URS DEFAULT DETERMINATION


BNP PARIBAS v. Privacy Protect, LLC (PrivacyProtect.org)
Claim Number: FA2105001945848


DOMAIN NAME

<bnpparibasfortis.online>


PARTIES


   Complainant: BNP PARIBAS of Paris, France
  
Complainant Representative: Nameshield Enora Millocheau of Angers, France

   Respondent: Privacy Protect, LLC (PrivacyProtect.org) Privacy Protect, LLC (PrivacyProtect.org) of Burlington, MA, US
  

REGISTRIES and REGISTRARS


   Registries: DotOnline Inc.
   Registrars: PDR Ltd. d/b/a PublicDomainRegistry.com

EXAMINER


   The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
   Saravanan Dhandapani, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: May 21, 2021
   Commencement: May 24, 2021
   Default Date: June 8, 2021
   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").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION


   Procedural Findings:  
      Multiple Complainants: Multiple Complainants: No multiple Complainants are involved in this proceeding. This Complaint and findings relate to the domain name <bnpparibasfortis.online>. No domain name is dismissed from this Complaint.
      Multiple Respondents: Multiple Respondents: No multiple Respondents are involved in this proceeding. This Complaint and findings relate to the domain <bnpparibasfortis.online>. No domain name is dismissed from this Complaint.

   Findings of Fact: The case of the Complainant is as follows: A.The domain name is confusingly similar to the International trademark "BNP PARIBAS" n° 728598, registered on February 23rd, 2000. This trademark is also registered in the TMCH since October 23rd, 2013. The addition of the term FORTIS (in reference with the Complainant’s subsidiary Fortis Bank) and the new gTLD ".ONLINE" is not sufficient to escape the finding that the domain name is confusingly similar to the Complainant's trademark “BNP PARIBAS”. Indeed, the term ".ONLINE" is generic compared with the distinctive expression "BNP PARIBAS", and therefore doesn’t eliminate the likelihood of confusion with the trademark "BNP PARIBAS ". By this registration, the Respondent has clearly targeted the Complainant’s company BNP PARIBAS FORTIS. This is insufficient to avoid the likelihood of confusion with the Complainant and its trademark. B. Registrant has no legitimate right or interest to the domain name The Respondent has no rights or interests in respect of the domain name and is not related to the Complainant’s business. Furthermore, the disputed domain name resolves to a registrar parking page with commercial links. Thus, the Complainant contends that the Respondent has not developed a demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services. Indeed, the Respondent could not have used the domain name without infringing the Complainant’s intellectual property rights on the trademark BNP PARIBAS. C. The domain name was registered and is being used in bad faith The domain name is confusingly similar to the International trademark "BNP PARIBAS" n° 728598, registered on February 23rd, 2000. This trademark is also registered in the TMCH since October 23rd, 2013. The Complainant and its distinctive trademark “BNP PARIBAS” is known as one of the most famous banks in the world. Thus, the Respondent was aware of the Complainant’s trademark “BNP PARIBAS” at the moment of registration of the disputed domain name. Moreover, the disputed domain name resolves to a registrar parking page with commercial links. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line 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.

  

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 Complainant has proved by documentary evidence that they are the registered owner of international trademark “"BNP PARIBAS". As noted, the disputed domain name <bnpparibasfortis.online> composes “bnpparibas”, “fortis” and “.online”. The word “bnpparibas” in disputed domain name is identical to Complainant’s registered mark “BNP PARIBAS”. The BNP PARIBAS is known as one of the most familiar banks in the world. The Complainant states that the ‘Fortis Bank’ is the subsidiary bank of the Complainant. The “.online” in the disputed domain name, being a generic code Top-Level Domain name (gTLD), is suffix. The word “fortis”,” and “.online” are suffix to the Complainant’s registered international trademark. The suffixes are non-distinctive and are incapable of differentiating the disputed domain name from the Complainant’s registered trademark. Merely adding a suffix to a popular trademark cannot be the basis of a new trademark. Based on the “BNP PARIBAS” being a registered trademark of the Complainant, the Examiner determines that URS 1.2.6.1(i) covers the domain name at issue in this Complaint.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


The Complainant owns registered mark “BNP PARIBAS” since 2000. The Complainant’s adoption and first use of the registered trademark is for quite some time. In such case, the burden lies on the Respondent to prove that he/she has legitimate rights and/or interests in the disputed domain names. The Respondent is in default and has not filed any response. Although, the Complainant is not entitled to relief simply by default of the Respondent to submit a Response, the Examiner can however and does draw evidentiary inferences from the failure of the Respondent to respond. In view of the above, the Complainant has established a prima facie case of lack of rights and legitimate interest over the disputed domain name. Based on the record, the Respondent does not have rights or legitimate interests in the disputed domain name. Hence, the Examiner determines that URS 1.2.6.2 covers the domain name at issue in this Complaint and that the Respondent has no legitimate right or interest to the domain name.


[URS 1.2.6.3] The domain name(s) was/were 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 on-line 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 


It is the specific case of the Complainant that the Respondent is not affiliated with Complainant in any manner and never authorized the Respondent to register or use any domain name incorporating “bnpparibas”. Moreover, the disputed domain name resolves to a registrar parking page with commercial links. Thus, the Panel Examiner is of the firm view that using a confusingly similar domain name establishes the bad faith. It is well established that the registration and use of the disputed domain names must involve malafides where the registration and use of it was continues to be made in full knowledge of the Complainant’s prior rights in the “bnpparibas” registered mark and in circumstances where the registrant did not seek permission from the Complainant, as the owner of trademark, for such registration and use. Thus the Panel Examiner comes to the irresistible determination that (i) the disputed domain name is identical to the Complainant’s “BNP PARIBAS” pre-existing trademark rights; (ii) the Respondent’s name does not correspond to the disputed domain name; (iii) the Respondent was aware of the Complainant and its trademark when it registered the disputed the domain name; (iv) there is no indication of any authorization to use the Complainant’s mark. Hence, it is lawful to conclude that the disputed domain name was registered in bad faith. Thus, the Examiner determines that URS 1.2.6.3 (a) and (d) covers the domain name at issue in this Complaint and the domain name was registered and being used in bad faith.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


After reviewing the parties 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 name(s) be SUSPENDED for the duration of the registration:

  1. bnpparibasfortis.online

 

Saravanan Dhandapani
Examiner
Dated: June 9, 2021

 

 

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