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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BNP Paribas v. Whois Privacy, Private by Design, LLC / Saeed Masajedian

Case No. DAI2020-0002

1. The Parties

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

Respondent is Whois Privacy, Private by Design, LLC, United States of America (“United States”) / Saeed Masajedian, Canada, self-represented.1

2. The Domain Name and Registrar

The disputed domain name <bnpparibas.ai> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2020. On March 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2020, 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 Complainant on March 24, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 24, 2020.

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 Respondent of the Complaint, and the proceedings commenced on March 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2020. On March 25, 2020, the Center received an email communication from Respondent and on April 6, 2020, Respondent requested for extension of the Response due date.

Accordingly, the Response due date was extended to April 24, 2020. The Response was filed with the Center on April 24, 2020.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on May 5, 2020. 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

Complainant is a company organized under the laws of France that is active in the banking industry.

Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to its company name and brand “BNP Paribas”, inter alia:

- word mark BNP PARIBAS, International registration number: 876031, registration date: November 24, 2005, status: active;

- word/device mark BNP PARIBAS, International registration number: 745220, registration date: September 18, 2000, status: active.

Moreover, Complainant has evidenced to own several domain names relating to the BNP PARIBAS trademark, inter alia, since 1999 the domain name <bnpparibas.com> which resolves to Complainant’s official website at “www.bnpparibas.com” where Complainant promotes its banking business and related financial services.

Respondent, according to the WhoIs information for the disputed domain name and to its own contentions, is a resident of Canada and the disputed domain name was registered on March 4, 2019, which apparently has not resolved to any active content on the Internet ever since.

Complainant requests that the disputed domain name be transferred to Complainant, while Respondent denies to violate Complainant’s rights in the BNP PARIBAS trademark.

5. Parties’ Contentions

A. Complainant

Complainant contends to be one of the largest banks in the world with more than 200,000 employees and presence in 72 countries worldwide.

Complainant submits that the disputed domain name is identical to its BNP PARIBAS trademark as it contains the latter without adjunction of any letter or word, with the country code Top-Level Domain (“ccTLD”) “.ai” not changing the overall impression of a connection between the disputed domain name and Complainant’s trademark. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is not commonly known by the disputed domain name, (2) Respondent is not related with Complainant and neither a license nor any other authorization has been granted to Respondent to make use of Complainant’s BNP PARIBAS trademark or to apply for registration of the disputed domain name in any way, and (3) the disputed domain name resolves to a blank page which is why Respondent fails to make any active use of it. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) Complainant’s BNP PARIBAS trademark is well-known and enjoys distinctiveness as well as reputation which is why it is inconceivable that Respondent could have registered the disputed domain name without actual knowledge of Complainant’s trademark rights, and (2) Respondent has not demonstrated any activity in respect of the disputed domain name for one year, and it is not possible to conceive of any plausible actual or contemplated active use of it that would not be illegitimate.

B.Respondent

Respondent claims that having registered and using the disputed domain name is not violating Complainant’s BNP PARIBAS trademark rights since (1) Complainant had about 10 years time to register the disputed domain name on its own before Respondent did so, (2) Respondent has not made use of the disputed domain name in relation to any goods or services for which Complainant’s trademarks enjoy rights, but Respondent rather is about to develop a website to provide fresh dairy products for local people in Anguilla, (3) the disputed domain name differs from Complainant’s BNP PARIBAS trademark in that it does not contain a blank space or a dash between the elements “bnp” and “paribas”, and (4) Respondent did not act in bad faith since it never contacted Complainant or related companies to offer them to purchase the disputed domain name.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <bnpparibas.ai> is nearly identical, however at least confusingly similar with the BNP PARIBAS trademark in which Complainant has rights.

The disputed domain name incorporates the BNP PARIBAS trademark in its entirety, simply omitting the blank space between the two terms “bnp” and “paribas”. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many previous UDRP decisions and has become a consensus view among panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 1.11) that the applicable Top-Level Domain (“TLD”) in a domain name is generally viewed as a standard registration requirement and as such is disregarded under the first element test, though the meaning of this TLD may be relevant to a panel assessment of the second or third element of the URDP. Accordingly, the existence of the ccTLD “.ai” does not dispel the finding of confusing similarity, if not identity arising from the fully featured incorporation of Complainant’s BNP PARIBAS trademark in the disputed domain name.

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel is further convinced on the basis of both Parties’ contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

It is undisputed between the Parties that Respondent has not been authorized to use Complainant’s BNP PARIBAS trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the terms “bnp” and/or “paribas” on its own. Finally, Respondent so far does not seem to have ever used the disputed domain name to resolve it to any active content on the Internet. UDRP panels, however, have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1).

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Respondent alleges to be in the stage of developing a website to provide fresh dairy products for the local people in Anguilla. UDRP panels agree that claimed examples of e.g. demonstrable preparations to use that the disputed domain name in connection with a bona fide offering of goods or services cannot be merely self-serving, but should be inherently credible and supported by relevant pre-complaint evidence (see WIPO Overview 3.0, section 2.2). Respondent has not, however, supported its allegations by any documentary evidence or other conclusive assertions. Also, the terms “bnp” and “paribas” are of no dictionary or descriptive character which would at least point into the direction of dairy products, and Respondent has missed to at least indicate why it needed to rely specifically on Complainant’s BNP PARIBAS trademark in the disputed domain name for the purpose of e.g. promoting dairy products.

Therefore, the Panel finds that Respondent has failed to demonstrate rights or legitimate interests in respect of the disputed domain name and that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.

As a general rule, UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While UDRP panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include e.g: the degree of distinctiveness or reputation of Complainant’s mark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put.

In the case at hand, it is undisputed between the Parties that Complainant’s BNP PARIBAS trademark is well-known and enjoys considerable distinctiveness as well as reputation. Also, Respondent’s own contentions leave no doubt that Respondent was well aware of Complainant’s rights in the BNP PARIBAS trademark when registering the disputed domain name, which is confusingly similar, if not identical with said trademark. Nevertheless, Respondent has failed to provide any reasonable and credible explanation as to why it needed to rely on using specifically Complainant’s well-known BNP PARIBAS as a domain name if not in order to take unfair advantage of or otherwise abuse Complainant’s BNP PARIBAS trademark, thus acting in bad faith within the larger meaning of paragraph 4(b) of the Policy (see WIPO overview 3.0, section 3.3).

Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

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 <bnpparibas.ai> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: May 15, 2020

1 It is evident from the case file that Whois Privacy, Private by Design, LLC, United States, is a privacy protection service and that Saeed Masajedian, Canada, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.

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