WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BNP Paribas v. John Andrews, Sagesse Development
Case No. D2016-0170
1. The Parties
The Complainant is BNP Paribas of Paris, France, represented by Casalonga Avocats, France.
The Respondent is John Andrews, Sagesse Development of Robersbridge, East Sussex, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
2. The Domain Name and Registrar
The disputed domain name <labanquedunmondequichange.com> is registered with OVH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 27, 2016. On January 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 23, 2016.
The Center appointed Gregor Vos as the sole panelist in this matter on March 9, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, BNP Paribas, is a large and well-known French bank that is globally active. The origins of the bank date back to the 19th century. It has been ranked as the 7th most valuable banking brand by Forbes Brand Finance 2014. BNP Paribas has been active in the United Kingdom for nearly 150 years.
The Complainant is using the slogan "la banque d'un monde qui change" (the "Slogan") alongside its trade name BNP Paribas. The Complainant has used the Slogan for more than 15 years, during which period the Slogan gained notoriety. The Complainant recorded the sole Slogan with the English translation thereof in International Trademark Registration No. 751786, LA BANQUE D'UN MONDE QUI CHANGE THE BANK FOR A CHANGING WORD, registered on November 16, 2000. The Slogan is also registered as a component in other complex trademark registrations of the Complainant.
The disputed domain name was registered by the Respondent on November 17, 2014.
5. Parties' Contentions
The Complainant uses the Slogan as a tagline in connection with its business.
The disputed domain name strictly reproduces the French part of the Complainant's Slogan, which is registered as a trademark and which is part of other complex trademarks registered by the Complainant. In consideration of the well-known character of the BNP Paribas trade name, the Slogan can be detached from these complex marks.
As the disputed domain name strictly reproduces the Slogan, the likelihood of confusion is increased. This furthermore demonstrates that the Respondent intends to cause confusion. The Complainant has not granted the Respondent any authorization to use its registered trademarks or part of its registered trademarks.
The Respondent does not have a legitimate right to the disputed domain name. The Respondent's business is the registration or acquisition and sale of parked domain names. The Respondent has not used the disputed domain name with a bona fide offering of goods or services prior to being notified of the current dispute, nor has he made legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name does not comprise the legal name of the Respondent or a name that is otherwise commonly used to identify the Respondent.
The Respondent registered the disputed domain name in bad faith, as the Respondent must have had knowledge of the Complainant's trademarks when the disputed domain name was registered. The Respondent proposed to sell the disputed domain name to the Complainant, with which the Respondent tried to take unfair advantage of the efforts and investments made by the Complainant. This also indicates the Respondent is using the disputed domain name in bad faith.
The disputed domain name refers to the Registrar's webpage. Although the Respondent is thus not actively using the disputed domain name, this does not preclude the Panel from finding bad faith.
Consequently, the Complainant is requesting transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is <labanquedunmondequichange.com>.
The Complainant is the owner of the trademark LA BANQUE D'UN MONDE QUI CHANGE THE BANK FOR A CHANGING WORLD and also of several trademark registrations incorporating the (French) Slogan. The Slogan is a recognizable part of these trademarks and the Slogan has independently gained global notoriety as originating from the Complainant, which is supported by (inter alia) the Complainant's large advertising figures for the Slogan. This indicates that the Complainant has acquired high notoriety in the Slogan as well.
The disputed domain name fully incorporates the first part of the trademark LA BANQUE D'UN MONDE QUI CHANGE THE BANK FOR A CHANGING WORLD. The disputed domain name furthermore fully incorporates the Slogan that is part of several of the Complainant's trademark registrations.
The Slogan is recognizable within the disputed domain name as the disputed domain name consists exclusively of the Slogan. As the " ' " (apostrophe) sign cannot be included in a domain name registration, this part is not included in this consideration.
The suffix ".com" does not distinguish the disputed domain name from the Complainant's trademark.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks.
B. Rights or Legitimate Interests
The Panel has considered the Complainant's position that the Respondent does not have any rights or legitimate interests in the disputed domain name. As the Respondent failed to respond, these allegations remain uncontested.
As it is generally recognized that it is hard for complainants to prove a negative, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. If such a prima facie case is made, the burden of production shifts to the respondent. If the respondent then fails to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name, the complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, <croatiaairlines.com>).
Indeed, the Panel finds that the circumstances mentioned and evidenced by the Complainant are sufficient to establish its prima facie requirements to show that the Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
The Panel concludes that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel has considered the Complainant's assertions and evidence with regard to the Respondent's registration and use of the disputed domain name in bad faith. By failing to submit a response, the Respondent has not invoked any circumstances that may demonstrate that the Respondent in fact did not register and use the disputed domain name in bad faith.
The Complainant has demonstrated its longstanding global use of the Slogan that is part of several of its trademark registrations and independently recognizable to originate from the Complainant. Complainant has demonstrated this for the United Kingdom as well, leading to the Panel to find that the Respondent was likely aware of the trademarks of the Complainant at the time the disputed domain name was registered.
The Panel considers that the circumstance that the Respondent has not actively used the disputed domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not preclude the finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org>).
The Policy paragraph 4(b) sets out four situations (in particular but without limitation) in which bad faith registration and use of a domain name are deemed to exist. The Panel finds that one of these situations, namely paragraph 4(b)(i), occurs here. The Complainant has demonstrated that, in response to a cease‑and‑desist letter from the Complainant, the Respondent required the Complainant to come forward with a "reasonable offer" for the disputed domain name, implying a valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name. This confirms that the disputed domain name has been registered and is being used in bad faith (CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243, <cbs.org>).
Considering these circumstances, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <labanquedunmondequichange.com> be transferred to the Complainant.
Date: April 8, 2016