BNP PARIBAS v. LUIZ FELIPE MORAES
Claim Number: FA1912001873402
Complainant: BNP PARIBAS of PARIS 09, France.
Complainant Representative: Nameshield of Angers, France.
Respondent: luiz f moraes of são paulo, Ohio, Brazil.
LUIZ FELIPE MORAES of Sao Paulo, Sao Paulo, BR.
REGISTRIES and REGISTRARS
Registries: DotSite Inc.
Registrars: GoDaddy.com, LLC
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 2, 2019
Commencement: December 2, 2019
Response Date: December 3, 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.
Findings of fact:
The case at hand refers to the domain name <hellobank.site>.
In accordance with the provisions of URS, Complainant claims
(i) that the domain name <hellobank.site> 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 since:
● Registrant registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name.
URS Procedure 1.2.6, requires 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(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 owner of the international trademark "HELLO BANK !" No. 1151363, registered on December 13th, 2012.
The process contains as well evidence that demonstrates that Complainant’s trademark "HELLO BANK !" was registered as well with the Trademark Clearinghouse on September 19, 2013.
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 Examiner concurs with the Complainant in that the disputed domain name <hellobank.site> identically reproduces the registered trademark “HELLO BANK!” The Examiner considers that the extension “site” does not add distinctiveness to the disputed domain, but instead, contributes to cause confusion inasmuch as it suggests that the disputed domain <hellobank.site> is the website of the trademark “HELLO BANK!” owned by the Complainant. This circumstance no doubt adversely affects the Complainant, and this is worsen by the fact that the domain is simply parked, misinforming the public about the trademark “HELLO BANK!”.
[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
In the present case, the relevant part of the disputed domain name consists of the word “HELLOBANK”, which happens to exactly reproduce the registered trademark “HELLO BANK” owned by the Complainant. The identical reproduction of a distinctive trademark within a domain name is hardly the result of casualty, and does suggest a clear 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, and to benefit from said confusion.
The Respondent did submit a response to the Complaint apologizing for registering this domain name, expressing his willingness “to give it up so that the real owner can take advantage of it”, and his regret for the mistake.
As the Examiner sees it, the statement made by the Respondent in his response only ratifies the initial intention with which he registered the domain name, it being the same intention of all those who try to take for themselves the main portion of a domain name property of a third party: To benefit from the efforts made by the owners of trademarks to make them known, valuable and recognized. In cases like this, apologies only serve to make the person presenting them feel less guilty, and that does not reduce bad faith.
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:
Luz Helena Villamil Jimenez, Examiner
Dated: December 03, 2019
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