BNP PARIBAS v. Privacy Protection
Claim Number: FA2109001963043
Complainant: BNP PARIBAS of PARIS, France.
Complainant Representative: Nameshield of Angers, France.
Respondent: Privacy Protection of Chicago, Illinois, US.
Respondent Representative: N/A
REGISTRIES and REGISTRARS
Registries: XYZ.COM LLC
Registrars: Sav.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.
Flip Jan Claude Petillion, as Examiner.
Complainant submitted: September 10, 2021
Commencement: September 10, 2021
Default Date: September 27, 2021
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.
The Complainant, BNP Paribas, is a French banking group and one of the largest banks in the world by total assets. The Complainant owns numerous trademarks including international figurative mark No. 1151363, registered with WIPO on December 13, 2012 in class 36.
The Respondent registered the disputed domain name <hellobank.xyz> on August 30, 2021. The disputed domain name resolved to a registrar parking page.
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 record makes clear that the Complainant "holds a valid national or regional registration and that [it] is in current use". The Examiner finds that the second-level portion of the disputed domain name is virtually identical to the dominant element of the Complainant’s figurative trademark, namely the textual component “HELLO BANK!”. The removal of the space between the terms “HELLO” and “BANK!” and the removal of the exclamation mark are insignificant and do not eliminate the likelihood of confusion. As the top level domain is irrelevant in assessing identity or confusing similarity, the new gTLD “.XYZ” is of no consequence here (Facebook Inc. v. Radoslav, Claim Number: FA1308001515825). As the registered domain name is virtually identical to the dominant textual component of a mark for which the Complainant holds a valid national or regional registration that is in current use, the Examiner considers that the Complainant has satisfied the first element of the URS in accordance with paragraph 1.2.6.1 of the URS.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Complainant has not authorized the Respondent to use its registered HELLO BANK! trademark. The Respondent has not submitted any evidence to prove that he or she is commonly known under the disputed domain name. There is no evidence about rights or legitimate interest in HELLO BANK! and the disputed domain name, or evidence about a fair use either. According to the Complainant’s evidence, the disputed domain name resolved to a registrar parking page offering the disputed domain name for sale.
As the disputed domain name is virtually identical to the dominant textual component of the Complainant’s HELLO BANK! trademark, the Examiner finds that the disputed domain name carries a high risk of implied affiliation with the Complainant and cannot constitute fair use (see section 2.5.1 of WIPO Overview 3.0). The Respondent does not contest the arguments of the Complainant. Therefore, the Examiner finds that the second element for the Complainant to obtain the suspension of a domain name under URS 1.2.6.2 has also been proven.
[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;
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 on-line 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
Given the fact that the disputed domain name is virtually identical to the textual component of the Complainant’s distinctive trademark, the Examiner finds that the Respondent must have had the Complainant's trademark in mind when registering the disputed domain name.
Bad faith can be found when circumstances indicate that a respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark. Generally speaking such circumstances, alone or together, include the nature of the disputed domain name, the respondent’s likely knowledge of the complainant’s rights and the distinctiveness of the complainant’s mark (section 3.1.1 of WIPO Overview 3.0).
The Examiner observes that the disputed domain name resolved to a registrar parking page offering the disputed domain name for sale for USD 1,795. The Examiner finds that such use, combined with the fact that the disputed domain name is virtually identical to the textual component of the Complainant’s distinctive trademark, indicates that the respondent’s intent was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark (see also Moncler S.P.A. v. Charles Lee, Claim Number: FA2105001944021: “By offering the domain name for sale for $1,000, Registrant is obviously not making a legitimate noncommercial or fair use of the domain name. By using the domain name in connection with a website advertising it for sale for $1,000, Registrant has acted in bad faith.”).
The Respondent did not file any response to contest the above. Therefore, the Examiner finds that the third element for the Complainant to obtain the suspension of a domain name under URS 1.2.6.3 has been proven.
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.
<hellobank.xyz>
Flip Jan Claude Petillion, Examiner
Dated: September 28, 2021
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