BNP PARIBAS v. Contact Privacy Inc. Customer 1244034291
Claim Number: FA1903001832707
Complainant: BNP PARIBAS of PARIS, France.
Complainant Representative: Nameshield of Angers, France.
Respondent: Contact Privacy Inc. Customer 1244034291 of Toronto, Ontario, CA.
Respondent Representative: none
REGISTRIES and REGISTRARS
Registries: Charleston Road Registry Inc.
Registrars: Google LLC
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.
Debrett Gordon Lyons, as Examiner.
Complainant submitted: March 6, 2019
Commencement: March 6, 2019
Default Date: March 21, 2019
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.
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.
1.2.6.1. that 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.
The evidence shows that Complainant holds a valid international registration which is in use. Further, the Examiner finds that the domain name is legally identical to the trademark and so finds the first element to be established.
1.2.6.2. that the Registrant has no legitimate right or interest to the domain name.
The name of Respondent has been redacted. The Panel is unable to determine whether Respondent might be known by the domain name but in the absence of a Response there is no positive indication that is so. There is no evidence Respondent has trademark rights of its own. The evidence is that the domain name has not been used so far and so there is no use of the domain name in connection with a bona fide offering of goods or services.
The Examiner finds that Respondent has no legitimate right or interest in the domain name and that Complainant has established the second element.
1.2.6.3. that the domain was registered and is being used in bad faith.
The Complainant’s submissions are that:
“Given the notoriety of the Complainant and its distinctive trademark, the Respondent was aware of the trademark when registering the domain name.
The 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 pre existing trademark rights.
By using the domain name Respondent has intentionally attempted to attract for commercial gain, Internet users 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.”
Those submissions do not establish either registration in bad faith or use in bad faith. Complainant understands that the standard of review is clear and convincing evidence. There is no clear and convincing evidence of the notoriety of the trademark as might have been easily shown by citation of any number of UDRP decisions which have considered that point. There has been no use of the domain name (as established by Complainant) and yet the submission is that, by using the domain name, Respondent has intentionally attempted to attract for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s trademark. Had the claim to notoriety of the trademark been supported then, in relation to use, Complainant need only have referenced the line of authority following the UDRP case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Complainant has not established the third element.
After reviewing Complainant’s submissions, the Examiner determines that
Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent.
Debrett Gordon Lyons, Examiner
Dated: March 23, 2019
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