On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 103408
Time of Filing 2020-11-19 08:38:00
Disputed domain name BNP-PARIBAS-FORTIS.COM
Case Administrator
Name Iveta Špiclová
Complainant
Organization BNP PARIBAS
Authorized Representative
Organization NAMESHIELD S.A.S.
Respondent
Name jodenij kuipers
Other Legal Proceedings
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.
Identification of rights
The Complainant owns several trademarks, including the following relevant trademark registrations:

- the international trademark BNP PARIBAS with registration number 728598 registered on February 23, 2000;

- the international trademark BNP PARIBAS with registration number 745220 registered on September 18, 2000; and

- the international trademark BNP PARIBAS with registration number 876031 registered on November 24, 2005.

Such trademarks are hereinafter individually and jointly referred to as the "BPN PARISBAS trademarks".
Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is an international banking group with a presence in 71 countries, and one of the largest banks in the world. With almost 200,000 employees and over € 8 billion in net profit, the Complainant stands as a leading bank in the Eurozone and a prominent international banking institution. BNP PARIBAS FORTIS is the Complainant’s Belgium subsidiary.

The disputed domain name was registered on October 22, 2019 and used to resolve to a parking page with commercial links to the Complainant and its banking activities.
 
No administratively compliant Response has been filed.
Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).
Bad faith
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
1. The Panel finds that the disputed domain name is confusingly similar to the "BNP PARISBAS" trademarks as the disputed domain wholly incorporates the "BNP PARISBAS" trademarks. The addition of "FORTIS" does not take away the risk of confusion, but actually adds to the likelihood of confusion as "BNP PARISBAS FORTIS" is the trade name if the Complainant's Belgian affiliate. The uses of hyphens between the three elements of the disputed domain name replace the spaces which are not part of the character set of domain names and are therefore insignificant to the overall impression.


2. The Panel finds the Complainant has established that the Respondent was not licenced or authorized to use the "BNP PARISBAS" trademarks in the disputed domain name. Furthermore, the Panel finds the Complainant successfully submitted prima facie evidence that the Respondent has made no use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is making a legitimate non-commercial or fair use of the disputed domain name, nor is commonly known under the disputed domain name. The Panel therefore finds the Respondent has no rights or legitimate interests in respect of the disputed domain name.


3. The Panel is satisfied that the Respondent registered the disputed domain name in bad faith as it both incorporates the entire "BNP PARISBAS" trademarks as well as the trade name of the Complainant's Belgian subsidiary. Said trademarks are distinctive, just as the trade name so that the Respondent must have been familiar with the "BNP PARISBAS" trademarks and the "BNP PARISBAS FORTIS" trade name when it registered the disputed domain name. The Panel also infers that the Respondent had the Complainant's "BNP PARISBAS" trademarks in mind when registering the disputed domain name, as it was being used to resolve to a parking page with commercial links to the Complainant and its activities apparently in order to take advantage of the likelihood of the disputed domain name and the Complainant's trademarks and trade name, which constitutes use of the disputed domain name in bad faith.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
BNP-PARIBAS-FORTIS.COM Transferred to BPN PARISBAS
Panellists
Name Alfred Meijboom
Date of Panel Decision 2021-01-03
Publication of the Decision
Publish the Decision