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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BPCE v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Flor Walden

Case No. D2021-1664

1. The Parties

The Complainant is BPCE, France, represented by DBK Law Firm, France.

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Flor Walden, France.

2. The Domain Name and Registrar

The disputed domain name <groupe-bpce.online> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 27, 2021, 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 May 28, 2021 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 June 4, 2021.

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 June 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2021.

The Center appointed Vincent Denoyelle as the sole panelist in this matter on July 6, 2021. 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 Background

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 international operations.

The Complainant is the owner of a large trade mark portfolio for BPCE including in France where the Respondent appears to be based. The Complainant’s BPCE trade marks include the following:

- French Trade Mark BPCE, registration no. 3653852, registered on May 29, 2009.

- European Union Trade Mark BPCE, registration no. 8375842, filed on June 19, 2009, and registered on January 12, 2010.

The Complainant is also the owner of several domain names reflecting its trade mark under several generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) including the domain names <groupebpce.com> and <groupebpce.fr>.

The Domain Name was registered on February 8, 2021. At the time of the Complaint and of the Decision, the Domain Name resolved to a parking page displaying pay-per-click (“PPC”) links targeting the Complainant’s business.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the BPCE trade mark in which the Complainant has rights as the Domain Name incorporates the entire BPCE trade mark with the mere addition of the term “groupe” and a hyphen “-” 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 gTLD “.online” does not change the overall impression of the Domain Name being connected to the trade mark BPCE of the Complainant.

The Complainant asserts that is has not granted any license, nor any authorisation to the Respondent to use its trade mark, including as part of a domain name. The Complainant also points to the use of the Domain Name to direct to a parking page displaying hyperlinks related to several competitors’ websites promoting the same activities as the Complainant, that it shows that the Domain Name is used to confuse or deceive Internet users, and that this cannot qualify as a bona fide offering of goods or services. The Complainant concludes that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant contends that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trade mark and the Complainant refers to prior UDRP panels supporting the view that the Complainant’s trade mark BPCE is well-known. The Complainant also alleges that the Respondent’s use of the Domain Name to direct to a parking page with hyperlinks to competing services shows that the Respondent’s intention is to take advantage of the reputation and goodwill of the Complainant’s trade mark and image in an effort to attempt 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 Complainant also points to the use of a privacy protection service by the Respondent, which the Complainant asserts is, in the circumstances, an additional indication of the Respondent’s bad faith. Finally, the Complainant refers to several UDRP decisions where the respondent had the same name as the Respondent in the present case (“Flor Walden”) and where the respective panels found in favour of the respective complainants. Thus, the Complainant concludes that the Respondent has registered and is using the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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 decide on the basis of the Complaint and supporting Annexes.

A. Identical or Confusingly Similar

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 BPCE, 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 BPCE in which the Complainant has rights.

At the second level, the Domain Name incorporates the Complainant’s BPCE trade mark in its entirety with the mere addition of the term “groupe” and a hyphen “-“. The Panel finds that these additions do not prevent a finding of 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 “.online”. As is generally accepted, the addition of a gTLD such as “.online” 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 confusingly similar to the trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

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 has not licensed or otherwise authorised the Respondent to make any use of its trade mark BPCE. There is no indication that the Respondent is commonly known by the Domain Name.

The current use of the Domain Name to point to a page with PPC links targeting the Complainant’s sector cannot be considered bona fide, legitimate or fair.

Furthermore, the nature of the Domain Name, comprising the Complainant’s trade mark in its entirety in combination with additional terms, carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

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 BPCE trade mark of the Complainant and this cannot be a coincidence.

The term “BPCE” is not a descriptive or common 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 the overall circumstances including (i) the renown of the BPCE 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, (iii) the fact that the Domain Name was registered relatively recently and many years after the registration of the trade mark BPCE, (iv) the choice of the term added to the trade mark BPCE in the Domain Name and (v) the pattern of abusive registrations by the Respondent.

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’s current use to point to a website consisting of PPC links targeting the Complainant’s sector and redirecting to some of the Complainant’s competitors clearly demonstrates the Respondent’s bad faith in using the Domain Name, in an effort to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark.

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.

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 Domain Name <groupe-bpce.online> be transferred to the Complainant.

Vincent Denoyelle
Sole Panelist
Date: July 20, 2021

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