Decision for dispute CAC-UDRP-108947

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant owns, among many others, the following trademarks:

- International trademark for BNP PARIBAS (word mark), Reg. No. 728598, registered on February 23, 2000, and in force until February 23, 2030, in International Classes (“ICs”) 35, 36 and 38; designated countries: Australia, Norway, Türkiye, Uzbekistan, Bulgaria, Switzerland, China, Cuba, Czech Republic, Algeria, Egypt, Hungary, Liechtenstein, Morocco, Monaco, Montenegro, Mozambique, Poland, Romania, Serbia, Russian Federation, Slovakia, Ukraine, Viet Nam; and

- International trademark for BNP PARIBAS (and design), Reg. No. 745220, registered on September 18, 2000, and in force until September 18, 2030, in ICs 9, 35, 36, and 38; designated countries: Japan, Norway, Türkiye, Uzbekistan, Bulgaria, Switzerland, China, Cuba, Czech Republic, Algeria, Egypt, Croatia, Hungary, Liechtenstein, Morocco, Monaco, Mozambique, Poland, Romania, Russian Federation, Slovakia, Ukraine, Viet Nam.

The Complainant is a recognized French multinational banking group formed in 2000 and headquartered in Paris, France, with a worldwide presence, especially in France and Europe, in banking and financial services.  The Complainant has a presence in 64 countries, including the Americas and Asia-Pacific, with more than 18,000 employees and €12.2 billion in net profit by 2025.

The Complainant also owns a domain name portfolio, based on the BNP PARIBAS trademark, such as: <bnpparibas.com>, registered since September 2, 1999; <bnpparibas.net>, registered since December 29, 1999; <bnpparibas.pro>, registered since July 23, 2008.

The Complainant acquired its own generic Top-Level Domain, being “.bnpparibas” delegated on August 11, 2014[1].  

The disputed domain name <bnp-paribas.finance> was registered on July 30, 2026, and resolves to an inactive website.

[1] https://www.iana.org/domains/root/db/bnpparibas.html

Response

The Respondent did not reply to any of the Complainant's contentions.

Complainant Contentions: 

The Complainant contends that the disputed domain name is identical to its well-known BNP PARIBAS trademark, and that being registered under the new gTLD “.finance” does not change the overall impression of the designation as being connected to the Complainant’s trademarks.  The Respondent has no rights or legitimate interest in respect of the disputed domain name.  The disputed domain name was registered and is being used in bad faith.  The disputed domain name has remained inactive and is therefore passively held by the Respondent, which constitutes bad faith under the Policy.  

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is almost identical to the BNP PARIBAS marks, in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

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).

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).

The Panel is satisfied that all procedural requirements under UDRP were met and that there is no other reason why it would be inappropriate to provide a decision.

In accordance with Paragraph 4(a) of the Policy, the onus is on the Complainant to prove:

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

(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.

The Panel will consider each of these requirements in turn.

Identical or Confusingly Similar

The Complainant has sufficiently proved before the Panel that it owns trademark Rights over the term BNP PARIBAS.  

The Panel finds that the mark is reproduced within the disputed domain name.  Accordingly, the disputed domain name is almost identical to the mark for the purposes of the Policy.  WIPO Overview of WIPO Panel Views on Select UDRP Questions (“WIPO Overview 3.1”), sections 1.7 and 1.10.

Although the addition of other terms here, a hyphen, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy.  WIPO Overview 3.1, section 1.8. 

Concerning the new gTLD ‘.finance ’, the Panel finds that “the practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”); the ordinary meaning ascribed to a particular TLD would not necessarily impact assessment of the first element. The meaning of such TLD may, however, be relevant to panel assessment of the second and third elements.”   WIPO Overview 3.1, section 1.11.2.

The Panel finds the first element of the Policy has been established.

Rights or Legitimate Interests 

In this case, the Panel finds that:

The Respondent is not associated or affiliated with, or has been authorized or licensed by, the Complainant to register the disputed domain name.

There is no evidence favorable to the Respondent. The disputed domain name incorporates a well-known trademark such as BNP PARIBAS, under a gTLD intrinsically related to the Complainant’s primary business activity (.finance), thereby increasing the potential for fraud on the Internet. (see IMC B.V. v. mika, WIPO Case No. D2024-1262).  

In relation to it, the WIPO Overview, 3.1, under section 2.14.1, states that:

“Particularly when the TLD is descriptive of or relates to goods or services (including their natural zone of expansion), a geographic region, or other term associated with the complainant, the respondent’s selection of such TLD would tend to support a finding that the respondent obtained the domain name to take advantage of the complainant’s mark, and as such that the respondent lacks rights or legitimate interests in the domain name.”  (Emphasis added).

There is no evidence that the Respondent corresponds to or has become commonly known by the term “bnp-paribas.finance”.  The Respondent’s name does not coincide with the disputed domain name either.

Nothing in the record suggests or infers any fair or non-commercial use of the disputed domain name, which has remained inactive, in particular given the Complainant’s banking and financial [highly data sensitive] activity.

Additionally, it is well accepted that if the composition of a disputed domain name suggests sponsorship or endorsement by the trademark owner, it cannot constitute fair use.  WIPO Overview 3.1, section 2.5.1.

According to the evidence submitted before this Panel, the Complainant has made out its prima facie case, and the Respondent did not submit any response or any communication during the entire proceeding rebutting the Complainant’s arguments.

The Panel finds the second element of the Policy has been established.

Registered and Used in Bad Faith

Registration in Bad Faith:

In this case, the evidence submitted shows that by the time the Respondent registered the disputed domain name, the Complainant had already established its trademark Rights over the term BNP PARIBAS, especially in France, at least since 2000.  In this instance, the Respondent registered the disputed domain name on July 30, 2026, meaning twenty-six (26) years later.

Furthermore, the nature of the disputed domain name, in addition to the chosen top-level domain (.finance), is not coincidental, particularly given the nature and worldwide presence of the Complainant’s business activity, and recognition of the BNP PARIBAS well-known trademark; therefore, the Panel finds that the Respondent knew and registered the disputed domain name with the Complainant in mind.  WIPO Overview 3.1, section 3.2.1 and 3.2.2.

Use in Bad Faith:

In this case, according to the evidence provided by the Complainant, the disputed domain name has remained inactive.  Concerning the Passive Holding Doctrine, among multiple panelists’ Decisions, and in particular, the WIPO Overview 3.1, under section 3.3 states that:

“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include:

(i)  the degree of distinctiveness or reputation of the complainant’s mark;

(ii)  the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;

(iii)  the respondent’s taking active steps to conceal its identity; or

(iv)  the use of false or inaccurate contact details (noted to be in breach of the respondent’s registration agreement)."

(…) “panels assess the overall plausibility of any (claimed) good faith use to which the domain name may be put in light of the composition of the domain name in relation to the relevant mark, such that, the more arbitrary or distinctive a mark the less plausible a claimed non-infringing good faith use is likely to be, and vice versa.”

In this case, the Complainant has proved that:

(i) BNP PARIBAS is a widely known trademark that enjoys distinctiveness and a strong reputation, especially in France, where the Respondent seems to be located;

(ii) the Respondent failed to submit any communication and/or a Response;

(iii) the Respondent has concealed its identity by enabling the privacy service through Privacy Protect, LLC.

Here, the disputed domain name has been passively held, resulting in an inactive website, which, given the worldwide recognition of the Complainant’s well-known trademark, confirms the reality that no good-faith use of the disputed domain name is conceivable.

The Panel finds that the Complainant has established the third element of the Policy.