The Complainant is Boursorama S.A., France, represented by Nameshield, France.
The Respondent is Contact Privacy Inc. Customer 1248425917 / Harcourt E Laprise, France.
The disputed domain name <boursorama-s.com> (the “Domain Name”) is registered with Google LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2020. On October 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 20, 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 October 20, 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 October 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2020.
The Center appointed Vincent Denoyelle as the sole panelist in this matter on November 26, 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.
Given that no Response was filed, the following facts are based on the submissions in the Complaint and the Annexes to the Complaint.
The Complainant is a financial services company headquartered in France with online activities including banking and brokerage.
The Complainant is the owner of several trade marks for BOURSORAMA including in France where the Respondent appears to be based. The Complainant’s BOURSORAMA trade marks include the following:
- European Union Trade Mark BOURSORAMA, registration no. 1758614, registered on October 19, 2001.
The Complainant is also the owner of several domain names reflecting its trade mark.
The Domain Name was registered on October 12, 2020, and the Domain Name resolves to an inactive website which triggers a security alert.
The Complainant contends that the Domain Name is confusingly similar to the BOURSORAMA trade mark in which the Complainant has rights as the Domain Name incorporates the entire BOURSORAMA trade mark with the mere addition of the two characters “-s” and that such addition does not prevent the likelihood of confusion between the Domain Name and the Complainant’s trade mark. The Complainant also contends that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not change the overall impression of the Domain Name being connected to the trade mark BOURSORAMA of the Complainant.
The Complainant asserts that the Respondent is not identified in the WhoIs database by the Domain Name and that the Respondent is thus not deemed to be commonly known by the Domain Name. The Complainant also states that the Respondent is not known to the Complainant. The Complainant contends that the Respondent is not affiliated with nor authorised by the Complainant in any way. Furthermore, the Complainant contends that the Domain Name was used to facilitate phishing and that it is now inactive and neither type of use would constitute a legitimate use of the Domain Name. The Complainant concludes that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant contends that the Respondent has registered and used the Domain Name with full knowledge of the Complainant’s trade mark and the Complainant refers to prior UDRP panels finding that the Complainant’s trade mark BOURSORAMA is well-known. The Complainant also alleges that the Respondent had previously attempted to obtain customers’ credentials through a website mimicking the Complainant’s website and that the Respondent had thus registered and used the Domain Name primarily with the intention of attempting to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location, or of a product or service on such website or location.
The Respondent did not reply to the Complainant’s contentions.
In order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met, namely:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
In the case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
In the absence of a Response from the Respondent whereby the Respondent did not object to any of the contentions from the Complainant, the Panel will have to base its decision on the basis of the Complaint and supporting Annexes.
In light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in BOURSORAMA, which is reproduced in its entirety in the Domain Name.
The second point that has to be considered is whether the Domain Name is identical or confusingly similar to the trade mark BOURSORAMA in which the Complainant has rights.
At the second level, the Domain Name incorporates the Complainant’s BOURSORAMA trade mark in its entirety with the mere addition of the two characters “-s”. The Panel finds that the mere addition of the two characters “-s” does not dispel the confusing similarity arising from the incorporation of the Complainant’s exact trade mark in the Domain Name.
Then there is the addition of the gTLD “.com”. As is generally accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test.
Thus, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
Paragraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service mark rights; or
(iii) [the respondent] is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
Numerous previous panels have found under the UDRP that once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name, the burden of production shifts to the Respondent to rebut the showing by providing evidence of its rights or interests in the domain name.
Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Domain Name.
The Complainant has stated that it does not know the Respondent and that it has not licensed or otherwise authorised the Respondent to make any use of its trade mark BOURSORAMA. There is no indication that the Respondent is commonly known by the Domain Name.
The absence of use or rather the apparently malevolent underlying use of the Domain Name and associated website, as suggested by the security warning triggered when the Panel tried to access the website associated with the Domain Name (the following warning was displayed when trying to access the website associated with the Domain Name via Internet Explorer “We recommend that you do not proceed to this website. It has been reported to Microsoft for containing threats to your computer that might reveal personal or financial information”) cannot be considered bona fide, legitimate or fair. The current use of the Domain Name seems to be consistent with the way it was used previously as the Complainant declared in the Complaint.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that [the respondent has] registered or acquired [a disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Given the circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Name was registered in bad faith.
The Domain Name reproduces the exact BOURSORAMA trade mark of the Complainant and this cannot be a coincidence.
The term “boursorama” is to the best of the Panel’s knowledge not a descriptive or common term but instead it is a made up term, so the fact that the Respondent decided to register the Domain Name reproducing this term strongly suggests that the Respondent had the Complainant’s trade mark in mind and targeted it specifically.
This is even more likely given (i) the renown of the BOURSORAMA trade mark, as acknowledged by several previous UDRP panels, (ii) the fact that the Respondent appears to be based in France where the Complainant is headquartered and where its renown is probably higher than anywhere else, and (iii) the fact that the Domain Name was registered relatively recently and many years after the registration of the trade mark BOURSORAMA.
Thus, the Panel finds that the Domain Name was registered in bad faith.
As for use of the Domain Name in bad faith, given the circumstances described in the Complaint, the documentary evidence provided by the Complainant and the brief verification carried out by the Panel of the website associated with the Domain Name, the Panel is satisfied that the Domain Name is used in bad faith.
The Domain Name appears to be passively held but, as the Panel was able to confirm, the associated website triggers a security alert when accessed through Internet Explorer, in the following terms: “We recommend that you do not proceed to this website. It has been reported to Microsoft for containing threats to your computer that might reveal personal or financial information”.
In any event, passive use itself would not cure the Respondent’s bad faith given the overall circumstances here, specifically the renown of the Complainant’s BOURSORAMA trade mark, especially in the country where the Respondent appears to be based and the Respondent’s default. Furthermore, it would seem from the security alert that the Domain Name is used for malevolent purposes, constituting a cybersecurity threat hanging over the Complainant and the Complainant’s customers or potential customers. This can only be seen as use of the Domain Name in bad faith.
The fact that the Respondent chose not to object to the Complainant’s assertions can only reinforce the Panel’s view that the Domain Name is used in bad faith.
Finally, this is further supported by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service, which, in the circumstances, is an additional indication of the Respondent’s bad faith and its intent to use the Domain Name in a way which may be abusive or otherwise detrimental to the Complainant and its rights.
Thus, the Panel finds that the Domain Name is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <boursorama-s.com> be transferred to the Complainant.
Vincent Denoyelle
Sole Panelist
Date: December 10, 2020