BNP PARIBAS v. REDACTED PRIVACY
Claim Number: FA2001001877812
Complainant: BNP PARIBAS of PARIS 09, France.
Complainant Representative: Nameshield Laurent Becker of Angers, France
Respondent: Alain Montel of Paris, II, FR
REGISTRIES and REGISTRARS
Registries: Binky Moon, LLC
Registrars: Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Richard W. Hill, as Examiner.
Complainant submitted: January 7, 2020
Commencement: January 7, 2020
Default Date: January 22, 2020
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant
Complainant states that the disputed domain name is confusingly similar to its international trademark BNP PARIBAS n° 728598, registered on February 23, 2000.
Complainant alleges that it has not authorized Respondent’s use of its trademark and has no affiliation with Respondent. The website in relation with the disputed domain name <bnp-paribas.agency> is on a parking page. Complainant contends that Respondent has not developed a demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services. Besides, Respondent could not have used the domain name without infringing Complainant’s intellectual property rights on the trademark BNP PARIBAS. It is established that using a domain name to create a likelihood of confusion between the disputed domain name and Complainant is not a bona fide offering of good and services or a legitimate noncommercial or fair use.
Further, says Complainant, given the notoriety of Complainant and its distinctive trademark, Respondent was aware of the trademark when registering the disputed domain name. Complainant contends that there is no reasonable explanation as to why the disputed domain name, which is being passively held, was chosen and registered except to reference and take predatory advantage of Complainant’s preexisting trademark rights. Therefore, Respondent has registered the disputed domain name in order to prevent the trademark holder or service mark from reflecting the trademark in a corresponding domain name.
Registrant
Respondent did not submit a Response.
Even though Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
The registered domain name(s) is/are identical or confusingly similar to a word mark
Complainant has registered the mark BNP PARIBAS around the world, with rights dating back to 2000. The mark is well-known. The disputed domain name was registered in 2019.
The Examiner finds that the disputed domain name is identical to the mark.
Registrant has no legitimate right or interest to the domain name
Registrant is not a licensee of Complainant, nor has Complainant authorized Registrant to register or use the BNP PARIBAS mark or the disputed domain name. Where a respondent fails to submit a response, the Examiner may look to the WHOIS information to determine whether Respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information on record lists “Alan Montel” as the registrant name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name.
The disputed domain name is not being used. Failure to make an active use of a domain name demonstrates that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Thus the Examiner finds that Registrant has no legitimate right or interest to the disputed domain names.
The domain name(s) was/were registered and is being used in bad faith
The disputed domain name is not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “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.”
In the present case, Complainant’s mark is well known. It is difficult to envisage any use of the disputed domain name that would not violate the Procedure, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
There has been no response to the Complaint and Respondent used a privacy service. Given these circumstances, the Examiner finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The Examiner finds that the disputed domain name was registered and is being used in bad faith
The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.
The Examiner finds as follows:
1. The Complaint was neither abusive nor contained material falsehoods.
After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
1. bnp-paribas.agency
Richard W. Hill, Examiner
Dated: January 22, 2020
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