WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BNP Paribas v. 林宗兴 (Lin Zong Xing)

Case No. D2021-1962

1. The Parties

The Complainant is BNP Paribas, France, represented by Nameshield, France.

The Respondent is 林宗兴 (Lin Zong Xing), China.

2. The Domain Names and Registrar

The disputed domain names <bnpparibas-securities.com> and <bnpparibassecurities.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2021. On June 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 25, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on June 28, 2021.

On June 25, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on June 28, 2021. The Respondent requested that Chinese be the language of the proceeding on June 28, 2021.

The Center verified that the Complaint together with the amended 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 in English and Chinese of the Complaint, and the proceedings commenced on July 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2021. On June 29, 2021, the Parties’ communications to the Center were received. On July 26, 2021, the Center informed the Parties that it would proceed to appoint the Panel.

The Center appointed Joseph Simone as the sole panelist in this matter on August 18, 2021. 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, submits that it is an international banking group with a presence in 71 countries, and is one of the largest banks in the world with more than 193,319 employees and EUR 7.1 billion in annual net profit. It is a leading bank in the Eurozone and a prominent international banking institution.

BNP Paribas Securities Services is a wholly-owned subsidiary of the BNP Paribas Group and one of the highest-rated asset servicing banks in the industry.

The Complainant has an extensive global trade mark portfolio of BNP PARIBAS trade marks, including the following:

- International Trade Mark Registration No. 728598 BNP PARIBAS in Classes 35, 36, and 38, registered on February 23, 2000, extended into China;

- International Trade Mark Registration No. 745220 BNP PARIBAS in Classes 9, 35, 36, and 38, registered on September 18, 2000, extended into China; and

- International Trade Mark Registration No. 876031 BNP PARIBAS in Classes 9, 35, 36, and 38, registered on November 24, 2005, extended into China.

The disputed domain names were registered on January 26, 2021.

The Complainant asserts that, at the time the Complaint was filed, the disputed domain names resolved to a page where the disputed domain names were offered for sale.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has prior rights in the BNP PARIBAS trade marks and that it is a leading player in the banking and finance industry.

The Complainant further notes that the disputed domain names are identical or confusingly similar to the Complainant’s BNP PARIBAS trade marks, and the addition of the generic Top-Level Domain (“gTLD”) “.com” does not affect the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant’s trade marks.

The Complainant asserts that it has not authorized the Respondent to use the BNP PARIBAS mark and/or the BNP PARIBAS name, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.

Indeed, the Complainant asserts that the Respondent registered the disputed domain names to profit from their sale, and there is no plausible good faith reason or logic for the Respondent to have registered the disputed domain names, especially after considering the attendant circumstances, any use of the disputed domain names whatsoever must be in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions in an official response but sent an email through its authorized agent offering to transfer the disputed domain names in exchange for some of its registration fees and domain transfer fees.

In its email, the agent also claimed that the Respondent can appeal to a Chinese court even if the Panel issued a decision in favour of the Complainant, and attached a filing receipt from a Chinese court regarding a litigation over a UDRP with another company.

6. Discussion and Findings

A. Language of the Proceedings

The language of the registration agreement for the disputed domain names is Chinese.

Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement.

Paragraph 11(a) allows the Panel to determine the language of the proceedings in consideration of all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and to maintain an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not unduly burden the parties or delay to the proceedings.

The Complainant has requested that English be the language of the proceedings, for the following reasons:

- The choice of language is related to the combined fact that the English language is the language most widely used in international relations;

- The disputed domain names are formed by words in Roman characters (ASCII) and not in Chinese script; and

- If the proceedings were to be conducted in Chinese, the Complainant would have to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings. The use of Chinese in this case would therefore impose a burden on the Complainant which must be deemed significant in view of the low cost of these proceedings.

