BNP PARIBAS v.
Claim Number: FA2102001931605
Complainant: BNP PARIBAS of Paris, France.
Complainant Representative: Nameshield of Angers, France.
Respondent: Junior Birba of Paris, International, FR.
REGISTRIES and REGISTRARS
Registries: DotWebsite Inc.
Registrars: Gandi SAS
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Examiner in this proceeding.
Terry F. Peppard, as Examiner.
Complainant submitted: February 10, 2021
Commencement: February 11, 2021
Default Date: February 26, 2021
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") to provide to Respondent timely and fair notice of the commencement of this proceeding and of its right to respond to the Complaint filed herein.
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
To obtain an order that a domain name should be suspended, Complainant is required by URS Procedure 1.2.6. to make out a prima facie showing, by clear and convincing evidence, for each of the following three elements:
1. The registered domain name is identical or confusingly similar to
a mark for which Complainant holds a valid national or regional
registration and that it is in current use;
2. Registrant has no right to or legitimate interest in the domain name;
and
3. The same domain name was registered and is being used by
Respondent in bad faith.
We therefore examine each of these questions in turn.
Identity or Confusing Similarity
In its Complaint, Complainant shows that it holds a valid International registration for the trademark BNP Paribas, which is on file as Registry No. 728598, registered February 23, 2000, with an expiry date of February 23, 2030, in Nice classes 35 [business management consulting, etc.], 36 [banking operations, etc.] and 38 [telecommunications, etc.], and that the mark is in current use.
The relevant WHOIS information shows that Respondent registered the disputed <bnpparibasfortis.website> domain name on November 10, 2020.
Both elements of the BNP Paribas mark are incorporated in the domain name, with only the deletion of the space between its terms and the addition of the Top Level Domain (“TLD”) “.website” and the term “fortis.”
“Fortis” is the name of the Belgium-based subsidiary of Complainant. Its inclusion in the domain name thus contributes to the confusing similarity of the domain name with the BNP PARIBAS mark.
The addition to Complainant’s mark of the “.website” TLD in creating the domain name is of no consequence to our analysis because every domain name is required to have a TLD.
Respondent’s deletion of the space between the terms of Complainant’s mark in forming the domain name is likewise immaterial to our examination because domain name syntax does not permit blank spaces.
The domain name <bnpparibasfortis.website> is therefore confusingly similar to Complainant’s registered and active BNP Paribas mark.
Registrant’s Rights or Interests
There is nothing in the record to suggest that Respondent has any affiliation with Complainant, and Complainant denies that there is any such association. There is also no evidence indicating that Complainant has authorized Respondent to use its BNP Paribas mark, whether in a domain name or otherwise. And there is as well nothing in the record showing that Respondent has been commonly known by the <bnpparibasfortis.website> domain name.
Under this head of its Complaint, Complainant also asserts that the website resolving from the <bnpparibasfortis.website> domain name is a blank page and that Respondent has made no preparations to employ it in connection with a bona fide offering of goods or services. Respondent does not contest these assertions.
Complainant further contends, again without contravention from Respondent, that Respondent could not use the <bnpparibasfortis.website> domain name without infringing upon Complainant’s rights in its BNP Paribas mark.
On these undenied facts, we find that Respondent has neither any rights to nor any legitimate interests in the challenged domain name.
Registrant’s Bad Faith
Under the URS Procedure, the evidence establishing that Respondent has no rights to or legitimate interests in the <bnpparibasfortis.website> domain name is also pertinent to consideration of the question whether the domain name has been registered and is being used in bad faith. See URS Procedure¶5.7. To this can be added that Complainant alleges that Respondent was aware of Complainant and its rights in the BNP Paribas mark when it registered the disputed domain name, which assertion Respondent does not deny.
These facts, together with Respondent’s failure to make even demonstrable preparations to use the domain name in a legitimate undertaking from the time of its registration, which passive holding is a form of use that prevents Complainant from reflecting its mark in a corresponding domain name, persuade us that Respondent has registered and now uses the domain name in bad faith.
Our review of the record discloses no suggestion that the Complaint was brought in abuse of this proceeding or that it contains any material falsehood.
Upon review of Complainant’s submissions, we find that Complainant has proven all three required elements of the URS by clear and convincing evidence. We therefore Order that the <bnpparibasfortis.website> domain name be SUSPENDED for the duration of its registration.
Terry F. Peppard, Examiner
Dated: March 2, 2021
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