BPCE v Julien Beale

WIPO Case No. D2024-4961

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

BPCE v. Julien Beale

Case No. D2024-4961

1. The Parties

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

The Respondent is Julien Beale, France.

2. The Domain Name and Registrar

The disputed domain name <bpce-factor.pro> 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 December 2, 2024. On December 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 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 (Privacy Protect, LLC (PrivacyProtect.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 4, 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 December 4, 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 December 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2025.

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The Center appointed Knud Wallberg as the sole panelist in this matter on January 16, 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 French joint stock company, the second largest banking group in France, with 105,000 employees, serving a total of 36 million customers. The Complainant offers a full range of banking, financing and insurance services through its two cooperative banking networks, Banque Populaire and Caisse

d’Epargne. The Complainant is present in more than 40 countries through different subsidiaries and its main

website is at “

The Complainant is the owner of a large number of registrations of the BPCE trademark, including:

- European Union trademark registration BPCE (word) No. 8375842, filed on June 19, 2009, and registered
on January 12, 2010, for services in international class 36;
- French trademark registration BPCE (word) No. 3653852, registered on November 6, 2009, for goods and
services in international classes 9, 16, 35, 36, 38, 41 and 45; and
- International trademark registration BPCE (figurative) No. 1033662, registered on December 15, 2009, for
services in international class 36.

The Complainant is also the owner of a number of domain names incorporating the BPCE trademark, directly and also through its subsidiary GCE Technologies, such as <bpce.fr> registered on November 27, 2008, and <groupebpce.fr> registered on February 25, 2009.

The disputed domain name was registered on September 3, 2024. It is not used for an active website, but it resolves to the Registrar’s standard website for parked domain names.

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 well-known trademark “BPCE” since it contains the mark in its entirety with the suffix “-factor” and the extension “.pro”. The Complainant remarks that the word “factor” in the disputed domain name does not serve to distinguish it

from the trademark. Factoring is thus a type of financial transaction, and the inclusion of “factor” increases the risk of confusion with the Complainant’s business, that is operated by its subsidiary BPCE FACTOR on the website “factor.bpce.fr”.

Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name. The Respondent does not have any trademarks or trade names corresponding to the disputed domain name and the Complainant has never authorized the Respondent to register and/or use any

domain name incorporating its trademarks.

The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademark registrations pre-date the registration of the disputed domain name and since BPCE and its subsidiaries are well-known in France and through the world the registration of the disputed domain name cannot be a mere coincidence. The fact that the disputed domain name is not active

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but leads to a parked page does not prevent the finding of bad faith use under the UDRP, cf. Telstra
Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and section 3.3 of the

WIPO Overview 3.0.

B. Respondent

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

6. Discussion and Findings

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.

Although the addition of other terms here, “factor”, 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.

The Panel finds the second element of the Policy has been established.

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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 has used the disputed domain name in connection with a default registrar parking page without any substantive content. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the

WIPO Overview 3.0, section 3.3.
disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement).

Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s prior registered trademark, and the composition of the disputed domain name, and the lack of response, 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 <bpce-factor.pro> be transferred to the Complainant.

/Knud Wallberg/
Knud Wallberg
Sole Panelist
Date: January 30, 2025