Banque Palatine v Luna Paulet

WIPO Case No. D2024-5022

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Banque Palatine v. Luna Paulet

Case No. D2024-5022

1. The Parties

The Complainant is Banque Palatine, France, represented by KALLIOPE Law Firm, France.

The Respondent is Luna Paulet, France.

2. The Domain Name and Registrar

The disputed domain name <palatine-online.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2024. On December 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2024, 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 (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 6, 2024, 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 December 6, 2024.

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 December 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2025.

page 2

The Center appointed Elise Dufour as the sole panelist in this matter on January 10, 2025. 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 that specializes in small and medium-size companies and asset management. The Complainant is a wholly owned subsidiary of Groupe BPCE.

The Complainant and its affiliated companies are the owner of numerous trademarks incorporating part or entirety of its incorporation name (the “PALATINE Trademarks”):

- the French wordmark BANQUE PALATINE No. 3314051, filed on September 22, 2004, for services in
classes 35 and 36;
- the European Union wordmark PALATINE No. 004353223, registered on July 31, 2006, for products and
services in classes 9, 16, 35, 36, 38, 41, and 42; and
- The French wordmark BANQUE PALATINE No. 3644179, filed on April 15, 2009, for services

in classes 35, 36, and 38.

The Complainant is also the owner of the domain name <palatine.fr>, registered since 2004.

The dispute domain name was registered on September 30, 2024, and is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant asserts that the disputed domain name incorporates the term “palatine”, identical
to its well-known trademarks extensively used in the finance and banking industry. The addition of the
descriptive term “online” does not prevent a finding of confusing similarity, as the core trademark remains
clearly recognizable within the disputed domain name. Therefore, the Complainant concludes that the use of
its trademark within the disputed domain name leads the public to believe that the domain name belongs to

the Complainant.

The Complainant further asserts that it has never authorized the Respondent to register or use any domain name.

name incorporating its trademarks. Citing Guerlain S.A. v. Peikang (WIPO Case No. D2000-0055), the
Complainant emphasizes that, in the absence of any license or permission to use its trademarks, the
Respondent cannot claim any bona fide or legitimate use of the disputed domain name. Therefore, the

The Complainant finally asserts that the Respondent registered and is using the disputed domain name in bad faith. Given the well-established reputation of the PALATINE trademarks in the finance and banking industry, the Complainant argues that the Respondent was likely aware of these trademarks at the time of registration.

Furthermore, the Complainant notes that the disputed domain name leads to an inactive website, suggesting passive holding. Citing Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), the Complainant emphasizes that passive holding of a domain name incorporating a well-known trademark

can constitute bad faith use. For the Complainant, the following circumstances demonstrate bad faith: (i) the

page 3

Complainant’s trademarks have a strong reputation; (ii) there is no evidence of any actual or contemplated good faith use of the disputed domain name; (iii) the Respondent's concealment of identity through anonymous WhoIs information; and (iv) the disputed domain name is passively used.

B. Respondent

The Respondent did not reply to the Complainant’s contentions

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the PALATINE mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here, namely “-online”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0,

section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Furthermore, the Panel considers that the composition of the disputed domain name carries a risk of implied affiliation with the Complainant, as the term “online” directly refers to the Complainant’s banking activities on the Internet. WIPO Overview 3.0, section 2.5.1.

page 4

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, considering the notoriety of the trademark of the Complainant (at least in France, where both the Complainant and Respondent are purportedly located), and in the absence of arguments or evidence to the contrary, the Panel finds that the circumstances of this case indicate that, on the balance of probabilities, the Respondent knew or should have known about the Complainant and likely registered the disputed domain name with the intention to unfairly target the Complainant’s mark.

Furthermore, the addition of the word “online” creates a false link with the trademark PALATINE by suggesting the online activity of the Complainant. That appears to be an attempt to generate a likelihood of confusion with the disputed domain name and the Complainant’s trademark, which supports a finding that the registration was made in bad faith.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel notes the reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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 name <palatine-online.com> be transferred to the Complainant.

/Elise Dufour/ Elise Dufour Sole Panelist Date: January 24, 2025