Boursorama S.A. v Sergey Ivanov

WIPO Case No. D2022-4886

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Boursorama S.A. v. Sergey Ivanov

Case No. D2022-4886

1. The Parties

The Complainant is Boursorama S.A., France, represented by Nameshield, France.

The Respondent is Sergey Ivanov, Russian Federation.

2. The Domain Names and Registrar

The disputed domain names <clientboursoramas.com> and <logins-boursorama.com> are registered with

Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2022. On December 20, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 22, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 27, 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 December 28, 2023.

On December 27, 2022, the Center send an email in English and Russian to the Parties regarding the language of proceeding. The Complaint confirmed its request that English be the language of the proceeding on December 28, 2022. The Respondent did not comment on the language of proceeding.

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 January 12, 2023. In accordance with the Rules, paragraph
5, the due date for Response was February 1, 2023. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 2, 2023.

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The Center appointed Clark W. Lackert as the sole panelist in this matter on February 27, 2023. 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 an online financial institution which offers brokerage, banking, and financial information clients.

to its clients via the Internet. It was founded in 1995 and in France alone currently has 3.3 million customers.

The Complainant owns the trademark BOURSORAMA and has registered it in the European Union and

France as follows:

Jurisdiction	Registration Number	Registration Date
European Union	EUIPO - 001758614	October 19, 2001
France	FR - 98723359 (& others)	August 28, 1998 (& others)

The Complainant has included the trademark in domain names, including <boursorama.com>, registered
February 28, 1998, which is its principal website.

The disputed domain names were registered on December 15, 2022, long after the claimed rights of the Complainant. The disputed domain names previously resolved to a login page copying the Complainant’s official customer access. At the time of the filing of the Complaint, the disputed domain names did not resolve to active websites.

5. Parties’ Contentions

A. Complainant

The disputed domain names were registered on December 15, 2022, and resolve to a login page copying the Complainant’s official customer access. The websites were taken down following a notification to the hosting provider, and the disputed domain names are now inactive.

The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The addition of the descriptive terms “client” or “logins” (plural of “login”) does not change the overall impression of the designation as being connected to the Complainant’s trademark

BOURSORAMA. It is well established that “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP”. See Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888, concerning <porsche- autoparts.com>. Moreover, the Complainant contends that the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” does not change the overall impression of the designation as being connected to the trademark BOURSORAMA of the Complainant. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 concerning <all-about-tamiflu.com>. (“It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.”). Thus, the disputed domain names are confusingly similar to the Complainant’s trademark BOURSORAMA.

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rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of Respondent is not identified in the WhoIs database as the disputed domain names. The Respondent is not known to the Complainant and is not affiliated with nor authorized by the Complainant in any way. The Complainant does not carry out any activity with, nor has any business with, the Respondent. Neither a license nor an authorization has been granted to the Respondent to make any use of the Complainant’s trademark BOURSORAMA, or to apply for registration of the disputed domain names. The disputed domain names resolve to a login page spoofing the Complainant’s official customer access. Consequently, the disputed domain names used to illegally impersonate the Complainant and thus any use of the disputed domain names by Respondent is illegitimate.

demonstrating rights or legitimate interests in the domain names. If the Respondent fails to do so, the

The domain names were registered and are being used in bad faith. The disputed domain names include the well-known and distinctive trademark BOURSORAMA. Besides, the addition of the terms “client” and “logins” cannot be coincidental, as they directly refer to the Complainant’s official customer access and

misdirects web traffic by using a spoofed website for “clients” and “logins”. When Internet users type in their illegitimate activity like phishing and identity theft. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent and use of a domain name to pass oneself off as a complainant in furtherance of a phishing scheme is evidence of bad faith registration and use under Policy 4(b)(iii) and (iv).

login details on the websites in the erroneous assumption that they are on official websites of the

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 Agreements for the disputed domain names is Russian. Under paragraph 11(a) 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 submitted its Complaint in English, and requests the proceeding to be held in English. The Center has sent all its relevant email communications to the Respondent in both English and Russian, and has invited the Respondent to express his views on the language of the proceeding. The Respondent has not responded to this invitation and has thus not objected to the Complainant’s request that the proceeding be held in English. The disputed domain names incorporate the Complainant’s trademark plus the English terms “client” and “logins”.

The Panel therefore accepts the Complainant’s language request based upon the reasons set forth above. The Panel also finds that it is fair and procedurally efficient for English to be the language of the proceeding under the circumstances of this case.

