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. 104221
Time of Filing 2021-12-08 09:21:14
Disputed domain name BNPPARIBAS.FRL
Case Administrator
Name Iveta Špiclová
Complainant
Organization BNP PARIBAS
Authorized Representative
Organization NAMESHIELD S.A.S.
Respondent
Organization maria
Other Legal Proceedings
The Panel is not aware of any other legal proceedings which are pending or decided and relate to the disputed domain name.
Identification of rights
The Complainant has adduced evidence that it owns the following trademarks which all remain valid:

- international trademark BNP PARIBAS No. 728598, registered on 23 February 2000;
- international trademark BNP PARIBAS No. 745220, registered on 18 September 2000; and
- international trademark BNP PARIBAS No. 876031, registered on 24 November 2005.

It has further adduced evidence that it is the registrant of:

- <bnpparibas.com>, registered on 2 September 1999;
- <bnpparibas.net>, registered on 29 December 1999; and
- <bnpparibas.pro>, registered on 23 July 2008.

The disputed domain name <bnpparibas.frl> was registered on 27 November 2019.
Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is an international banking group with a presence in 68 countries. It is one of the largest banks in the world and has some 193,000 employees and a turnover of over €44 billion.

The Respondent is not known by the disputed domain name, and has not acquired trademark rights to use the Complainant's trademark it incorporates. Nor is the Respondent affiliated with the Complainant in any way or authorized to use the Complainant's trademarks.

The disputed domain name <bnpparibas.frl> resolves to a page without substantial content.
 
PARTIES' CONTENTIONS (IN SUMMARY):

COMPLAINANT:

The disputed domain name is identical to that of the Complainant's trademark, the Top-Level Domain name suffix being an element that can be ignored and should be according to past panel decisions (which are cited).

Similarly, the Respondent is not commonly known by the disputed domain name, which is instead the highly notorious brand of the Complainant. Nor does the Respondent have any rights or legitimate interest in the disputed domain name and nor has the Respondent made any demonstrable effort to use the disputed domain name. The Complainant asserts in this connection the absence of rights and of any Complainant authorization, mentioned as uncontested facts above, as well as the non-substantial character of the web page the Respondent published.

The Complainant furthermore denies that any contemplated use of the domain name could conceivably be legitimate. The above circumstances, coupled with the certitude that the Respondent must have known that the disputed domain name was illegitimate, indicate bad faith registration and use.

RESPONDENT: 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 the UDRP were met and that there is no other reason why it would be inappropriate to provide a decision.
The Panel nevertheless remarks that the Respondent’s name, as supplied in the Registrar Verification Non-Standard Communication, is not included in the Amended Complaint. Thus, while the Complainant has doubtless performed the requisite technical steps to amend its Complaint, the Panel draws the CAC’s attention to the Panel’s concern that these steps do not appear to ensure due correspondence with the details supplied by the registrar. A Respondent can legitimately expect to be depicted accurately as a matter of procedural fairness.
Principal Reasons for the Decision
The Panel, first of all, takes note from the Case File that the registrant contact details provided by the registrar of the disputed domain name indicate a false address. The Danish city of Aarhus is notably located in the province of East Jutland, not "Paris". Other elements of the details reinforce suspicion as to their veracity.

As to the contentions put forward by the Complainant for the purposes of the three cumulative UDRP criteria, the Panel:

- accepts that the stem of the disputed domain name is identical to that of the Complainant's trademark and that this identicality is unaffected by the suffix representing the Flanders Top Level Domain designator “.frl”, thereby establishing the Complainant's rights beyond doubt;
- accepts that there is no indication that the Respondent has either rights or a legitimate interest in the character string contained in the disputed domain name that corresponds to the Complainant's trademark;
- does not accept that the Respondent has made no preparations or efforts to use the disputed domain name. Rather, the screenshot evidence adduced by the Complainant shows that the Respondent has illegitimately sought to mimic, to the extent of colour card elements, the look and feel of the Complainant's branding;
- accepts that the purpose pursued by the Respondent at registration and during use of the disputed domain name was to impersonate the Complainant, which is a banking group, and that this misuse of a domain name must have been deliberate and thus in bad faith.

For these reasons, the Complaint is accepted and the Panel orders the transfer of the disputed domain name to the Complainant.

Finally, the Panel remarks that it was unnecessary to consider the legal contention raised by the Complainant concerning the standard and burden of proof. The Complainant adduced evidence and grounds going beyond a mere prima facie case.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
BNPPARIBAS.FRL Transferred to the Complainant
Panellists
Name Kevin J. Madders
Date of Panel Decision 2022-01-06
Publication of the Decision
Publish the Decision