Prior to notifying the Center of the Respondent’s willingness to transfer the disputed domain names in exchange for some monetary compensation to the Complainant, the Respondent requested that Chinese be the language of the proceedings, for the following reasons:

- The registrant of the disputed domain names (i.e., the Respondent) is Chinese; and

- The Registrar of the disputed domain names is Chinese.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time, and costs.

The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English, and the Respondent’s request that the language of proceeding be Chinese. The Panel notes, however, that the Respondent did not submit any Response on the merits of these proceedings, while it was invited to do so in either English or Chinese. The Panel has also considered the fact that the disputed domain names are in English and written in Latin letters and not in Chinese characters, and the fact that adopting Chinese as the language of these proceedings could lead to unwarranted delays and costs for the Complainant. In addition, the Center formally notified the Complaint in English and Chinese and gave the Respondent an opportunity to reply in either language.

Taking into account all the present circumstances, the Panel therefore finds that the Respondent would not be prejudiced if English is adopted as the language of these proceedings.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceedings shall be English.

Nevertheless, in accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.5.1, the Panel accepts the Respondent’s email of June 29, 2021 written in Chinese, and does not require a translation of any document in Chinese in this administrative proceeding.

B. Identical or Confusingly Similar

The Panel acknowledges that the Complainant has established rights in the BNP PARIBAS trade mark in many territories around the world.

Disregarding the gTLD “.com”, the disputed domain names incorporate the trade mark BNP PARIBAS in its entirety.

The Panel further notes that the addition of the dictionary term “securities”, which relates directly to the Complainant’s field of business, does not prevent a finding of confusing similarity.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the BNP PARIBAS trade mark and in demonstrating that the disputed domain names are identical or confusingly similar to its mark.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain names. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

The Complainant asserts that it has not authorized the Respondent to use its trade mark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.

Thus, the Complainant has established its prima facie case with satisfactory evidence.

The Respondent did not file a formal response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain names. As such, the Panel concludes that the Respondent has failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain names, and that none of the circumstances of paragraph 4(c) of the Policy is applicable in this case.

As previously noted above, the disputed domain names incorporate the Complainant’s mark in its entirety with the additional term “securities”, which is associated with the Complainant’s industry. Such usage carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances in particular but without limitation shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances in which bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trade mark of another party. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel believes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(b)(i) of the Policy.

When the Respondent registered the disputed domain names on January 26, 2021, the BNP PARIBAS trade marks were already widely known and directly associated with the Complainant’s activities.

Given the extensive prior use and fame of these marks, in the Panel’s view, the Respondent should have been aware of the Complainant’s marks when registering the disputed domain names.

The Respondent has provided no evidence to justify his registration of the disputed domain names. Given the foregoing, it would be unreasonable to conclude that the Respondent, at the time of the registration of the disputed domain names, was unaware of the Complainant’s trade mark, or that the Respondent’s adoption of the uncommon and distinctive trade mark BNP PARIBAS was a mere coincidence.

The Complainant’s registered trade mark rights in BNP PARIBAS for its signature products and services predate the registration date of the disputed domain names. A simple online search for the term “BNP Paribas” would have revealed that it is a world-renowned brand.

The Panel is therefore of the view that the Respondent registered the disputed domain names with full knowledge of the Complainant’s trade mark rights, a finding which is reinforced considering the addition of the term “securities” in the disputed domain names.

On the other hand, the disputed domain names were also listed for sale on their associated websites. In the absence of any evidence supporting any other explanation as to the possible use of the disputed domain names, and taking the Respondent’s email dated June 29, 2021, seeking monetary compensation and threatening to appeal to a Chinese court in case of a decision favourable to the Complainant into consideration, the Panel is satisfied that the Respondent registered the disputed domain names both in awareness of the Complainant and for the purpose of selling it to the Complainant or a third party for valuable consideration in excess of its documented out-of-pocket costs.

Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

7. Decision

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 names <bnpparibas-securities.com> and <bnpparibassecurities.com> be transferred to the Complainant.

Joseph Simone
Sole Panelist
Date: September 1, 2021