Decision for dispute CAC-UDRP-104810

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of the following European Union registered trademark:

BOURSORAMA, word mark, registered October 19, 2001 under number 1758614, for goods and services in Nice classes 9, 16, 35, 36, 38, 41 and 42.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is a financial institution which is the owner of the BOURSORAMA trademark. Under such mark, it engages in three core businesses of online brokerage, delivery of financial information on the Internet and online banking. The Complainant asserts that it is a pioneer of online banking launched in 2005. It has a portal at “www.boursorama.com”, and claims over four million customers.  The Complainant owns a number of domain names incorporating the BOURSORAMA marks, including <boursorama.com>, registered since March 1, 1998, and <boursorama-banque.com>, registered since May 26, 2005.

The disputed domain name was registered on August 17, 2022 and resolves to a web server index page.  MX records are configured on the associated nameservers.

The disputed domain name is confusingly similar to the Complainant’s trademark.  It contains the Complainant’s BOURSORAMA trademark in its entirety prefixed with the generic French word “financement” (meaning funding). The addition of such word is insufficient to escape a finding of confusing similarity. The suffix “.com” likewise does not change the overall impression of the designation or prevent a finding of confusing similarity. Many previous UDRP decisions have affirmed the Complainant’s rights.

The disputed domain name has been registered by the Respondent without rights or legitimate interests. The Respondent is not known by the disputed domain name. The Respondent is not identified in the WhoIs database as the disputed domain name. Previous panels have held that a respondent was not commonly known by a domain name if the WhoIs was not similar to such domain name.

The Respondent is not known by the Complainant. The Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant does not carry out any activity for, nor has any business with the Respondent. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s BOURSORAMA trademark, or to apply for registration of the disputed domain name. The disputed domain name resolves to an index page. The Respondent did not make any use of disputed domain name since its registration, and has no demonstrable plan to use the disputed domain name.

The disputed domain name has been registered and is being used in bad faith. Previous cases under the Policy establish that the Complainant’s BOURSORAMA trademark is distinctive and well-known.  The Complainant contends that the Respondent has registered and used the disputed domain name with full knowledge of the Complainant's trademark.

Previous panels under the Policy have held that the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. The disputed domain name resolves to an index page and MX servers are configured. The Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The Complainant has demonstrated that the disputed domain name contains the Complainant’s BOURSORAMA mark in its entirety, prefixed by the French word “financement”.    

The prefixing of such word to the Complainant’s said mark does not avoid a finding of confusing similarity under the Policy. The Complainant’s distinctive BOURSORAMA trademark is recognizable in the disputed domain name and the additional term is insufficient to remove the overall impression made upon the public by the presence of such trademark (see, for example, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409). The hyphen in the disputed domain name, being mere punctuation, is likewise of no consequence. The generic Top-Level Domain ".com" may be disregarded in the assessment on the grounds that it is merely required for technical reasons. The Panel is satisfied that the Complainant’s distinctive trademark is the dominant component of the disputed domain name notwithstanding the additional element, which in any event is a word associated with the Complainant’s line of business.

The Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name to the Panel’s satisfaction by reference to its submissions that the Respondent is not commonly known by the disputed domain name, is not affiliated with nor authorized by the Complainant in any way, has no business with the Complainant, and possesses neither license nor authorization to make any use of the Complainant’s BOURSORAMA trademark, or to apply for registration of the disputed domain name. The Panel also notes that the disputed domain name resolves to a server index page, and that the Complainant asserts that the Respondent did not make any use of disputed domain name since its registration, nor has demonstrated any plan to use the disputed domain name.

The Respondent failed to rebut the Complainant’s prima facie case in that it did not file any Response. There are no surrounding facts or circumstances tending to show that the Respondent may otherwise have rights or legitimate interests in the disputed domain name. It is therefore reasonable in the circumstances for the Panel to find that that the Respondent has no such rights or legitimate interests therein.

In the Panel’s opinion, the Complainant has successfully made out a case of registration and use in bad faith in respect of the disputed domain name. The presence of the Complainant’s distinctive trademark in the disputed domain name, prefixed by a word associated with the Complainant’s line of business, strongly suggests, in the absence of submissions and evidence to the contrary, that the Respondent had knowledge of the Complainant and its mark at the point of registration.

The disputed domain name has MX records configured on the delegated nameservers. If it were to be used by the Respondent at any point for the sending of e-mail, this would give the appearance that such communications originated genuinely from the Complainant. Any e-mail replies to said emails would be directed by said MX records to a mail server designated by and potentially under the control of the Respondent. This would conceivably lead to the Respondent receiving sensitive personal data from the Complainant’s customers, who would be confused by the presence of the Complainant’s well-known mark in the disputed domain name into believing that they were e-mailing such information to the Complainant. This could not be considered to be a good faith use of the disputed domain name.

There is no website at the disputed domain name other than a server index page. Accordingly it is being “passively held”. Such passive holding does not allow the Respondent to escape a finding of registration and use in bad faith in circumstances where, as here, the disputed domain name is confusingly similar to the Complainant’s well-known mark (coupled with a word denoting the Complainant’s line of business), where the Respondent has failed to submit a Response or otherwise to provide any evidence of actual or contemplated good faith use, and it is implausible that the disputed domain name could be put to any such good faith use if its website were to become active (see, on this topic, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Respondent has failed to address any of the Complainant’s contentions by way of any Response and did not advance any alternative motivation for the registration and use of the disputed domain name which might have indicated that its actions were in good faith.