The Complainant is Boursorama S.A., France, represented by Nameshield, France.
The Respondent is WhoisGuard, Inc., Panama / Margaret Robinson, United States of America (“United States”).
The disputed domain name <boursorama.pro> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2020. On January 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name(s). On January 15, 2020, 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 January 16, 2020 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 January 16, 2020.
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 January 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2020.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on February 19, 2020. 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 states that it is a pioneer and leader in online brokerage, provision of financial information on the Internet and online banking. It states that it was founded in 1995 with the advent of the web and since then has continued to innovate in order to meet the new banking expectations of the French in terms of autonomy, simplicity and savings. It also states that its web portal “www.boursorama.com” is the first national financial and economic information site and first French online banking platform.
The Complainant states that it has substantive rights and interests in the term “Boursorama”. These arise from the following. First, the Complainant states that it is the owner of several trademarks for BOURSORAMA and gives, as an example, details of the following trademark registration:
|
Trademark |
Origin |
Registration No. |
Date of registration |
Classes |
|
BOURSORAMA |
European Union (EU) |
001758614 |
October 19, 2001 |
9, 16, 35, 36, 38, 41, 42 |
The Complainant’s trademarks are collectively referred to as “the BOURSORAMA Mark”.
Secondly, the Complainant states that it is also the owner of several domain names which include the BOURSORAMA Mark. These include <boursorama.com>, registered since March 1, 1998 and <client-boursorama.com>, registered since November 16, 2016.
The Respondent registered the disputed domain name <boursorama.pro> on January 14, 2020. According to the WhoIs database, the Respondent in this proceeding registered the disputed domain name through a privacy service.
The disputed domain name points to a parking page with commercial links in relation with the Complainant’s activities.
The Complainant asserts its rights in the BOURSORAMA Mark. The Complainant contends that the disputed domain name is identical to its BOURSORAMA Mark. It further contends that the addition of the generic Top-Level Domain (“gTLD”) suffix “.pro” does not change the overall impression of the disputed domain name as being connected to the BOURSORAMA Mark and the Complainant.
The Complainant also contends that the Respondent has no rights in respect of the disputed domain name. In this respect, the Complainant states that the Respondent is not commonly known by the disputed domain name and is not affiliated with or otherwise known to the Complainant. The Complainant also states that the Respondent is not licensed by or otherwise authorized by it in any way to use the BOURSORAMA Mark.
The Complainant further contends that the Respondent has no legitimate interests in respect of the disputed domain name. In this respect, the Complainant states that the disputed domain name resolves to a parking page with commercial links in relation to the Complainant’s activities.
Finally, the Complainant contends that the disputed domain name was registered in full knowledge of the Complainant’s rights. The Complainant also contends that that the Respondent is using the disputed domain name in bad faith to attract Internet users on its website by creating a likelihood of confusion with the Complainant’s BOURSORAMA Mark as to source, affiliation or endorsement
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant has provided evidence of its EU trademark registration for the BOURSORAMA Mark since 2001. It has also provided evidence of its domain name registrations incorporating the BOURSORAMA Mark. Accordingly, it is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the BOURSORAMA Mark. The Panel is also satisfied that the Complainant is well-known in Europe by its BOURSORAMA Mark as a provider of online brokerage services, the provision of financial information on the Internet and online banking services.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that the test for identity or confusing similarity under the first element involves a side-by-side comparison of the domain name and the textual components of the relevant trademark. The Panel accepts that, on a side-by-side comparison, the first and dominant element of the disputed domain name is identical to the BOURSORAMA Mark. The BOURSORAMA Mark is subsumed entirely within the disputed domain name.
As for the “.pro” gTLD suffix, section 1.8 of the WIPO Overview 3.0 states that a TLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element. Section 1.11.2 further states that the practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”) as the ordinary meaning applied to a particular TLD would not necessarily impact assessment of the first element. See also the decision of Société Air France v Registration Private, Domains By Proxy, LLC / Albuquerque, hwuaye, WIPO Case No. D2019-0191.
The Panel therefore accepts that the gTLD “.pro” may be disregarded for the purposes of comparison under the first element.
The Panel therefore finds that the disputed domain name is identical to the Complainant’s BOURSORAMA Mark.
Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use 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
(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trade mark or service mark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant has stated, and the Panel accepts, that it has not authorized the Respondent to use its BOURSORAMA Mark and the Respondent is not a licensee of the Complainant.
The Complainant has also stated, and the Panel also accepts, that the Respondent is not known and has never been known as “boursorama”.
In respect of the above, the Panel is entitled to have regard to the lack of any substantive response from the Respondent and the absence of any claim to rights in the disputed domain name.
In addition, the Complainant has provided as evidence, a screenshot of the website to which the disputed domain name resolves (Annex 6 of the Complaint). This screenshot shows that the disputed domain name resolves to a parking page with commercial links in relation to the Complainant’s activities. Section 2.9 of the WIPO Overview 3.0 notes that Panels have found that the use of a domain name to host a parked page comprising Pay-Per-Click (PPC) links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users. Given that the commercial links shown on the website to which the disputed domain name resolves are related to the Complainant’s activities, the Panel concludes that the Respondent likely intended to capitalize on the reputation and goodwill of the Complainant’s BOURSORAMA Mark. At the very least, it provides evidence that the Respondent was, and is, aware of the Complainant and its BOURSORAMA Mark and does not have any rights or legitimate interests in the disputed domain name.
Again, the Panel is also entitled to have regard to the lack of any substantive response from the Respondent and the absence of any claim to legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly finds paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:
(i) The Panel is satisfied that the Complainant’s BOURSORAMA Mark is well known in its industry in Europe. As noted above, the Panel is also satisfied that the Respondent was, and is, aware of the Complainant and its BOURSORAMA Mark. This is evidenced by the fact that the disputed domain name is identical to the BOURSORAMA Mark and resolves to a parking page with commercial links in relation to the Complainant’s activities.
(ii) Without any rights or legitimate interests, and noting the circumstances of the case, the Respondent’s registration of the disputed domain name is indicative of bad faith.
The Panel is also satisfied that the disputed domain name has been used in bad faith. The Complainant has provided evidence (Annex 6 of the Complaint) that the website to which the disputed domain name resolves is a parking page with commercial links in relation to the Complainant’s activities. The Respondent has made no submissions in these proceedings and so the Panel infers that the Respondent has allowed the disputed domain name to be used with an intent to attract Internet users on its website by creating a likelihood of confusion with the Complainant’s trademark as to source, affiliation or endorsement.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favour of the Complainant.
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 <boursorama.pro> be transferred to the Complainant.
Andrew Brown Q.C.
Sole Panelist
Date: February 25, 2020