BNP PARIBAS v. tian ting gang
Claim Number: FA1612001705270
Complainant: BNP PARIBAS of PARIS, International, France.
Complainant Representative:
Complainant Representative: Nameshield of Angers, France.
Respondent: tian ting gang of qing dao, sd, International, CN.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: Minds + Machines Group Limited
Registrars: Chengdu West Dimension Digital Technology Co., Ltd.
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.
Luz Helena Villamil Jimenez, as Examiner.
Complainant submitted: December 1, 2016
Commencement: December 2, 2016
Default Date: December 19, 2016
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.
Findings of fact:
The case at hand refers to the domain name <bnpparibas.vip>. In accordance with the provisions of URS, Complainant claims
(i) that the domain name <<bnpparibas.vip>> is identical or confusingly similar to a word mark for which the Complainant holds a valid national or regional registration and that is in current use;
(ii) that The Registrant has no legitimate right or interest to the domain name, and
(iii) that the domain name was registered and is being used in bad faith.
Complainant states that the domain name <bnpparibas.vip> is confusingly similar to the International trademark "BNP PARIBAS" N° 728598, registered on February 2nd 2000. Furthermore, said trademark is registered as well at the TMCH since October 23th, 2013. According to the Complainant, the addition of the new gTLD ".VIP" is not sufficient to escape the finding that the domain name is confusingly similar to the Complainant's trademark. The Complainant also argues that the Respondent has no rights in respect of the domain name and it is not related to Complainant’s business, and lastly, that the domain name was registered and is being used in bad faith by the Respondent.
Even though the 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.
Determined: Finding for Complainant
The process contains documentation demonstrating that the Complainant is the holder of the trademark BNP PARIBAS registered before the World Intellectual Property Organization (WIPO) under N° 728598 as of February 23, 2000 and in force until February 23, 2020. This trademark covers services of Classes 35, 36 and 38 of the International Classification.
The process contains as well evidence that demonstrates that Complainant’s trademark BNP PARIBAS is in use to identify a bank owned by the Complainant, which has branches in many countries of the world. Said evidence was recorded as well before the Trademark Clearinghouse.
Consequently, the Examiner considers that the requirement of demonstrating trademark rights, and the usage thereof, has been satisfied.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Complainant contends that the Respondent, “tian ting gang" is not commonly known by the domain <bnpparibas.vip>. The Examiner concurs with this assertion, since as it has been established in the present process, BNP PARIBAS is a registered trademark owned by the Complainant. Moreover, the trademark BNP PARIBAS is a fantasy trademark, i.e., the type of trademark that is coined by its owner. Thus, no one could be commonly known by a trademark that is well-known and that belongs to a third party.
The Examiner is also in agreement with the Complainant in that the disputed domain name <bnpparibas.vip> identically reproduces the registered trademark BNP PARIBAS, and also with the statement that the addition of the new gTLD ".VIP" definitely does not add distinctiveness to the disputed domain. Moreover, since the trademark BNP PARIBAS is registered with the Trademark Clearing House, when registering the domain <bnpparibas.vip> the Respondent must have received a notification with the registered mark’s details to inform him about a potential conflict. Thus, going ahead with the registration of the domain name evidences a lack of legitimate right or interest to the domain name. Moreover, since Respondent has defaulted, there is no evidence to establish any rights or legitimate interests in respect of the domain name in his favor.
[URS 1.2.6.3] The domain name was 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.
Determined: Finding for Complainant
According to the Complainant, its distinctive trademark “BNP PARIBAS” is known as one of the most famous banks in the world. Thus, the Respondent was aware of the Complainant’s trademark “BNP PARIBAS” at the time of registration of the disputed domain name <bnpparibas.vip>. In addition, as mentioned before, since the trademark BNP PARIBAS is registered at the Trademark Clearing House, the Respondent must have been fully aware of the fact that he was obtaining registration of a domain that is made up by a trademark owned by someone else. The trademark BNP PARIBAS is recognized and in use, and therefore no third party may use a sign identical to this trademark within a domain name without this fact constituting a willful conduct tending to benefit from the prestige and recognition of the trademark being included in the domain name. Such behavior constitutes bad faith.
In the present case, the relevant part of the disputed domain name consists of the words <BNPPARIBAS.VIP>, which happen to exactly reproduce the registered trademark BNP PARIBAS owned by the Complainant. The identical reproduction of a distinctive trademark in a domain name is hardly the result of casualty, and does suggest an intention to cause confusion to those who have access to the name by leading them to believe it also belongs to the owner of the registered trademark.
After reviewing the Complainant’s 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.vip>
Luz Helena Villamil Jimenez, Examiner
Dated: December 21, 2016
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