BNP PARIBAS v. Alfredo Trivino et al.
Claim Number: FA2201001982356
Complainant: BNP PARIBAS of PARIS, France.
Complainant Representative: Nameshield of Angers, France.
Respondent: Alfredo Trivino of LONDON, United Kingdom (gb).
Audacity Partners of London, United Kingdom.
REGISTRIES and REGISTRARS
Registries: Interlink Co., Ltd.
Registrars: 101domain GRS Limited
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.
Bart Van Besien, as Examiner.
Complainant submitted: January 28, 2022
Commencement: January 31, 2022
Response Date: February 4, 2022
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.
The Complainant submitted evidence that it is the registered owner of the international wordmark “BNP Paribas”, registration nr. 728598, registered February 23rd, 2000, for Nice classification 35, 36 and 38 (hereafter: the “BNP Paribas Trademark”).
URS Procedure 1.2.6 requires the Complainant to prove, by clear and convincing evidence, 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 is 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 1.2.6.1 (i) covers the domain name at issue in this case. The Complainant is the registered owner of the BNP Paribas Trademark. The Complainant demonstrated evidence of use through a declaration by Trademark Clearinghouse.
The disputed domain name <bnpparibas.earth> is identical to the BNP Paribas Trademark with the addition of the suffix ‘.earth”. The addition of the generic term “earth” does not eliminate likelihood or confusion with the BNP Paribas Trademark.
Determined: Finding for the Complainant
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
The Complainant asserts that the Respondent has no legitimate right or interest to the domain name since the Respondent is not related to the Complainant’s business. The Complainant contends that the Respondent has not developed a demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services. The Complainant alleges that the domain name in question resolves to a parking page.
The Respondent filed a response but did not provide evidence of any legitimate rights or interests in the disputed domain name. The Respondent solely mentioned “Currently I’m working on a corporate strategic proposal which implies an ambitious vision around the concept Earth”. This does not provide evidence of any rights or legitimate interests of the Respondent in the disputed domain name.
There is no evidence of any similar or identical trademarks owned by the Respondent. There is no indication of any authorization to use the Complainant’s BNP Paribas Trademark. There is no indication that the Respondent is otherwise related to the Complainant. The Respondent does not seem to be commonly known by the disputed domain name. In sum, there is no evidence of any rights or legitimate interests of the Respondent in the disputed domain name.
Determined: Finding for the Complainant
URS [1.2.6.3] The domain name was registered and is being used in bad faith.
The Complainant has submitted evidence that it is the registered owner of the BNP Paribas Trademark. The Complainant asserts that the Respondent was aware of the BNP Paribas Trademark at the time of registration of the disputed domain name, since BNP Paribas is known as one of the most famous banks in the world. The Complainant emphasizes that the disputed domain name resolves to a parking page. In the light of the above, the Complainant argues that the disputed domain name was chosen and registered to reference and take predatory advantage of the Complainant’s pre-existing trademark rights. The Complainant contends that the Respondent has registered the domain name only to prevent the Complainant to register it and to reflect its trademark in a domain name.
The Respondent argues that he acted in good faith and “acquired the domain www.bnpparibas.earth to anticipate a need and protect BNP Paribas' interests”. The Respondent added: “I would only ask to be reimbursed for the cost and fees in which I have incurred when registering it (U$7,500).” The Respondent also tried to establish a kind of cooperation with the Complainant by registering the disputed domain name.
From the facts and evidence set out in the complaint, and as described above, the Examiner finds that it seems highly unlikely that the Respondent would not have been aware of the unlawful character of the disputed domain name at the time of its registration and use. The selection of the word elements of the Complainant’s registered BNP Paribas Trademark in the disputed domain name cannot reasonably be considered as a mere coincidence. The Examiner believes that the Respondent clearly had the BNP Paribas Trademark of the Complainant in mind when registering and using the disputed domain name, and tried to use the domain name as leverage to establish a cooperation with the Complainant or obtain money from the Complainant.
The Examiner concludes that the Respondent registered and uses the domain name primarily for the purpose of selling, renting of otherwise transferring the domain name registration to the Complainant, in accordance with paragraph 1.2.6.3.a of the URS Procedure.
Determined: Finding for the Complainant
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 names be SUSPENDED for the duration of the registration <bnpparibas.earth>.
Bart Van Besien, Examiner
Dated: February 08, 2022
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