Oney Bank v Repain Geoffrey

WIPO Case No. D2024-5211

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Oney Bank v. Repain Geoffrey

Case No. D2024-5211

1. The Parties

The Complainant is Oney Bank, France, represented by BrandShelter, France.

The Respondent is Repain Geoffrey, France.

2. The Domain Name and Registrar

The disputed domain name <notification-oney.info> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2024. On December 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 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, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 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 27, 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 January 2, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 22, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on January 24, 2025.

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The Center appointed William Lobelson as the sole panelist in this matter on January 28, 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 Oney Bank, a French company involved in financial services.

It owns trademark rights in the name ONEY, such as:

International Trademark Registration ONEY No. 865742, registered on August 11, 2005;
International Trademark Registration ONEY No. 947985, registered on July 11, 2007.

The disputed domain name <notification-oney.info> was registered on October 17, 2024. It used to resolve to a pay-per-click Registrar parking web page on which it hosted hyperlinks to third-party websites but is now inactive. Mail exchange (“MX”) servers are set up therewith.

The Complainant sent cease-and-desist letters to the Respondent on October 23, October 30, November 6 and November 28, 2024, that all remained unanswered.

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 earlier trademarks, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

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

Complainant has rights (paragraph 4(a)(i));

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph

4(a)(ii)); and

(iii) the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

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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 ONEY mark is reproduced and is recognizable within the disputed domain name, despite the addition of the term “notification”. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 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.

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the
disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide

offering of goods or services;

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the

disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at

issue.

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, particularly by asserting that the Respondent is not affiliated with it in any way and that it never authorized the Respondent to use its trademark as part of 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 Complainant further contends that the Respondent does not make any bona fide use – neither commercial nor noncommercial – of the disputed domain name.

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.

In the present case, the Panel notes that the Complainant claims that the Respondent has registered the disputed domain name and uses the same in bad faith.

The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith.

Examples of what may be cumulative circumstances found to be indicative of bad faith include the was used in bad faith given the circumstances surrounding registration.

Complainant having a well-known trademark, no response to the Complaint having been filed, and the

The Complainant has claimed that its trademark ONEY has been registered and used in France for years.

The fact that the Respondent declared a French address in the registration details for the disputed domain name implies that he is a French resident or at least has connections with France, where the Complainant’s mark is exploited.

In light of the above, and noting the likelihood of confusion between the disputed domain name and the Complainant as to the origin or affiliation of the website at the dispute domain name, this Panel finds hard to believe that the Respondent did not have the Complainant’s trademark in mind when he registered the disputed domain name.

The Panel also notes that the Respondent did not reply neither to the Complainant’s cease-and-desist letter nor to the present Complaint.

The Panel infers from the above that the Respondent acted in bad faith when he registered the disputed domain name, and still acts in bad faith.

The Complainant has shown that the disputed domain name was directed to a pay-per-click Registrar parking web page on which it hosted hyperlinks to third-party websites, which was deactivated after the Complainant sent a warning letter to the Respondent and before the present Complaint was filed. Currently, the disputed domain name is not active.

As stated in WIPO Overview 3.0, section 3.3, there is a consensus view about “passive holding”:

“From the inception of the UDRP, panelists 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. While
panelists will look at the totality of the circumstances in each case, factors that have been 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, (iii) the respondent’s concealing its identity or use of false contact
details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to
which the domain name may be put.”

Having reviewed the available record, the Panel notes the public exploitation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the current passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC,

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WIPO Case No. D2002-0131; Westdev Limited v. Private Data, WIPO Case No. D2007-1903; Malayan
Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; and Intel
Corporation v. The Pentium Group, WIPO Case No. D2009-0273).

Further, the Complainant has filed evidence showing that the Respondent had set up MX servers in relation with the disputed domain name, thus revealing a possible intention to use the same as an email address.

Given that the Complainant operates in financial and insurance services, the Panel suspects that the registration of the disputed domain name, which has been found confusingly similar to the Complainant’s trademark, is very likely intended for phishing purposes or similar fraudulent activities (Boursorama S.A. v. FG GFGS, WIPO Case No. D2023-2729).

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 <notification-oney.info> be transferred to the Complainant.

/William Lobelson/
William Lobelson
Sole Panelist
Date: February 7, 2025