Complainant is Boursorama S.A., France, represented by Nameshield, France.
Respondent is Wu Yu, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2021. On November 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 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 Complainant on November 22, 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 November 23, 2021.
The Center verified that the Complaint together with the amended Complaint satisfy 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 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 6, 2022.
The Center appointed Phillip V. Marano as the sole panelist in this matter on January 26, 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 November 2, 2021. At the time this Complaint was filed, the disputed domain name resolves to a pay-per-click parking page with links to “Asset Management Applications” and “Platforme de Trading Bitcoin”.
5. Parties’ Contentions A. ComplainantComplainant asserts ownership of the BOURSORAMA trademark and has adduced evidence of 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 the words “QR Code” 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” or the disputed domain name; the lack of any relationship, license, or authorization between Complainant and Respondent; Respondent’s use of the disputed domain name to resolve to a parking website with commercial links; and Respondent’s open offer to sell the disputed domain name for USD 5,000.00.
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; Respondent’s use of the disputed domain name to resolve to a parking website with commercial links; and Respondent’s open offer to sell 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;
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)”).
A. Identical or Confusingly SimilarOwnership 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, 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 “.co” country-code Top-Level Domain (“ccTLD”), 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 ccTLDs, such as “.co” 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 “QRcode” 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]”) 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 “Wu Yu”, is not commonly known by the disputed domain name or Complainant’s BOURSORAMA trademark.
Service of pay-per-click advertisements through the disputed domain name attempts to trade off the goodwill of Complainant and accordingly cannot constitute any bona fide offering of goods or services using the disputed domain name. WIPO Overview 3.0, section 2.9 (Unless “genuinely related to the dictionary meaning” of the disputed domain, “[pay-per-click] links do not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of Complainant’s mark or otherwise mislead Internet users.”) See, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066 (use of a domain name in connection with a web page that “only contains advertisements as sponsored links” is “for presumed commercial gain”); Zions Bancorporation v. Domain Administrator, Fundacion Private Whois,WIPO Case No. D2014-0465 (“a parking website containing sponsored links… cannot be considered either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name as the Respondent is unduly profiting from the Complainant’s goodwill by misleading Internet users to its website”); and Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206 (a disputed domain name “pointing to awebsite featuring PPC [pay-per-click] links… could not be construed as a bona fide orlegitimate noncommercial or fair use”). In this Complaint, the disputed domain name resolves to a pay-per-click parking page with links to third party financial services such as “Asset Management Applications” and “Platforme de Trading Bitcoin”. As such, Respondent attempts to misdirect and confuse Internet users by trading off the goodwill of Complainant’s BOURSORAMA trademark, which cannot be considered either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, and Respondent’s attempts to misdirect Internet users by trading off the goodwill of Complainant’s 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 SA v. 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 SA 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’”). 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.
Third-party generated material, such as parking websites with pay-per-click links, cannot be disclaimed by Respondent to prevent a finding of bad faith. WIPO Overview, section 3.5 (“A respondent cannot disclaim responsibility for content appearing on the website associated with its domain name” regardless of whether “such links [are] generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that respondent itself may not have directly profited….”). See SAP SE v. Domains by Proxy, LLC / Kamal Karmakar,WIPO Case No. D2016-2497 (“It is well established that where a domain name is used to generate revenue in respect of ‘click through’ traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith … Revenue will be generated by such visitors clicking on the provided links and it does not matter whether that revenue accrues to the Respondents or the operator of the parking site”) (internal citations omitted). In this Complaint, the disputed domain name resolves to a pay-per-click parking page with links to third party financial services related to Complainant, such as “Asset Management Applications” and “Platforme de Trading Bitcoin”. Respondent’s attempts to misdirect and confuse Internet users by trading off the goodwill of Complainant’s BOURSORAMA trademark constitute sufficient evidence of registration and use in bad faith.
Registration of the disputed domain name with intent to profit by exploiting Complainant’s trademark and selling that disputed domain name constitutes axiomatic bad faith registration and use under paragraph 4(b)(i) of the Policy. As in this case, bad faith is evident where Respondent clearly has knowledge of Complainant’s trademark, the trademark at issue has been recognized as distinctive and well-known for the purposes of the Policy, the same trademark well predates registration of the disputed domain name, the website content associated with the disputed domain name targets the services offered by Complainant, and Respondent offers to sell the disputed domain name to the general public. WIPO Overview 3.0, section 3.1.1. Specifically, Respondent placed on its website an open offer to the public to sell the disputed domain name for USD 5,000.00. This is more likely than not far in excess of any conceivable or apparent registration costs and it falls well within paragraph 4(b)(i) of the Policy. Respondent’s offer at this price is clear evidence of Respondent’s opportunistic bad faith intention to acquire and sell the disputed domain name, which is confusingly similar to Complainant’s BOURSORAMA trademark.
In view of Respondent’s attempts to sell the disputed domain name in excess of Respondent’s out-of-pocket costs, and Respondent’s use of the disputed domain name to derive a commercial benefit by trading of the goodwill of Complainant’s trademark from pay-per-click advertising targeted to Complainant’s financial services, 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 11, 2022