputed domain name without knowledge of Complainant’s BOURSORAMA trademark, and without any intention to benefit from confusion with Complainant’s BOURSORAMA trademark.
Passively holding a domain name does not prevent a finding of bad faith. WIPO Overview 3.0, section 3.3. This includes domain names that do not resolve to any website content. Where a domain name is being passively held, as alleged in this case, bad faith registration and use exists based upon: (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit any response or offer any credible evidence of rights or legitimate interests; (iii) the respondent’s concealing its identity or use of false contact details; and (iv) the implausibility of any good faith use which the domain name may be put. See Id. See also Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003 (“A remedy can be obtained under the Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”). To that end, and as cited by the panel above, the Panel acknowledges the multitude of prior panel decisions under the Policy concluding that Complainant’s BOURSORAMA trademark is “well known”. In conjunction with Respondent’s failure to submit any evidence or arguments asserting rights or legitimate interests, in this Panel’s view, it remains unconceivable that Respondent could have registered the disputed domain name without knowledge of Complainant’s BOURSORAMA trademark, and without any intention to benefit from confusion with Complainant’s BOURSORAMA trademark.
In view of multiple UDRP panel decisions recognizing the distinctive and well known nature of Complainant’s BOURSORAMA trademark, and Respondent’s evident opportunistic bad faith in targeting that trademark in the disputed domain name, as well as Respondent’s passive holding of the disputed domain name, the Panel concludes that Complainant has established the third element of the Policy.
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,
Phillip V. Marano
Sole Panelist
Date: February 9, 2022