BPCE v Domain Privacy

WIPO Case No. D2024-4681

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

BPCE v. Domain Privacy

Case No. D2024-4681

1. The Parties

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

The Respondent is Domain Privacy, Cyprus.

2. The Domain Name and Registrar

The disputed domain name <banquepopulairedusud.com> is registered with Ripcord Domains, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2024. On November 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 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 (Perfect Privacy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 14, 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 November 15, 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 November 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2024.

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The Center appointed Petra Pecar as the sole panelist in this matter on December 20, 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 BPCE, a French joint stock company serving as the central institution for the Banques Populaires and Caisses d’Epargne banking networks. The Complainant operates a full range of banking, financing, and insurance activities through its cooperative banking networks and subsidiaries. Well-

established in local markets, the Complainant is supported by 105,000 employees who serve 36 million
customers. The Complainant has a presence in over 40 countries through its subsidiaries.

The Complainant is the owner of the registered marks protecting the BANQUE POPULAIRE as the following registrations:

- French word mark BANQUE POPULAIRE registered under number 3113485 on July 25, 2001 for

services in Classes 35 and 38;

- French figurative mark registered under number 4605979 on December 9, 2019 for goods and services in Classes 9, 35 and 36; and
-	European Union figurative trademark registered under number 018725733 on June 29,
2022 for goods and services in Classes 9, 35 and 36.

The Complainant is the owner of the domain names <banque-populaire.com>, registered in 1998;
<banquepopulaire.com>, registered in 2001; <banque-populaire.fr> and <banquepopulaire.fr>, registered in
2002; and <banquepopulaire.info>, registered in 2007, all of which redirect to the Complainant’s official
website.

The disputed domain name was registered on November 3, 2024, and at the time of the Complaint filing, it resolved to a parked webpage in French language, containing links related to financial and banking activities, with the MX servers actively configured.

The Respondent is located in Cyprus.

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 is confusingly similar to its BANQUE POPULAIRE marks, widely used in banking and financial services. The disputed domain name incorporates the Complainant's BANQUE POPULAIRE marks with the addition of the descriptive term “du sud”, which enhances confusion by implying a regional connection to the Complainant.

The inclusion of the Complainant’s BANQUE POPULAIRE marks leads the public to mistakenly associate the disputed domain name with the Complainant. The addition of the gTLD “.com” suffix does not affect this assessment, further supporting the claim of confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that it has never authorized the Respondent to register or use any domain name incorporating its BANQUE POPULAIRE marks. The Complainant further argues that

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in the absence of any license or permission to use its BANQUE POPULAIRE marks or to register a domain name incorporating them, the Respondent cannot claim any bona fide or legitimate interest in the disputed domain name.

The Complainant asserts that the disputed domain name was registered and used in bad faith. The Respondent knowingly registered a disputed domain name confusingly similar to the Complainant’s well- known marks, aiming to exploit their reputation and create consumer confusion. The disputed domain name leads to a parked webpage with links to banking services, generating traffic and revenue based on this misuse. The activation of MX records raises concerns of potential phishing attacks, while the use of hidden identity further demonstrates an intent to evade accountability.

B. Respondent

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

6. Discussion and Findings

Even if the Respondent did not file a Response to the Complainant’s contentions, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in
accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, as
indicated in paragraph 15(a) of the Rules.

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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 by the Respondent 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 BANQUE POPULAIRE 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 BANQUE POPULAIRE mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Although the addition of terms “du sud” in French language, which translation in English language is “from the south”, it refers to a southern territory, may bear on assessment of the second and third elements, the Panel finds the addition of such terms do 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.

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Furthermore, it is well accepted practice by UDRP panels that a gTLD, such as “.com”, is typically ignored when assessing whether a domain name is identical or confusingly similar to a trademark (see section 1.11.1 of the WIPO Overview 3.0). For that reason, the Panel accepts not to take the gTLD “.com” into account when assessing confusing similarity of the disputed domain name.

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.

According to the Complainant, there is no association or connection between the Respondent and the Complainant. The Complainant has not granted the Respondent any license or authorization to use or register any domain name incorporating the Complainant’s BANQUE POPULAIRE marks. Furthermore, the

Respondent has failed to present any information or factors that could justify prior rights or legitimate interests in the disputed domain name.

The disputed domain name resolves to a parked webpage featuring links to banking services. Furthermore, the activation of MX records linked to the disputed domain name raises concerns about potential phishing activities. , Moreover, the Respondent has failed to submit a response establishing any legitimate rights or interests in the disputed domain name, as there is no evidence of its use or demonstrable plans for a bona fide offering of goods or services, no indication that the Respondent is commonly known by the domain name, and no legitimate noncommercial or fair use of the disputed domain name is evident.

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 over 23
years after the Complainant’s BANQUE POPULAIRE marks were registered. The Complainant’s BANQUE
POPULAIRE marks are well-known in France and globally, particularly among consumers in the financial
and banking sectors, with their notoriety previously recognized by the previous panels in UDRP decisions. A
simple Internet search would have revealed the existence of the Complainant’s BANQUE POPULAIRE

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marks, making it implausible that the Respondent was unaware of the Complainant’s rights. This conduct
aligns with WIPO Overview 3.0, section 3.2.2, supporting a finding of bad faith registration under paragraph
4(b) of the Policy.

The disputed domain name resolves to a parked webpage featuring links to banking services, generating revenue through exploitation of the Complainant’s goodwill. Additionally, the activation of MX records raises significant concerns of phishing activities, and given the Complainant’s activity in the banking sector, this creates a serious risk of theft for sensitive financial data. The Respondent’s deliberate hiding of its identity further demonstrates bad faith. These actions can disrupt the Complainant’s operations, harm its reputation, and it meet the criteria for bad faith use under paragraph 4(b) of the Policy.

The Respondent’s actions align with the illustrative examples of bad faith enumerated in paragraph 4(b) of
the Policy, particularly, as the Respondent has intentionally attempted to attract, for commercial gain,
Internet users to its website featuring links to banking services by creating a likelihood of confusion with the
Complainant’s well-known marks.

Furthermore, in the present case, the Respondent’s activation of MX records raises significant concerns of phishing, potentially targeting users with fraudulent schemes to steal sensitive financial information. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes 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 <banquepopulairedusud.com> be transferred to the Complainant.

/Petra Pecar/ Petra Pecar Sole Panelist Date: December 31, 2024