The Complainant is Boursorama SA of Boulogne-Billancourt, France, represented by Nameshield, France.
The Respondent’s name has been redacted for reasons explained below.
The disputed domain name <id-boursoramatrack.com> is registered with Ascio Technologies Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2016. On November 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 3, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 November 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2016. An email communication from the Respondent was received by the Center on November 15, 2016.
The Center appointed Louis -Bernard Buchman as the sole panelist in this matter on December 12, 2016. 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.
The Complainant is a French corporation, founded in 1995. It is a pioneer and leader in France in its three core businesses of online brokerage, financial information on the Internet and online banking. It counted more than 750,000 customers in 2015 and continues to grow.
The Complainant owns several trademarks, starting with the following trademarks: French Trademark BOURSORAMA, registered under No. 98723359 on March 13, 1998, and Community Trademark BOURSORAMA, registered under No. 1758614 on October 19, 2001 (together, “the Marks”).
The Complainant is the registrant, among many others, of the domain name <boursorama.com>, which directs to its official website.
The Complainant’s official website is the top financial and economic information site and online banking platform in France.
The disputed domain name <id-boursoramatrack.com> was created on October 16, 2016 and while active, displayed an account service connection page highly similar to that of the Complainant’s official website. The disputed domain name is currently inactive.
(i) The Complainant submits that the disputed domain name <id-boursoramatrack.com> reproduces the Marks in which the Complainant has rights and is confusingly similar to the Marks.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith as it is using the disputed domain name with the fraudulent intent to lure Internet users into the mistaken belief that the Respondent is, or is associated with, the Complainant, in effect faking the identity of the Complainant.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions. However, in her email communication of November 15, 2016, the Respondent denied having registered the disputed domain name and claimed to be the victim of an identity theft. She also affirmed that her actual telephone number was different from the one mentioned in the registration of the disputed domain name.
As a preliminary matter, the Panel notes that the Respondent has submitted persuasive and sufficient documentation substantiating the Respondent’s claim that the Respondent is a victim of identity theft and had no knowledge of the registration and use of the disputed domain name. Accordingly, the Panel finds that the Respondent was a victim of identity theft, had no knowledge of the registration and use of the disputed domain name, and that it is therefore appropriate in this proceeding to redact the actual name of the Respondent. Independent Health Association Inc. v. Registration Private, Domains By Proxy, LLC/[K.A.], WIPO Case No. D2016-1625 (discussion of name redaction cases).
The Respondent is formally in default pursuant to paragraphs 5(f) and 14(a) of the Rules because no Response was received from the Respondent within the time limit set by the Policy and the Rules.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is still the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even when the Respondent is in default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
In comparing the disputed domain name <id-boursoramatrack.com> with the Marks, the Panel finds that the Marks are replicated entirely in the disputed domain name, the latter simply having the distinctive element “Boursorama” preceded by the letters “id” and a hyphen, and followed by the suffix “track”, which is a generic term.
The consensus view of UDRP panels is that the addition of generic or descriptive terms does not generally serve to distinguish a domain name from a registered trademark. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
In this case, the Panel finds that the dominant component of the disputed domain name <id-boursoramatrack.com> is “boursorama”, and that the inclusion of the prefix “id”, which is a common abbreviation of the word “identity”, only serves to increase the confusion.
It is also well established that the generic Top-Level Domain, such as “.com”, does not generally affect the assessment of a domain name for the purpose of determining identity or confusing similarity.
Consequently, the Panel finds that the similarity between the disputed domain name and the Marks is such as to create confusion for Internet users.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
Although a complainant bears the burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that, with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name once the complainant has made a prima facie showing, as the Panel finds the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
By not submitting a Response, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business.
The website associated with the disputed domain name apparently resolved to a phishing website.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
On the contrary, the Complainant has credibly argued that the Respondent: (i) has no rights or legitimate interests in the disputed domain name and (ii) has registered the disputed domain name with the intent to use it fraudulently, and the email communication of the Respondent of November 15, 2016 tends to confirm that whoever stole her identity had ill intentions.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent (or whoever stole her identity) acted in bad faith by creating confusion with the Complainant and the Marks for the purposes of committing fraud.
It has been established in prior UDRP decisions that the registration of a domain name confusingly similar to a trademark by any entity that has no relationship to that trademark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
In this case, the Panel notes that it is close to impossible that the Respondent chose to register the disputed domain name randomly with no knowledge of the Marks. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
Where a respondent knew or should have known of a trademark prior to registering a domain name containing this mark, such conduct may also suggest bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In addition, the Panel notes that many UDRP decisions have held that bad faith use of a domain name by a respondent may also result from the fact that its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
The Complainant has also argued and provided evidence that the disputed domain name may be fraudulently used to divert Internet users, for commercial gain, through a scam consisting in passing off as an official website of the Complainant.
The Panel notes further that the Complainant has been the target of various illicit activities concerning other domain names that are confusingly similar to trademarks owned by the Complainant, and that in several other UDRP cases, domain names were transferred to the Complainant. See Boursorama S.A. v. Daven Mejon, WIPO Case No. DCO2014-0023; Boursorama S.A. v. Osaki Kyle, WIPO Case No. D2014-1522 and Boursorama S.A. v. Servant Yoann, WIPO Case No. DME2015-0014.
Finally, some UDRP panels have held that, in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel finds that the evidence submitted supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is satisfied in this case.
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 <id-boursoramatrack.com> be transferred to the Complainant.
Louis-Bernard Buchman
Sole Panelist
Date: December 23, 2016