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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banque Palatine v. Ivan Popov

Case No. D2021-2635

1. The Parties

The Complainant is Banque Palatine, France, represented by DBK – Société d’avocats, France.

The Respondent is Ivan Popov, Russian Federation.

2. The Domain Names and Registrar

The disputed domain names <https-palatine.com> and <palatine-fr.com> are registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021. On August 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 13, 2021, 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.

On August 18, 2021, the Center wrote in English and Russian to the Parties in respect of the language of the administrative proceeding. On August 20, 2021, the Complainant submitted its Complaint translated into Russian. The Respondent did not submit any comments in respect of the language of the proceeding.

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 August 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2021.

The Center appointed Assen Alexiev as the sole panelist in this matter on October 19, 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

The Complainant is a French bank founded in 1780 and specialized in small and medium-sized companies and in asset management. The Complainant is a wholly-owned subsidiary of Groupe BPCE, one of the largest banking groups in France, which is present in more than 40 countries.

The Complainant is the owner of the following trademark registrations for the sign PALATINE (the “PALATINE trademark”):

- the European Union Trade Mark PALATINE with registration No. 004353223, registered on July 31, 2006 for goods and services in International Classes 9, 16, 35, 36, 38, 41 and 42;

- the French trademark PALATINE with registration No. 3338990, registered on February 3, 2005 for goods and services in International Classes 9, 16, 38, 41, 42, and 45; and

- the French trademark PALATINE with registration No. 3314051, registered on September 22, 2004 for services in International Classes 35 and 36.

The Complainant is also the owner of the domain name <palatine.fr>, registered on December 3, 2004, which resolves to the Complainant’s official website at “www.palatine.fr/”.

The disputed domain names were registered on July 4, 2021. They are inactive.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names are confusingly similar to its PALATINE trademark, because they identically reproduce the Complainant’s trademark and domain name, which leads Internet users to believe that the disputed domain names belong to the Complainant and are an expansion of its services. The addition of a hyphen and the letters “fr” in the disputed domain name <palatine-fr.com> directly refers to the Complainant’s French origin which increases the likelihood of confusion, while the addition of the “https” acronym (standing for “Hypertext Transfer Protocol Secure”) in the disputed domain name <https-palatine.com> does not prevent a finding of confusing similarity between the Complainant’s trademarks and disputed domain name.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain names, because the Complainant has never authorized it to register or use any domain name incorporating the PALATINE trademark, and the Respondent has no right to use the disputed domain names. According to the Complainant, there has been no bona fide offering of goods and services through the disputed domain names and no legitimate noncommercial or fair use of them as they are inactive.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. It notes that the PALATINE trademark is well-known in France and through the world, notably by the financial and banking market consumers, and its registration pre-dates the registration of the disputed domain names.
According to the Complainant, the choice of the disputed domain names seems to have been done on purpose to generate a likelihood of confusion with the Complainant’s PALATINE trademark and domain name.

The Complainant submits that the passive use of the disputed domain names does not prevent a finding of bad faith use in view of the degree of distinctiveness or reputation of the Complainant’s PALATINE trademark, the Respondent’s concealing its identity or use of false contact details, and the implausibility of any good faith use to which the disputed domain names may be put. The Complainant points out in this regard that there is no evidence of any actual or contemplated good faith use of the disputed domain names, the contact details used by the Respondent are false, and a good faith use of the disputed domain names is implausible because their composition is likely to deceive consumers that the disputed domain names represent secure online locations associated to the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural issue – Language of the proceeding

According to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain names is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant originally submitted its Complaint in English. Following the receipt of the correspondence from the Center in respect of the language of the proceeding, the Complainant submitted a Russian translation of the Complaint.

The Center has notified the Complaint and has invited the Respondent in English and Russian to express its views on the language of the proceeding. The Respondent has however submitted no observations on the language of the proceeding. As evident from the case file and noted by the Complainant, the physical address provided by the Respondent to the Registrar for the purposes of the registration of the disputed domain names appears to be incorrect, and the Respondent has not submitted any Response in this proceeding or shown any intent to participate in it, although it was notified of the proceeding and provided with an opportunity to submit a Response in Russian. The composition of the disputed domain names supports a conclusion that they are directed at an international public, rather than at the Russian or Russian-speaking public, as they contain no Russian words. In view of all these circumstances, the Panel is not aware of any reason why at this point the Respondent would be disadvantaged if the language of the proceeding is English, and accepts that using the English language in this proceeding would be fair and efficient.

Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.

6.2. Substantive issues

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

(i) each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the Respondent has registered and are using the disputed domain names in bad faith.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].”

The Respondent has, however, not submitted a formal Response or disputed the Complainant’s contentions and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the owner of the PALATINE trademark. In view of this, the Panel accepts that the Complainant has established its rights in this trademark for the purposes of the present proceeding.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain names.

Each of the disputed domain names incorporates the PALATINE trademark in its entirety together with the abbreviations “fr” and “http-”. The PALATINE trademark remains easily recognizable in each of the disputed domain names. As discussed in section 1.8 of the WIPO Overview 3.0, in cases where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element.

In view of the above, the Panel finds that the disputed domain names are confusingly similar to the PALATINE trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, because the Complainant has not authorized it to use the PALATINE trademark, which was registered earlier, and the Respondent has not carried out any legitimate activities with the disputed domain names. According to the Complainant, the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain names. Thus, the Complainant has established a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names.

The Respondent has not submitted a formal Response. It has not provided any arguments in support of the existence of any rights or legitimate interests in the disputed domain names, and has not denied the allegations of the Complainant or disputed the evidence that it has brought forward.

The disputed domain names all incorporate the PALATINE trademark, which was first registered 17 years earlier, together with commonly used abbreviations, referring to France and to a secure Internet protocol, and the Respondent has not provided any explanation why it has chosen to register them. It has provided to the Registrar contact details that appear to be incorrect, and the disputed domain names are inactive.

In view of the above, and in the lack of any arguments or evidence to the contrary, the Panel concludes that it is more likely than not that the Respondent has targeted the PALATINE trademark with the registration of the disputed domain names in an attempt to improperly capitalize on the reputation and goodwill associated with this trademark by confusing and attracting to the disputed domain names Internet users seeking the Complainant. In the Panel’s view, such conduct does not appear as legitimate and does not give rise to rights or legitimate interests of the Respondent in the disputed domain names.

In addition, the Panel finds that the nature of the disputed domain names carry a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

Therefore, the Panel finds that the Respondent does not have rights and legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The disputed domain names are confusingly similar to the PALATINE trademark and were registered in 2021, while the Complainant’s PALATINE trademark was first registered in 2004. One of the disputed domain names contains the abbreviation “fr” which is widely used to refer to France, where the Complainant is located. The Complainant states that it has not authorized the registration and use of the disputed domain names, and the Respondent does not maintain the opposite or provide any plausible explanation for their registration. It has provided to the Registrar contact details that are likely incorrect, and the disputed domain names are inactive.

In view of the above and in the lack of a denial by the Respondent of the arguments and evidence brought forward by the Complainant, the Panel concludes that the Respondent must have been well aware of the goodwill of the Complainant’s PALATINE trademark when it registered the disputed domain names, and that by targeting this trademark, the Respondent has attempted to improperly capitalize on the reputation and goodwill associated with it by confusing Internet users seeking the Complainant’s services into believing that they are reaching official online locations where these services are provided.

The disputed domain names do not resolve to active websites. However, as noted by the Complainant, the disputed domain name <https-palatine.com> may lead Internet users to wrongly believe that it leads to a secure website of the Complainant, which is a bank, and the Respondent has provided contact details that are likely to be incorrect. In view of this, and in the absence of any arguments or evidence to the contrary, it appears more likely that this disputed domain name may be linked to illicit activities. Taking into account the distinctiveness of the PALATINE trademark and the fact that the disputed domain names fully incorporate it together with non-distinctive elements, it also appears to the Panel that the Respondent cannot put the disputed domain names to any legitimate use, and that their registration is suggestive of their intent to seek unjust benefit from the popularity of the Complainant’s trademark. Accordingly, the passive holding of the disputed domain names does not prevent a finding of bad faith.

On the basis of all the above, the Panel finds that the disputed domain names have been registered and are 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 disputed domain names <https-palatine.com> and <palatine-fr.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: November 3, 2021

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