URS DEFAULT DETERMINATION


BNP PARIBAS v. Privacy Protection
Claim Number: FA2202001982743


DOMAIN NAME

<bnpparibas.icu>


PARTIES


   Complainant: BNP PARIBAS of PARIS, France
  
Complainant Representative: Nameshield Laurent Becker of Angers, France

   Respondent: Privacy Protection Privacy Protection of Chicago, IL, US
  

REGISTRIES and REGISTRARS


   Registries: ShortDot SA
   Registrars: Sav.com, LLC

EXAMINER


   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.
   Ms. Kateryna Oliinyk, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: February 1, 2022
   Commencement: February 4, 2022
   Default Date: February 21, 2022
   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").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION



   Findings of Fact: The Complainant, BNP Paribas, is a French banking group and one of the largest banks in the world by total assets. The Complainant owns international word mark BNP PARIBAS No. 728598, registered with WIPO on February 23, 2000 in classes 35, 36 and 38. This trademark is also registered in the TMCH since October 23th, 2013. The Registrant registered the disputed domain name <bnpparibas.icu> on January 21, 2022. The disputed domain name resolves to a 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 Complainant provided documentary evidence that it is the registered owner of the word mark "BNP PARIBAS" protected by the international trademark, as well as documents to show that the BNP PARIBAS trademark is in current use. The disputed domain name fully incorporates the Complainant’s trademark "BNP Paribas". The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The disputed domain name <bnpparibas.icu> is confusingly similar to the Complainant’s BNP PARIBAS trademark. Therefore, the Examiner finds that the Complaint meets URS requirement of 1.2.6.1.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


There is nothing to suggest that the Registrant is commonly known by the domain name or that it has trademark rights of its own. The Complainant has neither licensed the trademark to the Registrant for use, nor has the Registrant made any claim to a legitimate right or interest to the name. Accordingly, there is no evidence of preparations to use the disputed domain name in connection with a bona fide offering of goods or services. At the same time, the domain name <bnpparibas.icu> resolves to an inactive website which is not a case of bona fide offering goods or services. Because the Registrant has defaulted, the Registrant has failed to meet its burden of production to come forward with evidence of rights or a legitimate interest. Thus, the Examiner finds that the second element under URS Procedure 1.2.6.2 has been satisfied.


[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 


The Complainant’s BNP PARIBAS trademark has been famous for many years before the <bnpparibas.icu> domain name was registered. The Examiner finds that Respondent must have had knowledge of Complainant´s famous BNP PARIBAS trademark when registering the <bnpparibas.icu> domain name. As in the leading UDRP case on passive use, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it is not possible to conceive of any plausible actual or contemplated active use of the <bnpparibas.icu> domain name by the Registrant that would not be illegitimate. Registering a domain name identical to a registered trademark, and subsequent passive holding of such a domain is viewed by the Examiner as bad faith. The Registrant has not submitted any evidences confirming circumstances listed in URS Procedure 5.7. In the absence of any defense which might have affected the decision on this issue, it is found that the third element of the policy under URS Procedure 1.2.6.3 has been satisfied.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


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 name(s) be SUSPENDED for the duration of the registration:

  1. bnpparibas.icu

 

Ms. Kateryna Oliinyk
Examiner
Dated: February 22, 2022

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page