Banque Palatine v Name Redacted

WIPO Case No. D2024-3901

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Banque Palatine v. Name Redacted

Case No. D2024-3901

1. The Parties

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

The Respondent is Name Redacted.[1]

[1] The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential

2. The Domain Name and Registrar

The disputed domain name <palatinegestion.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 September 24,

2024. On September 24, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the disputed domain name. On September 25, 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 on September 27, 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 September 27, 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the

Complaint, and the proceedings commenced on October 2, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was October 22, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on October 24, 2024.

On October 15, 2024, a third party sent an email to the Center regarding the claimed unauthorized use of her

father’s identity in relation to the disputed domain name. On October 17, the Center acknowledges receipt of

the email and informed the Parties of said communication.

The Center appointed William Lobelson as the sole panelist in this matter on October 30, 2024. 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 BANQUE PALATINE, a French-based financial company, offering banking and assets

management services. It is is the owner of:

- French trademark “PALATINE” registered under number 3314051 on February 25, 2005, for services

in classes 35 and 36;

- French trademark “PALATINE” registered under number 3338990 on July 15, 2005, for goods and

services in classes 9, 16, 38, 41, 42, and 45;

- European Union Trade Mark “PALATINE” registered under number 004353223 on July 31, 2006, for

goods and services in class 9, 16, 35, 36, 38, 41, 42;

- Domain name <palatine.fr>, registered since 2004.

The disputed domain name <palatinegestion.com> was registered on September 12, 2024, and redirects to

a parking page with pay-per-click links (“PPC links”). Mail exchange (“MX”) servers appear to have been set

up, so that it is technically possible to use the disputed domain name for sending emails.

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 contends that the disputed domain name is confusingly similar to its earlier

trademark, that the Respondent has no rights or legitimate interests in the disputed domain name, and that

the disputed domain name has been registered and is being used in bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

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6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its

case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must

prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights (paragraph 4(a)(i));

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

(paragraph 4(a)(ii)); and

(iii) the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

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.

Based on the available record, the Panel finds 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 Panel finds the mark is recognizable 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 “gestion”) 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.

Based on the available record, 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.

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The Complainant has made a prima facie showing that the Respondent does not have any rights or

legitimate interests in the disputed domain name, particularly by asserting that the Respondent is not

affiliated with it in any way and that it never authorized the Respondent to use its trademark as part of the

disputed domain name.

The Complainant contends that the Respondent is not commonly known under the disputed domain name

and does not make any bona fide or legitimate noncommercial use of the same, being emphasized that the

disputed domain name resolves towards a parking page with PPC links, on which the brand name

“palatinegestion” is not used in relation with any genuine and bona fide offer of goods or services.

Based on the available record, 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, the Complainant has contended that its trademark PALATINE, that has been registered

and used for years, is distinctive and benefits from a certain level of public awareness, particularly in France,

and that earlier UDRP decisions have acknowledged so. The Panel notes that the disputed domain name

prominently includes the Complainant’s trademark in its entirety, followed by the addition of a descriptive

French term. Moreover, the Panel notes that a third party has raised identity theft concerns relating to the

alleged registration of the disputed domain name in the name of an unrelated third party.

The Panel infers from the above that the Respondent acted in bad faith when it registered the disputed

domain name.

It is further noted by the Panel that the disputed domain name is routed towards a parking page with PPC

links, including links offering competing goods or services, on which the name “palatinegestion” is not used in

relation with any genuine and bona fide offer of goods or services. See Mayflower Transit LLC v. Domains

by Proxy Inc./Yariv Moshe, WIPO Case No. D2007-1695 (“Respondent’s use of a domain name confusingly

similar to Complainant’s trademark for the purpose of offering sponsored links does not of itself qualify as a

bona fide use.”).

Further, the Complainant has filed evidence showing that the Respondent had set up MX servers in relation

with the disputed domain name, thus revealing a possible intention to use the same as an email address.

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 <palatinegestion.com> be transferred to the Complainant.

/William Lobelson/

William Lobelson

Sole Panelist

Date: November 4, 2024

identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this

decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent.

The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated

Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v.

FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.