WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BNP Paribas v. Privacy service provided by Withheld for Privacy ehf. / Josh Dawson

Case No. DCO2021-0053

1. The Parties

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

The Respondent is Privacy service provided by Withheld for Privacy ehf. Iceland / Josh Dawson, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bnparibas.co> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2021. On June 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 25, 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 June 29, 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 June 29, 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 July 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2021.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on August 23, 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 is BNP Paribas S.A., one of the largest banks in the world with presence in 71 countries and more than 193,319 employees.

The Complainant owns several registrations for BNP PARIBAS, including the following International registrations:

- No. 728598, registered on February 23, 2000;

- No. 745220, registered on September 18, 2000; and

- No. 876031, registered on November 24, 2005.

The Complainant is also the owner of many domain names comprising “bnp paribas”, such as <bnpparibas.com>, duly registered on September 2, 1999.

The disputed domain name was registered on April 16, 2021, and redirects to the Complainant’s official website.

5. Parties’ Contentions

A. Complainant

The Complaint mentions that the disputed domain name comprises the Complainant’s trademarks BNP PARIBAS in their entirety, with the deletion of the letter “p”, being a classic case of typosquatting.

According to the Complainant, the disputed domain name is confusingly similar to its registered trademarks, since it contains an obvious misspelling of the trademark BNP PARIBAS, in addition of the suffix “.co”, which does not prevent the likelihood of confusion between the disputed domain name and the Complainant’s trademarks.

According to the Complainant, given the reputation of the trademarks BNP PARIBAS, the disputed domain name was registered with the clear intention to create a likelihood of confusion with the Complainant’s trademarks and domain names.

The Complainant claims that the Respondent lacks rights and any legitimate interests in the disputed domain name, and that it has not made a legitimate noncommercial or fair use of the disputed domain name. Instead, the Complainant’s says that the disputed domain name redirects to the Complainant’s website, which proves that Respondent has full knowledge of the Complainant’s rights in the trademark BNP PARIBAS and registered the disputed domain name aiming to take advantage of the Complainant’s good reputation in its trademarks.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

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

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

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

A. Identical or Confusingly Similar

The evidence presented in the Complaint demonstrates that the Complainant is the owner of trademark registrations for BNP PARIBAS in different jurisdictions as well as the domain name <bnpparibas.com>.

The disputed domain name is confusingly similar with the Complainant’s trademark BNP PARIBAS. The intentional misspelling between the disputed domain name and the Complainant’s trademark does not prevent a finding of confusing similarity.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy when:

-the domain name “consists of a common, obvious, or intentional misspelling of a trademark” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9) and

-the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Therefore, the Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register a domain name containing the trademark BNP PARIBAS and/or that the Respondent is commonly known by the disputed domain name.

There is also no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. In this context, the complaint showed evidence that the Respondent redirected the disputed domain name to the Complainant’s official website, probably with the intention to create confusion and/or association between the disputed domain name and the Complainant’s trademarks and activities.

The Panel finds that the use of the disputed domain name, which incorporates a typographical variation of the Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The well-known trademark BNP PARIBAS is registered by the Complainant in different jurisdictions and has been used for years. Also, the Complainant registered the domain name <bnpparibas.com>, which resolves to its official website “www.group.bnpparibas”. These registrations predate the registration date of the disputed domain name.

There is no doubt that the disputed domain name represents an intentional misspelling of the Complainant’s mark and the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant’s BNP PARIBAS mark is distinctive, widely known, and has a strong worldwide visibility. Thus, a domain name that blatantly reproduces such a well-known mark simply deleting a letter “p” is suggestive of the registrant’s bad faith. It is not conceivable that the Respondent would not have been aware of the Complainant’s services and its trademark rights at the time of the registration of the disputed domain name.

It does not seem to make any sense for the Respondent to register the disputed domain name, except to create any kind of confusion and/or association with the Complainant and its well-known trademark, as well as potentially disrupt the Complainant’s business. Further, panels have additionally noted that a respondent’s redirection of a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. See section 3.1.4 of the WIPO Overview 3.0.

Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that the disputed domain name belongs to or is associated with the Complainant.

This Panel finds that the Respondent’s attempt of taking unfair advantage of the trademark BNP PARIBAS has been demonstrated.

Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. In these circumstances, and as found in the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name was registered and is being used in bad faith.

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 <bnparibas.co> be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: August 23, 2021