WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BNP Paribas v. Whois Privacy Protection Foundation / James Ma

Case No. D2021-3008

1. The Parties

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

The Respondent is Whois Privacy Protection Foundation, the Netherlands / James Ma, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bnpparibasfortis.info> is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2021. On September 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 6, 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 on October 6, 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 of the Complaint, and the proceedings commenced on October 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2021.

The Center appointed Cherise Valles as the sole panelist in this matter on November 8, 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

BNP PARIBAS S.A. (the “Complainant”) is an international banking group with a presence in 68 countries, and one of the largest banks in the world (“www.group.bnpparibas”). With more than 193 319 employees and EUR 7.1 billion in net profit, the Complainant is one of the leading banks in the Eurozone and a prominent international banking institution (Annex 3).

BNP PARIBAS FORTIS is the Complainant’s Belgium subsidiary (Annex 4). The Complainant owns numerous trademarks BNP PARIBAS, such as:

- the international trademark BNP PARIBAS n°728598 registered since February 23, 2000;

- the international trademark BNP PARIBAS n°745220 registered since September 18, 2000;

- the international trademark BNP PARIBAS n°876031 registered since November 24, 2005.

The Complainant is also the owner of a large portfolio of domain names comprising “bnp paribas”, such as <bnpparibas.com>, registered since September 2, 1999 (Annex 6).

The disputed domain name <bnpparibasfortis.info> was registered on August 9, 2021 (Annex 1). The disputed domain name resolves to an inactive website (Annex 7). In addition, MX servers are configured (Annex 8).

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar to the Complainant’s registered BNP PARIBAS trademark, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. Furthermore, the Respondent’s impersonating and/or competing uses of the disputed domain name is clear evidence of bad faith.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant submits that the disputed domain name is confusingly similar to the trademark in which it has rights. The disputed domain name incorporates the BNP PARIBAS trademark in its entirety with the addition of the term “fortis”. Moreover, the Complainant contends that the disputed domain name only differ from the trademark BNP PARIBAS by the addition of the term “fortis”. The term “Fortis” is in fact part of the name of the Complainant’s Belgian subsidiary. Given the Complainant’s trademark registration as detailed above, the Complainant has established its trademark rights in the term BNP PARIBAS for the purposes of paragraph 4(a)(i) of the Policy.

As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

It is well established in previous UDRP decisions that, “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP”. See WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin.

The inclusion of the term “fortis” in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark BNP PARIBAS. See, Valentino S.p.A. v. Jack Wuzheng, Hongyun Trade Inc, Jacket Chan, Tech Trade Inc., WIPO Case No. D2019-0647. This case involved the domain names <shoesvalentino.com> and <shoevalentino.com>, among others. The panel stated that “the disputed domain names consist of, each time, the combination of two elements, which are the Complainant’s VALENTINO trademark and the addition of a clearly descriptive element, namely […] “shoes”, “shoe” […] The Panel concluded that each of the disputed domain names contain the entirety of the Complainant’s trademark, which remains clearly recognizable as such. Accordingly, the Panel decided that the disputed domain names were confusingly similar to the Complainant’s trademarks, and the first element required by the Policy is fulfilled”.

It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the Top Level Domain (“TLD”) into account. See section 1.11.1 of the WIPO Overview 3.0, which states that the “applicable 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 of the confusing similarity test”. In the present case, the TLD “.info” is disregarded under the first element of the confusing similarity test.

In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous UDRP panels have held that a complainant must establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent. See, The American Automobile Association, Inc. v. PrivacyProtect.org/ Domain Tech Enterprises and The American Automobile Association, Inc. v. PrivacyProtect.org/Tarun Kumar and The American Automobile Association, Inc. v. Publishier LLC, WIPO Case No. D2011-2202, where the panel notes that a complainant need only show a prima facie case that respondent lacks rights or legitimate interests in a disputed domain name in order to shift the burden of production to the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant asserts that the Respondent is not known as the disputed domain name in the WhoIs database, and has not acquired trademarks mark rights in this term. Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that he is not related in any way to the Complainant’s business.

On the evidence before the Panel, it appears that there has never been any relationship between the Complainant and the Respondent. The Respondent does not seem to be licensed, or otherwise authorized, directly or indirectly, to register or use the Complainant’s BNP PARIBAS trademark in any manner, including in, or as part of, the disputed domain name.

The Complainant contends that the Respondent is not affiliated nor authorized by the Complainant in any way to use the trademark BNP PARIBAS. The Complainant does not carry out any activity for, nor has any business with the Respondent. The disputed domain name currently resolves to an inactive page (Annex 7). The Respondent has not made any use of disputed domain name since its registration, and it appears that the Respondent has no demonstrable plan to use the disputed domain name. Past UDRP panels have held that the lack of use of a domain name is considered as an important indicator of the absence of legitimate interests by the respondent. See Boeing Co. v. Bressi, WIPO Case No. D2000-1164, in which the panel found that the respondent had advanced no basis on which he could conclude that it has rights or legitimate interests in the domain names.

The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, the Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy.

The Complainant submits that the Respondent is not a licensee, authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark. Specifically, the Respondent is not an authorized reseller of the Complainant and has not been authorized to register and use the disputed domain name.

Furthermore, the nature of the disputed domain name, consisting of the Complainant’s BNP PARIBAS mark and the additional term “fortis”, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant or the Complainant’s subsidiary. See section 2.5.1 of the WIPO Overview 3.0.

In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. 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 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

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted 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 term “bad faith” is “broadly understood to occur where a respondent takes unfair advantage of, or otherwise abuses, a complainant’s mark”. See section 3.1 of the WIPO Overview.

The Complainant asserts that the disputed domain name was registered and was being used in bad faith. Paragraph 4(b) of the Policy lists four factors which, in particular but without limitation, may be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.

Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. Previous UDRP panels have held that the “registration of a well-known trademark as a domain name is a clear indication of bad faith itself”. See The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

The Complainant states that the disputed domain name is confusingly similar to its trademark BNP PARIBAS (Annex 3). Prior UDRP panels have established that the trademark BNP PARIBAS is well-known. See WIPO Case No. D2017-2167, BNP Paribas v. Ronan Laster, in which the panel stated “[...] according to the Panel, the Complainant has shown that the Respondent knew, or should have known, that its registration would be identical or confusingly similar to the Complainant’s mark specifically because of the high notoriety of the BNP PARIBAS trademarks throughout the world”.

The Complainant asserts that the Respondent had the Complainant and its subsidiary in mind when it registered the disputed domain name, and that this registration cannot be coincidental. Indeed, the association of the term “fortis” with the trademark BNP PARIBAS is known in relation with the Complainant’s subsidiary (Annexes 4 and 9). Thus, given the distinctiveness of the Complainant’s trademarks and reputation, it is likely that the Respondent registered the disputed domain name with actual knowledge of the Complainant’s rights in the trademark, which indicates bad faith.

The disputed domain name currently resolves to an inactive page (Annex 7). The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate under the Policy. Prior WIPO UDRP panels have held that the incorporation of a famous mark in a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400.

Finally, the disputed domain name has been set up with MX records (see Annex 8) which suggests that it may be actively used for email purposes. This is also indicative of bad faith registration and use because noting the composition of the disputed domain name, any email emanating from the disputed domain name could not be used for any good faith purpose.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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 name <bnpparibasfortis.info> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: November 22, 2021