BPCE v Gregory Steiner

WIPO Case No. D2024-2824

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

BPCE v. Gregory Steiner

Case No. D2024-2824

1. The Parties

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

The Respondent is Gregory Steiner, United States of America.

2. The Domain Name and Registrar

The disputed domain name <solutionbpce.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu.

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2024. On July 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 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) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 12, 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 July 12, 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 July 18, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was August 7, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on August 12, 2024.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on August 16, 2024. 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, BPCE, is one of the largest banking groups in France, acting as the central institution responsible for the two banking networks, Banques Populaires and Caisses d’Epargne.

The Complainant operates a full range of banking, financing, and insurance activities. It has 105,000 employees and serves 36 million customers. The Complainant is present in more than 40 countries via its various subsidiaries.

The BPCE trademark has already been recognized as a renowned trademark in previous UDRP decisions
(see, BPCE v. WhoisGuard Protected, WhoisGuard, Inc. / Fransis Coarno, Danstic, WIPO Case No.

D2020-0967 and BPCE v. Emmanuel Asamoah, WIPO Case No. D2022-3866).

The Complainant is the owner of numerous trademarks including the following:

- European Union Trademark BPCE (device) registration number 8375875, registered on January 12, 2010, for banking and financial services in class 36;

- European Union trademark BPCE (word), registration number 8375842, registered on January 12,

2010, for banking and financial services in class 36;

- International trademark BPCE (device), registration number 1033662, registered on December 15,

2009, for banking and financial services in class 36.

The Complainant and its subsidiary GCE Technologies have also registered, inter alia, the domain names
<bpce.fr>, registered in 2008, and <groupebpce.fr> and <groupebpce.com>, both registered in 2009, the

latter corresponding to an active website, namely the institutional portal of BPCE.

The disputed domain name was registered on June 13, 2024.

Currently, the disputed domain name resolves to a parked page containing links to websites unrelated to the websites offering, inter alia, banking services.

Complainant. From the submissions provided by the Complainant, it appears that previously (at least on

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 the BPCE recognized also in previous UDRP decisions and thus the registration of the disputed name (which contains a well-known trademark) amounts per se to a registration in bad faith. Finally, the Complainant states that the Respondent’s bad faith is also evident in the Respondent’s willingness to conceal its identity.

trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name,
and particularly that the Respondent registered and used the disputed domain name for an unauthorized
page containing links to websites offering banking services competing with those offered by the Complainant.

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B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:

(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.

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 incorporated entirely and 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, “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 demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

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The disputed domain name previously resolved to a page containing links to websites offering competing services to those of the Complainant. The use of a confusingly similar domain name to mislead Internet users to competing commercial services cannot constitute fair use under the Policy. WIPO Overview 3.0,

sections 2.5.1 and 2.5.3.

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.

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.

In the present case, the Panel notes that the Respondent was aware of the Complainant’s trademark registrations and rights to the BPCE trademark when it registered the disputed domain name.

BPCE is not a common or descriptive term, but a renowned trademark. The disputed domain name contains in its entirety, without any authorization or approval, the Complainant’s registered BPCE trademark.

The disputed domain name was registered many years after the Complainant’s renowned trademark was registered and has been used to resolve to a page where services in direct competition with those of the Complainant were offered. In addition, owing to the substantial presence established worldwide and on the

Internet by the Complainant, it is at the least very unlikely that the Respondent was not aware of the existence of the Complainant’s trademark when registering the disputed domain name.

Therefore, it is more likely than not that the Respondent, when registering the disputed domain name, had knowledge of the Complainant’s earlier rights to the BPCE trademark and trade name.

Indeed, the Respondent’s previous use of the disputed domain name for an unauthorized commercial website offering services competing with those of the Complainant is a clear inference that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark, and this amounts to bad faith use and registration of the disputed domain name.

The bad faith registration and use of the disputed domain name is also affirmed by the fact that the proceeding. This is further evidence of bad faith in accordance with paragraph 4(b)(i) of 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 <solutionbpce.com> be transferred to the Complainant.

/Fabrizio Bedarida/
Fabrizio Bedarida
Sole Panelist
Date: August 30, 2024