BNP PARIBAS v. Xu Guo Xing
Claim Number: FA1612001705271
Complainant: BNP PARIBAS of Paris, France.
Complainant Representative: Nameshield of Angers, France.
Respondent: Xu Guo Xing of JNS, SD, China.
REGISTRY and REGISTRAR
Registry: GMO Registry, Inc.
Registrar: West263 International Limited
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Alan L. Limbury, as Examiner.
Complainant submitted: December 1, 2016
Commencement: December 5, 2016
Default Date: December 20, 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.
Complainant is a bank headquartered in France, operating worldwide. The recently registered domain name does not resolve to an active website.
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 the 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 Complainant holds a valid national or
regional registration 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.
Complainant has demonstrated that it is the registrant of International trademark BNP PARIBAS, No. 728598, registered on February 23, 2000 in International Classes 35, 36 and 38; that China is designated under the Madrid Protocol by virtue of Article 9sexies in respect of that mark; and that the mark is in current use. The mark was registered with the Trademark Clearinghouse on October 23, 2013.
The domain name comprises Complainant's mark together with the gTLD ".shop”, which does nothing to detract from the distinctiveness of Complainant’s mark and may be disregarded. The Examiner finds that the domain name is identical to Complainant’s mark.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Complainant says Respondent has no rights or interests in respect of the domain name and is not related to Complainant’s business. According to the Whois of the domain name, the Respondent is "Xu Guo Xing". Thus Respondent is not known as "BNPPARIBAS". Furthermore, the website in relation to the domain name is inactive. Respondent has not developed demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services and Respondent could not have used the domain name without infringing Complainant’s intellectual property rights in the trademark “BNP PARIBAS”.
Thus, Complainant contends that Respondent has registered the domain name only in order to prevent Complainant from registering it and to reflect its trademark in a domain name. This is considered a blocking registration.
In the absence of any Response, the Examiner finds that Complainant has shown prima facie that Respondent has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name was registered and is being used in bad faith, such as: (b) Registrant has registered the domain name in order to prevent the trademark holder from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct. Complainant submits this is such a case.
Complainant says Complainant and its distinctive trademark “BNP PARIBAS” are known as one of the most famous banks in the world. Thus, Respondent was aware of the Complainant’s trademark “BNP PARIBAS” at the moment of
registration of the domain name. Moreover, the website in relation to the domain name is inactive since registration. As prior UDRP panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use: WIPO - D2000-0003 - Telstra Corporation Limited v. Nuclear Marshmallows; WIPO - D2000-0400 - CBS Broadcasting, Inc. v. Dennis Toeppen.
The Examiner accepts that Complainant’s “BNP PARIBAS” mark is famous and that Respondent must have been aware of that mark when registering the domain name, thereby preventing Complainant from reflecting its mark in a corresponding domain name.
Although there is no evidence before the Examiner that Respondent has engaged in a pattern of such conduct, the list of circumstances set out in URS 1.2.6.3 is non-exclusive. In the circumstances of this case, the Examiner finds that Complainant has established that the domain name was registered in bad faith, having regard to the distinctive and famous nature of its trademark and the fact that Respondent must have been aware of that mark when registering the domain name, either from prior knowledge or as a result of notification from the Trademark Clearing House prior to registration.
The Examiner accepts that any use of the domain name would infringe Complainant’s rights in its famous “BNP PARIBAS” trademark and finds that, in the circumstances of this case, Respondent’s passive use of the domain name amounts to bad faith use, for the purposes of the URS.
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 name be SUSPENDED for the duration of the registration:
<bnpparibas.shop>
Alan L. Limbury, Examiner
Dated: December 22, 2016
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