6.2. Substantive Issues

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A. Identical or Confusingly Similar

The disputed domain names wholly incorporate the Complainant’s trademark, and adds the term “client” and terms do not prevent a finding of confusing similarity.
“logins” in addition to the gTLD “.com”, which do not affect the confusing similarity analysis. See F5
Networks, Inc. v. Dennis Brooks, WIPO Case No. D2016-2476 concerning the domain name
<f5-incorporated.com> wherein the term “incorporated” was discounted for analyzing confusing similarity,
ASOS PLC et al. v. Liu Bing, WIPO Case No. D2022-0604 (transferring the domain name
<missselfridgeshop.com> because the term “shop” “does not prevent a finding of confusing similarity” with
Complainant’s MISS SELFRIDGE trademark); Skorpio Ltd. v. Li Huaiqing, WIPO Case No. D2022-0538
(transferring the domain name <therickowenshop.com> because “shop” did not prevent a finding of
confusing similarity between the disputed domain name and the trademark). As the panel stated in Easy
Online Solutions, Ltd. d/b/a MojoHost v. Maxx, WIPO Case No. D2021-0303: “ Previous panels have found
confusing similarity when a respondent merely adds a dictionary word and a gTLD to a complainant’s mark.”
In WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview
3.0”), section 1.8, the issue is described as: “Where the relevant trademark is recognizable within the
disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative,
meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The

nature of such additional term(s) may however bear on assessment of the second and third elements.”

The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

The record indicates that the Complainant has made an unrebutted prima facie case, and does not contain any evidence to indicate that the Respondent has any rights or legitimate interests in using Complainant’s trademark in the disputed domain names.

The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

Ropes & Gray LLP v. Onso Onso, WIPO Case No. D2019-0823. As the panel stated: “Moreover, the use of the domain name to illegally spoof and phish existing clients of the Complainant into believing that they are authorized to receive funds on behalf of client is a violation of Policy, paragraph 4(b)(iv). Caffitaly System S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Organization: Winsomgroup, Robert Hills, WIPO Case No. D2018-2804, and WIPO Overview 3.0, section 3.1.4.” In accordance with section 3.1.4 of WIPO Overview 3.0, the use of a domain name for fraudulent activities is considered evidence of bad faith. The addition of the terms “client” and “logins” does not lessen confusion, but rather increases it, since it gives potential “clients” the mistaken belief that they can “login” to the legitimate website by means of the disputed domain names.

The fraudulent use of the disputed domain names (aimed at misleading clients of the Complainant), including
a login page copying the Complainant’s official customer access, using the Complainant’s trademark
BOURSORAMA to mislead clients into believing that Respondent was sponsored by or connected with

Prior WIPO UDRP panels have encountered similar fact patterns concerning the BOURSORAMA trademark. See Boursorama S.A. v. Ivan Popov, WIPO Case No. D2022-1143. (“The Panel finds that the Complainant’s BOURSORAMA trademark is inherently distinctive that it is most unlikely the Respondent might have

registered the Disputed Domain Names without full knowledge of it. (See Boursorama S.A. v. WhoisGuard, Inc. / Margaret Robinson, WIPO Case No. D2020-0083; Boursorama S.A. v. Rachid Gormoz, WIPO Case No. D2020-2299; Boursorama S.A. v. David Lopez, WIPO Case No. D2020-2546; Boursorama SA v.

Estrade Nicolas, WIPO Case No. D2017-1463)”). Besides, the disputed domain names used to resolve to a login page mimicking the Complainant’s official customer access. See Boursorama S.A. v. Ivan Popov,

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WIPO Case No. D2022-1143. (“The use of the said Disputed Domain Name is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant.) All of these panels found for the Complainant herein.

Moreover, the registration of a domain name that incorporates a widely known mark by an unaffiliated entity can by itself create a presumption of bad faith. See, e.g., The Dow Chemical Company v. dowchemical [email protected] +86.7508126859, WIPO Case No. D2008-1078 (finding <dowaychemical.com> registered in bad faith in view of the “widely known trademarks” of the complainant); see also IDR Solutions Ltd. v. Whois Privacy Corp., WIPO Case No. D2016-2156 (evidence of third party recognition of complainant’s JPEDAL mark supported conclusion that <jpedal.org> was registered in bad faith). As WIPO Overview 3.0, section 3.1.4 states: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”

The fact that the disputed domain names do not currently resolve to active websites does not prevent a finding of bad faith.

The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

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, <clientboursoramas.com> and <logins-boursorama.com>, be transferred to the Complainant.

/Clark W. Lackert/
Clark W. Lackert
Sole Panelist
Date: March 13, 2023