BNP PARIBAS v. GDPR Masked
Claim Number: FA2009001915259
Complainant: BNP PARIBAS of PARIS, France.
Complainant Representative:
Complainant Representative: Nameshield of Angers, France.
Respondent: GDPR Masked of GDPR Masked, US.
Respondent Representative: Not known
REGISTRIES and REGISTRARS
Registries: DotOnline Inc.
Registrars: Hostinger, UAB
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Examiner in this proceeding.
Luz Helena Villamil Jimenez, as Examiner.
Complainant submitted: September 30, 2020
Commencement: September 30, 2020
Default Date: October 15, 2020
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of fact:
The case at hand refers to the domain name <hello-bank.online>.
In accordance with the provisions of URS, Complainant claims
(i) that the domain name <hello-bank.online> is identical or confusingly similar to a word mark for which the Complainant holds a valid national or regional registration and that is in current use;
(ii) that The Registrant has no legitimate right or interest to the domain name, and
(iii) that the domain name was registered and is being used in bad faith:
Ÿ Registrant registered the domain name only in order to prevent the Complainant to register it and to reflect its trademark in a domain name.
Ÿ Registrant registered the domain name to take predatory advantage of Complainant’s preexisting trademark rights.
Complainant states that it is the owner of the international trademark "HELLO BANK!" N° 1151363, registered on December 13th 2012. The trademark is also registered in the Trademark Clearinghouse as of December 11, 2013. Moreover, it is contended in the Complaint that Complainant and its distinctive trademark "HELLO BANK!" are known by a significant portion of the public in several countries through its online banking services. Thus, Respondent was aware of the Complainant’s trademark "HELLO BANK!" at the moment of registration of the disputed domain name.
Complainant also states that the addition of the new gTLD ".ONLINE" is not sufficient to escape the finding that the domain name is identical to the Complainant's trademark "HELLO BANK!". The term ".ONLINE" is generic compared with the distinctive expression "HELLO BANK!", and therefore it does not eliminate the likelihood of confusion with the trademark "HELLO BANK!". The addition of generic wording to a trademark in a domain name is insufficient to avoid a finding of confusing similarity and panels have usually found the incorporated trademark to constitute the dominant component of the disputed domain name.
Furthermore, Complainant argues that Respondent has no rights or interests in respect of the domain name and is not related to the Complainant’s business. The Complainant does not carry out any activity or business with the Respondent.
Furthermore, the website for the disputed domain name <HELLO-BANK.ONLINE>
is inactive.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended:
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for Complainant
The process contains documentation which demonstrates that the Complainant is the owner of international registration N° 1151363 for the trademark HELLO BANK dated December 13, 2012 and in force until December 13, 2022.
The process contains as well evidence that demonstrates that Complainant’s trademark HELLO BANK is in use. The trademark was registered with the Trademark Clearinghouse on December 11, 2013, and attached to said registration Complainant submitted evidence of use of the trademark. Such use is perfectly suitable in accordance with the rules that govern the Uniform Rapid Suspension System (URS).
Consequently, the Examiner considers that the requirement of demonstrating trademark rights and the usage thereof, has been satisfied.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Examiner concurs with the Complainant in that the disputed domain name trademark identically reproduces the registered trademark HELLO BANK. Furthermore, the word “online” does not add any distinctiveness to the disputed domain, but instead contribute to cause confusion inasmuch as said word directly refers to the services rendered by the Complainant through its online banking services already known by consumers.
As contended by the Complainant, the Respondent could not have used the domain name without infringing the Complainant’s intellectual property rights on the trademark “HELLO BANK!”, and no legitimate rights could be claimed from an infringing trademark use.
Lastly, since Respondent has defaulted, there is no evidence to establish any rights or legitimate interests in respect of the domain name in his favor.
[URS 1.2.6.3] The domain name was registered and is being used in bad faith:
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is 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
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
In the present case, the relevant part of the disputed domain name consists of the words “HELLO-BANK”, which happen to exactly reproduce the registered trademark “HELLO-BANK” owned by the Complainant. The identical reproduction of a distinctive trademark within a domain name is definitely not the result of casualty, and aside of making evident that the registrant is acting in bad faith, it does suggest an intention to mislead those who have access to the domain name by making them believe that said domain and website belong as well to the owner of the registered trademark.
As said before, the disputed domain name <HELLO-BANK.ONLINE> resolves to a parking page, and as contended by the Complainant, there is no explanation as to why the disputed domain name, passively held and identical to a trademark owned by a third party, was chosen and registered except to take an illegitimate advantage of Complainant’s preexisting trademark rights.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration:
<hello-bank.online>
Luz Helena Villamil Jimenez, Examiner
Dated: October 20, 2020
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