BNP PARIBAS v. WhoisGuard, Inc.
Claim Number: FA2011001923064
Complainant: BNP PARIBAS of Paris, France.
Complainant Representative:
Complainant Representative: Nameshield of Angers, France.
Respondent: WhoisGuard, Inc. / WhoisGuard Protected of Panama, Panama, International, PA.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: XYZ.COM LLC
Registrars: NameCheap, Inc.
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.
Jonathan Agmon, as Examiner.
Complainant submitted: November 27, 2020
Commencement: November 30, 2020
Default Date: December 15, 2020
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, BNP PARIBAS, is a renowned French international banking group. It is the world's 8th largest bank by total assets, and currently operates with a presence in 72 countries. With both a retail banking section and investment banking operations, Complainant is present on five continents. Its retail banking networks serve more than 30 million customers in its three domestic markets, France and Belgium through several brands such as BNL and Fortis. The retail bank also operates in the Mediterranean region and in Africa. In the Americas, it operates in the western United States as Bank of the West. As an investment bank and international financial services provider for corporate and institutional clients, it is present across Europe, the Americas, and Asia.
Complainant owns an international trademark registration for the mark BNP Paribas (the “Mark”) (IR No. 728598) registered on February 23, 2000.
Complainant asserts the following against the Respondent:
1. The registered domain name is identical or confusingly similar to a word or mark [URS 1.2.6.1]: for which the Complainant holds a valid national or regional registration and that is in current use;
2. Registrant has no legitimate right or interest to the domain name [URS 1.2.6.2];
3. The domain name was registered and are being used in bad faith [URS 1.2.6.3] such as: Registrant 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.
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
Complainant is the owner of the international trademark registration (IR No. 728598) for the word mark “BNP Paribas” which was registered on February 23, 2000.
The domain name includes Complainant's mark in its entirety together with the generic term “FORTIS” and gTLD ".xyz".
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
Complainant has not authorized Respondent to use its Mark. The Respondent is not commonly known by the registered domain name.
[URS 1.2.6.3] The domain name(s) was/were 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; 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; c. Registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; 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
Complainant provided evidence showing an inactive webpage of the disputed domain name. The evidence provided clearly shows that the Respondent was aware of Complainant’s trademark at the time of registration of the disputed domain name and specifically targeted Complainant. Complainant has also submitted evidence that the Respondent has also engaged in a pattern of such conduct. Given the clear and convincing evidence filed by the Complainant, the conclusion is that the disputed domain name was registered and is being used in bad faith in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name and that Complainant has complied with URS 1.2.6.3 (b).
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.
<bnp-paribasfortis.xyz>
Jonathan Agmon, Examiner
Dated: December 18, 2020
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