ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Banque Palatine v. Ibra Calle Case No. D2023-0326 1. The Parties The Complainant is Banque Palatine, France, represented by DBK Law Firm, France. The Respondent is Ibra Calle, United Kingdom. 2. The Domain Names and Registrar The disputed domain names
and are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 25, 2023. On January 26, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 27, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (GDPR Masked) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 30, 2023, 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 the same date. 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 February 10, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 7, 2023. The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on March 10, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and page 2 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 company founded in 1780, active in the banking and asset management sector. The Complainant is a wholly owned subsidiary of Groupe BPCE, the latter is active in over 40 countries through its subsidiaries. Amongst others, the Complainant owns several active word trademarks, including: - French trademark BANQUE PALATINE No. 3644179 registered on April 15, 2009 in classes 35, 36 and 38; and - European Union trademark PALATINE No. 004353223 registered on July 31, 2006 in classes 9, 16, 35, 36, 38, 41 and 42. The Complainant claims that its trademarks are well known and duly exploited in the finance and banking industry. The Complainant also operates the domain name , registered on October 13, 2004. The disputed domain names were registered by the Respondent on January 18, 2023. At the time of filing of the Complaint, it appears that the disputed domain names were inactive. 5. Parties' Contentions A. Complainant The Complainant contends that the disputed domain names are confusingly similar to its well-known PALATINE and BANQUE PALATINE trademarks, as the disputed domain names fully incorporate the trademarks. Additionally, the association with the terms "banque privée" or "espace" does not suffice to distinguish the disputed domain names from the Complainant's trademarks but rather will be perceived as a reference to the services of the Complainant. The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain names, as the Respondent has not been authorized, licensed or otherwise permitted by the Complainant to use its trademarks, including as domain names. Furthermore, the Respondent has not made a legitimate noncommercial or fair use of the disputed domain names. The Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith as they incorporated well-known trademarks of the Complainant, especially building on the prior notoriety of the BANQUE PALATINE brand. In addition, the Complainant asserts that the bad faith should be inferred from the passive holding of the disputed domain names given the strong reputation of the BANQUE PALATINE trademarks and the lack of evidence of any actual or contemplated good faith use. B. Respondent The Respondent did not reply to the Complainant's contentions. page 3 6.Discussion and Findings A.Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must demonstrate that the disputed domain names are (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights. On the basis of the evidence presented, it is established that the Complainant owns several BANQUE PALATINE and PALATINE word trademarks. The disputed domain name reproduces the Complainant's BANQUE PALATINE word trademark, albeit interspersed by the term "privee" ("private" in French) and with the addition of the term "ma" ("my"). The disputed domain name reproduces the Complainant's PALATINE word trademark, albeit with the addition of the term "monespace-" (translated as "my space"). Previous UDRP panels have consistently held that, in circumstances where the disputed domain name incorporates the entirety of a trademark or its dominant feature is recognizable, the disputed domain name will be considered confusingly similar to the trademark (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7; Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber, WIPO Case No. D2003-0251; and Bayerische Motoren Werke AG ("BMW") v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs, WIPO Case No. D2017-0156). This finding of confusing similarity is not prevented by the addition of other terms (WIPO Overview 3.0, section 1.8; Intesa Sanpaolo S.p.A. v. Rampe Purda, WIPO Case No. D2010-1116; and Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Mark Bolet, WIPO Case No. D2006-1245). Additionally, it is well-established that the generic Top-Level Domain ".com" is typically not taken into account for the purpose of assessing confusing similarity under the Policy, as it is merely standard registration requirement (WIPO Overview 3.0, section 1.11). Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademarks and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B.Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, evidence of the Respondent's rights or legitimate interests in the disputed domain names for the purposes of paragraph 4(a)(ii) may be established, in particular, by any of the following circumstances: (i) prior to becoming aware of the dispute, the Respondent has used 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 made demonstrable preparations to do so; (ii)the Respondent is commonly known by the disputed domain name in question, even without having acquired trademark or service mark rights; or (iii)the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent to misleadingly divert consumers for profit by creating confusion or to tarnish the trademark or service mark at issue. Where the Complainant establishes prima facie that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production on this element is on the Respondent and it is up to the Respondent to provide relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent does not provide such relevant evidence, the Complainant is deemed to have satisfied the second element (WIPO Overview 3.0, section 2.1). page 4 The Complainant establishes prima facie that the Respondent has no rights in BANQUE PALATINE or PALATINE trademarks and that the Respondent has not been authorized, licensed or otherwise permitted by the Complainant to use said trademarks in any corresponding domain name. The Complainant also establishes prima facie that the Respondent is not commonly known by the disputed domain names and is not making legitimate noncommercial or fair use of the disputed domain names. The Panel notes that the composition of the disputed domain names incorporating the Complainant's trademarks in their entirety together with the terms associated with the Complainant's business carries a risk of implied affiliation. The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not exercised its right to defend itself and has not asserted the existence of a legitimate interest in the disputed domain names, so the Panel must conclude that the second condition of paragraph (4)(a) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides circumstances, in particular but without limitation, that shall be evidence of a disputed domain name being registered and used in bad faith. In addition to the circumstances provided in paragraph 4(b) of the Policy, the Panel may also consider special circumstances such as (i) the nature of the domain name (e.g., a typo of a widely known mark, or a domain name incorporating the complainant's mark plus an additional term such as a descriptive or geographic term), (ii) a clear lack of rights or legitimate interests coupled with the absence of a credible explanation for the respondent's choice of domain name, or (iii) other indicia generally suggesting that the respondent has targeted the complainant in some way (WIPO Overview 3.0, section 3.2.1). On the basis of this provision, previous UDRP panels have already held on multiple occasions that the mere registration of a domain name that is identical or confusingly similar to a well-known or widely-known trademark by an unaffiliated entity may be sufficient to create a presumption of bad faith, as the respondent knew or should have known that its domain name would be identical or confusingly similar to the complainant's trademark (WIPO Overview 3.0, sections 3.1.4 and 3.2.2). The disputed domain names were registered on January 18, 2023, which is subsequent to the registration of the Complainant's BANQUE PALATINE and PALATINE trademarks in 2006 and 2009. Previous UDRP panels have found that the Complainant's PALATINE trademarks are well known (Banque Palatine v. Ivan Popov, WIPO Case No. D2021-2635). The Panel accepts that these elements create a presumption of bad faith on the part of the Respondent. Further, the incorporation of the terms "ma", "privee" and "monespace-" in the disputed domain names, in addition to the Complainant's trademarks increases the likelihood of confusion for the public given their meaning in French and ensuing relation to the industry and services of the Complainant. Moreover, the websites displayed at the disputed domain names are inactive. The Panel therefore considers that the Respondent has engaged in passive holding of the disputed domain names. In the presence of other relevant circumstances such as (i) the widespread use of the Complainant's trademarks, (ii) the Respondent's lack of response, and (iii) the implausibility of any good faith use to which disputed domain names may be put the Panel considers that these elements warrant a finding of bad faith (WIPO Overview 3.0, section 3.3). For the reasons set out above, the Panel considers that the requirement of registration and use in bad faith of the disputed domain names set out in paragraph 4(a)(iii) of the Policy is satisfied. page 5 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 names, and , be transferred to the Complainant. /Benoit Van Asbroeck/ Benoit Van Asbroeck Sole Panelist Date: March 24, 2023
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