Banque Palatine v Zinsalo Zinsalo

WIPO Case No. D2023-0658

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Banque Palatine v. Zinsalo Zinsalo

Case No. D2023-0658

1. The Parties

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

The Respondent is Zinsalo Zinsalo, Benin.

2. The Domain Name and Registrar

The disputed domain name <paltinbk.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 February 13, 2023. On February 14, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2023, 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 (Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 16, 2023, 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 February 16, 2023.

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 February 23, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2023.

The Center appointed Ganna Prokhorova as the sole panelist in this matter on April 6, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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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, specialized in small and medium-sized companies, and in asset management.

The Complainant holds numerous trademark registrations in many jurisdictions that comprise the term

“palatine”, including, among the others, the following:

- International trademark No. 1066933, BANQUE PALATINE L'ART D'ÊTRE BANQUIER (combined),
registered on January 12, 2011, for services in class 35 and 36;

- European Union trademark Registration No. 004353223, PALATINE, registered on July 31, 2006, for
goods and services in class 9, 16, 35, 36, 38, 41, and 42;

- French trademark Registration No. 3338990, PALATINE, registered on February 3, 2005, for goods
and services in classes 9, 16, 38, 41, 42, and 45.

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

The disputed domain name was registered on May 24, 2022, and at the time of filing the Complaint resolved to an active website highly similar to the Complainant’s website “ using the trademarks and identical images of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

(1) the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.

The disputed domain name consists of the terms “paltin” and “bk” and the generic Top-Level Domain
(“gTLD”) “.com”. The word “paltin” is the dominant element of the disputed domain name and is very similar
to the Complainant’s trademarks, which represents a classic example of typosquatting. Besides, the suffix
“bk” can be seen as a shortening or a misspelling of the term “bank” which strengthens the impression that
the disputed domain name belongs to, or is affiliated with the Complainant;

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

Respondent is not commonly known by the disputed domain name. There is no evidence of the corresponding to the disputed domain name in connection with a bona fide offering of goods or services;

(3) the disputed domain name was registered and is being used in bad faith. The Complainant’s

well-known trademarks pre-date the registration of the disputed domain name. The choice of the disputed domain names has been done on purpose to generate a likelihood of confusion with the disputed domain name and the trademarks of the Complainant. The disputed domain name is connected to a website highly

similar to the Complainant’s website “ using the trademarks and identical images. There is no doubt that the Respondent is trying to take advantage of typographical errors which can be made when typing web addresses and benefit from the likelihood of confusion with the trademarks and the domain name
of the Complainant. By having the disputed domain name connected to a website that looks exactly like the

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official website of the Complainant, the Respondent generates traffic to the site linked to the disputed domain

name, and may alter the link at its will without the Complainant having any control of this.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as follows:

(i)        the disputed domain name 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 name; and

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

The Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint.

Moreover, the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP consensus views captured therein.

A. Identical or Confusingly Similar

According to paragraph 4(a)(i) of the Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights.

The Panel confirms that for the purposes of paragraph 4(a)(i) of the Policy the Complainant has satisfied the threshold requirement of having relevant trademark rights for PALATINE and BANQUE PALATINE in jurisdictions throughout the world.

With the Complainant’s trademark rights established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to the Complainant’s mark.

It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

The disputed domain name consists of the terms “paltin” and “bk”. Having carefully considered the case file, the Panel concludes that the misspelling of the Complainant’s trademark PALATINE within the disputed domain name cannot prevent a finding a confusing similarity, as it simply eliminates the letters “a” and “e” in the trademark. In addition, employing a misspelling in this way signals an intention on the part of the Respondent to confuse users seeking or expecting the Complainant (WIPO Overview 3.0 at section 1.9).

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For all of the above-mentioned reasons, the Panel concludes that the disputed domain name is confusingly
similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the

Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie case demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).

The evidence in the case file shows that the Respondent is not commonly known by the disputed domain name. The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.

Moreover, given that the disputed domain name consists of a misspelling of the Complainant’s trademark, the Panel struggles to conceive any legitimate interests of the Respondent in the disputed domain name. Under such circumstances, any use of the disputed domain name by the Respondent only increases the possibility of the Internet users to falsely attribute the disputed domain name to the activities of the

Complainant. Besides, the suffix “bk” can be seen as a shortening or a misspelling of the term “bank” which strengthens the impression that the disputed domain name belongs to, or is affiliated with the Complainant. The combination of a distinctive trademark together with a word relevant to the trademark’s target group
creates an immediate potential for false association with the Complainant’s trademark (Nordea Bank AB v.
Domainsecrecy.com, WIPO Case No. D2010-1818).

Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Once the Complainant makes a prima facie case, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name.

The Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name.

With the evidence on file, it is undoubtedly established that the Respondent has no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under the third UDRP element, the Complainant is required to prove that the disputed domain name was registered and is being used in bad faith.

Paragraph 4(b) of the Policy provides that, in particular, the following circumstance, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(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 online 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.”

The trademarks of the Complainant are distinctive, well-known and widely used. Previous panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a

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famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

See section 3.1.4 of the WIPO Overview 3.0.

The most elementary Internet search by the Respondent would have disclosed the Complainant's PALATINE
marks and domain name. The Panel must thus draw an inference that the Respondent thus knew of the
Complainant's PALATINE marks, websites, and services and that the Respondent registered the confusingly
similar disputed domain name in bad faith (La Banque Palatine v. Palatine-Group SA, WIPO Case No.
D2014-0874).

Therefore, the Panels concludes that the choice of the disputed domain name does not seem to be a mere coincidence, but on the contrary seems to have been done on purpose to generate a likelihood of confusion with the trademarks of the Complainant.

As regards use, the Panel draws its attention that the disputed domain name is connected to a website can be made when typing web addresses and benefit from the likelihood of confusion with the trademarks of the Complainant. The case file clearly states the Respondent is not making a bona fide offering of services through its website, but is rather using it for the purpose of attempting to attract Internet users to its website for its personal interest, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website

highly similar to the Complainant’s website “ using the trademarks and identical images.

The Responded failed to submit a Response, provide any evidence of good-faith use, or to show rights or legitimate interests in the disputed domain name.

For the reasons set out above, the Panel concludes that the disputed domain name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 <paltinbk.com> be transferred to the Complainant.

/Ganna Prokhorova/
Ganna Prokhorova
Sole Panelist
Date: April 19, 2023