WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banque Delubac et Cie v. Mickael Zeitoun, Milscorp

Case No. D2018-2705

1. The Parties

Complainant is Banque Delubac et Cie of Le Cheylard, France, represented by Nameshield, France.

Respondent is Mickael Zeitoun, Milscorp of Paris, France.

2. The Domain Name and Registrar

The disputed domain name <delubaconline.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2018. On November 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on December 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2018. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2018.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on January 14, 2019. 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.

After examination of the statement and documents submitted by Complainant, the Panel issued a Panel Procedural Order on February 6, 2019 in order to be provided with additional information on Complainant’s prior trademark rights on the sign DELUBAC.

On February 8, 2019, Complainant provided a submission with new exhibits to the Center in response to the Panel Procedural Order. Even though provided with an opportunity, Respondent did not reply to this additional communication.

4. Factual Background

Complainant, Banque Delubac et Cie, is an independent financial institution offering specialized banking services. Complainant offers five main branches of business which are a judicial bank, a bank of property administrators, a savings management bank, an investment bank, and a business and factoring bank.

Complainant claims that it has rights on the European Union trademark DELUBAC, No. 006826135, registered on November 10, 2008, in classes 9, 35, 36, and 41. However, the trademark has expired on April 11, 2018 and has not been duly renewed.

Following the Panel’s Procedural Order issued on February 6, 2019, Complainant submitted that it has rights on several trademarks, containing the term DELUBAC including:

- the French trademark DELUBAC-EDI, No. 3654728 registered on November 6, 2009 in class 36;

- the French trademark DELUBAC FACTOR, No. 3765745 registered on January 28, 2011 in class 36;

- the French trademark DELUBAC-FACTOR, No. 3765778 registered on January 28, 2011 in class 36.

Complainant also owns the domain name <delubac.com> and uses it for its official website.

The disputed domain name <delubaconline.com> was registered on November 2, 2016. It redirects to a parking page with commercial links.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name <delubaconline.com> is confusingly similar to its trademark DELUBAC. Complainant argues that the addition of the term “online” does not change the overall impression that the designation is connected to Complainant’s trademark.

Complainant further states that Respondent does not have any rights or legitimate interests in the disputed domain name. Complainant also argues that Respondent does not carry out any activity on behalf of Complainant, nor does he have any business with Complainant. Complainant also affirms that no license or authorization has been granted to Respondent to make any use of the trademark or to apply for registration of the disputed domain name. According to Complainant, the fact that the disputed domain name redirects to a registrar parking page with commercial links may not be considered as a bona fide offering of goods and services or legitimate noncommercial or faire use.

Complainant claims that the domain name was registered and is used in bad faith. Complainant states that Respondent, who is located in France as is Complainant, has targeted Complainant and its trademark DELUBAC. Complainant states that Respondent could not have ignored Complainant’s trademark DELUBAC at the time of the registration of the disputed domain name. Furthermore, Complainant asserts that the website in connection with the disputed domain name <delubaconline.com> is a parking page with commercial links. Complainant contends that Respondent has thus attempted to attract Internet users to his own website for commercial gain by using Complainant’s trademark, which is an evidence of bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present:

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

(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and

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

Paragraph 15(a) of the Rules provides that “[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”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.

Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favour of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Taking the foregoing provisions into consideration the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. See section 1.7 of the WIPO Overview 3.0.

Complainant claims that it owns rights on the European Union trademark DELUBAC, No. 006826135, registered on November 10, 2008, in classes 9, 35, 36, and 41. However, it appears that this trademark has expired on April 11, 2018 and has not been duly renewed. Therefore, this trademark should not be taken into account when assessing the identity or similarity between Complainant’s trademarks and the disputed domain name.

However, following the Panel’s Procedural Order issued on February 8, 2019, Complainant has provided evidence that it owns rights on:

- the French trademark DELUBAC-EDI, No. 3654728 registered on November 6, 2009 in class 36;

- the French trademark DELUBAC FACTOR, No. 3765745 registered on January 28, 2011 in class 36;

- the French trademark DELUBAC-FACTOR, No. 3765778 registered on January 28, 2011 in class 36.

The above mentioned trademarks contain the term “DELUBAC” which is replicated in the disputed domain name. Moreover, the Panel notes that the part placed at the left of the trademark catches the most the attention of the reader.

