BPCE v Adam port

WIPO Case No. D2025-0044

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

BPCE v. Adam port

Case No. D2025-0044

1. The Parties

The Complainant is BPCE, France, represented by KALLIOPE Law Firm, France.

The Respondent is Adam port, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <groupebpce-solution.com> is registered with Hostinger Operations, UAB (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2025. On January 7, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2025, 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 (Domain Admin, Privacy Protect, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 9, 2025, 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 January 10, 2025.

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 13, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 2, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 3, 2025.

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The Center appointed Olga Zalomiy as the sole panelist in this matter on February 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 major banking group. The Complainant owns numerous trademark registrations for the BCPE trademark, such as:

The French trademark registration No. 3653852 for the BPCE mark, registered on May 29, 2009;
The European trademark registration No. 008375842 for the BPCE mark, registered on January 12, 2010;

The European trademark registration No. 008375875 for the BPCE mark, registered on January 12, 2010.

In 2009, the Complainant registered the domain names incorporating its trademark, such as ˂groupebpce.fr˃

and ˂groupebpce.com˃, that have been used for the company’s websites.

Prior panels have found the Complainant’s trademark to be well-known.1

The Respondent registered the disputed domain name on November 3, 2024. The disputed domain name does not direct to any active websites.

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 BCPE trademark despite the addition of the generic terms “groupe”, “solution”, or the hyphen. The Complainant argues that the applicable generic Top-Level (“gTLD”) domain name, which is viewed as standard registration requirement, is not taken into consideration.

The Complainant alleges that it has no association with the Respondent and has not granted authorization for the Respondent to use its trademarks. The Complainant argues that there is no evidence to suggest that the Respondent is commonly known by the disputed domain name. The Complainant contends that the Respondent has not registered any trademarks or trade names corresponding to the disputed domain name. The Complainant alleges that the Respondent has engaged in neither noncommercial, nor fair use of the disputed domain name, as it has not been actively used.

The Complainant contends that the Respondent registered the disputed domain name in bad faith, because the disputed domain name fully incorporates its well-known trademark and was registered years after the Complainant registered its mark. The Complainant argues that the Respondent’s passive holding of the disputed domain name does not prevent finding of bad faith use of the disputed domain name, given the degree of distinctiveness of the Complainant’s mark, the Respondent’s failure of submit a response, and the implausibility of any good faith use of the disputed domain name. The Complainant argues that the Respondent’s use of a false mailing address at the time of the disputed domain name registration is further evidence of bad faith registration and use.

1BPCE v. WhoisGuard Protected, WhoisGuard, Inc. / Fransis Coarno, Danstic, WIPO Case No. D2020-0967; BPCE v. Seymi Lozano,

WIPO Case No. D2022-4185

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B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the disputed domain name:

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

(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.

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 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. The inclusion of the gTLD “.com” is typically disregarded in the context of the confusing similarity assessment, being a technical requirement for registration. WIPO Overview 3.0, section 1.11.1.

Although the addition of other terms here, “groupe” and “solution”, 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

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demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the
Policy or otherwise.

The evidence on record shows that the Respondent is not commonly known by the disputed domain name. The Respondent has not been authorized by the Complainant to use the Complainant’s trademark in a domain name. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name or uses it for bona fide offering of goods or services, because the disputed domain name does not direct to an active website.

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 Panel notes that the Respondent registered the disputed domain name incorporating the Complainant’s well-known trademark 15 years after the Complainant’s first trademark registration. The Respondent’s lack of rights or legitimate interests in the disputed domain name, the absence of a credible explanation for choosing the disputed domain name, and the reputation of the Complainant’s trademark, indicate that the disputed domain name was registered in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that the non-use of a domain name (including a blank 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 distinctiveness or 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 <groupebpce-solution.com> be transferred to the Complainant.

/Olga Zalomiy/ Olga Zalomiy Sole Panelist Date: February 24, 2025