Therefore, when comparing the disputed domain name <delubaconline.com> with the trademarks, the Panel finds that the most distinctive element of the trademarks is the term “DELUBAC” as mentioned in Banque Delubac et Cie v. Pierre Dieudonne, WIPO Case No. DEU2018-0030: “the Panel finds that the most distinctive element of the Trademarks, i.e. the term 'delubac', is exactly replicated in the disputed domain name, the latter simply differing by the addition of the term 'groupe' (the French term for 'group' of companies)”.

The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks. The addition of the term “online” does not avoid the confusing similarity between the disputed domain name and Complainant’s trademark DELUBAC remains recognizable within the disputed domain name. See VF Corporation v. Vogt Debra, WIPO Case No. D2016-2650.

The generic Top-Level Domain (“gTLD”) “.com” is generally disregarded under the identity or confusing similarity test, as it is a functional element. See section 1.11 of the WIPO Overview 3.0.

The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s trademarks.

Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that respondent has no rights or legitimate interests in the disputed domain name.

Complainant is required to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

Complainant has asserted that Respondent is not affiliated to Complainant nor has been authorized by Complainant to use Complainant’s trademarks, in a domain name or otherwise.

Prior UDRP Panels have held that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s trademark. See section 2.9 of the WIPO Overview 3.0.

Therefore, Respondent’s use of the disputed domain name for a page parking cannot be considered a bona fide offering of goods or services.

The Panel also finds that Respondent’s lack of rights or legitimate interests in the disputed domain name can also be inferred in the circumstances of this case from Respondent’s failure to respond to Complainant’s contentions. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).

The Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights to or legitimate interest in the disputed domain name and that, as a result of his default, Respondent has failed to rebut such a showing.

The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.

Complainant argues that the disputed domain name redirects to a parking page with commercial links. Complainant alleges that Respondent has attempted to attract Internet users for commercial gain to his own website thanks to Complainant’s trademarks, which is an evidence of bad faith. Complainant argues that Respondent has registered the domain name in bad faith because he registered many years after Complainant registered its trademark, and that Respondent who is located in France, as Complainant, was targeted Complainant and its trademark. However, the Panel notes that Complainant has provided limited evidence, as shown by providing a trademark that had expired. Indeed, the Panel had to issue a procedural order on February 6, 2019 in order to be provided with additional information on Complainant’s prior trademark rights on the sign DELUBAC.

Previous panels have held that it is Complainant’s burden “to prove its case and it is this Panel’s view, that confusing similarity combined with limited assertions alone, is not sufficient to support a finding that Respondent registered and is using or had used the Domain Names in bad faith.” See Ticket Software, LLC v. Domains by proxy, LLC / Stephen Troy, WIPO Case No. D2013-0215.

However, the Panel finds that Respondent’s use of the domain name creates a likelihood of confusion with Complainant’s trademarks. The nature of the disputed domain name itself, which consists of adding the term “online” to Complainant’s trademark is a strong indication that Respondent was targeting Complainant at the time of registration.

From the record of this case, there is no evidence of advertising, promotion or display to the public of the domain name. Neither there is evidence that Respondent has offered to sell, rent or otherwise transfer the domain name to Complainant, a competitor of Complainant, or any other person. However, in this case, the evidence on record shows that, at the time of filing of the Complaint, the disputed domain name redirects to a parking page with commercial links. Respondent’s use of the disputed domain name for a parking page is sufficient to support a finding of bad faith use of the disputed domain name, as Respondent is intentionally attempting to attract for commercial gain Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy.

Moreover, the Panel draws an adverse inference from Respondent’s failure to take part in the present proceedings.

Given the nature of the disputed domain name, which is confusingly similar to Complainant’s trademarks, there cannot be any good faith as this would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights.

The Panel therefore finds that the overall circumstances of this case strongly suggest that Respondent was aware of Complainant’s rights at the time of registration of the disputed domain name and that he did so in order to take advantage of such rights.

The Panel finds that Respondent has both registered and used the disputed domain name in bad faith.

Complainant has therefore satisfied paragraph 4(a)(iii) 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 <delubaconline.com> be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist
Date: February 15, 2019