{ "case_number": "CAC-UDRP-102719", "time_of_filling": "2019-10-14 09:57:58", "domain_names": [ "ukbnpparibas.com" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "BNP PARIBAS" ], "complainant_representative": "Nameshield (Enora Millocheau)", "respondent": [ "CSD UK" ], "respondent_representative": null, "factual_background": "The following facts have been asserted by the Complainant and have not been contested by the Respondent:\r\n\r\nBNP PARIBAS S.A. (the “Complainant”) is an international banking group with a presence in 72 countries, and one of the largest banks in the world. With more than 202,624 employees and €7.5 billion in net profit, the Complainant stands as a leading bank in the Eurozone and a prominent international banking institution.\r\n\r\nThe Complainant is also the owner of a large portfolio of domain names containing the trademark “BNP PARIBAS”, such as:\r\n\r\n- , registered since 1999-09-02;\r\n\r\n- , registered since 1999-12-29; and\r\n\r\n- , registered since 2001-05-16.\r\n\r\n\r\nThe disputed domain name was registered on August 14th, 2019 and is inactive.\r\n", "other_legal_proceedings": "The Panel is not cognizant of any other pending or decided legal proceedings relating to the disputed domain name.", "no_response_filed": "COMPLAINANT\r\n\r\nA. The Complainant states that the disputed domain name is confusingly similar to its trademark “BNP PARIBAS” ®, as it incorporates the trademark in its entirety. \r\n\r\nThe addition of the geographic term “UK” is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark “BNP PARIBAS” ®. It does not change the overall impression of the designation as being connected to the Complainant’s trademark “BNP PARIBAS” ®. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademark and domain names associated.\r\n\r\nIt is well-established that “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP”.\r\n\r\nMoreover, the Complainant contends that the addition of the generic Top-Level Domain suffix “.COM” does not change the overall impression of the designation as being connected to the trademark “BNP PARIBAS” ® of the Complainant. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademark and its domain names associated.\r\n\r\nThus, the disputed domain name is confusingly similar to the Complainant's trademark “BNP PARIBAS” ®. \r\n\r\n\r\nB. A Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in a domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy.\r\n\r\nThe Respondent is not known as the disputed domain name in the Whois database, and has not acquired trademarks mark rights on this term. Past Panels have held that a Respondent was not commonly known by a disputed domain name if the WHOIS information was not similar to the disputed domain name.\r\n\r\nThe Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that he is not related in any way to the Complainant’s business.\r\n\r\nThe Complainant contends that the Respondent is not affiliated with him nor authorized by him in any way to use the trademark “BNP PARIBAS” ®. The Complainant does not carry out any activity for, nor has any business with the Respondent.\r\n\r\nBesides, the Complainant asserts that Respondent used the disputed domain name to pass itself off as a Complainant’s Client Support in the UK to conduct a phishing scheme, by using an e-mail address closely similar to the Complainant’s official one: “******@ukbnpparibas.com” instead of “******@uk.bnpparibas.com”. Using the disputed domain name in this manner is neither a bona fide offering of goods or services under Policy 4 (c)(i), nor a non-commercial or fair use pursuant to Policy 4(c)(iii).\r\n\r\nBesides, the disputed domain name is currently inactive. Therefore, the Complainant contends that Respondent did not make any use of disputed domain name since its registration, and it confirms that Respondent has no demonstrable plan to use the disputed domain name, except for the phishing scheme. It demonstrates a lack of legitimate interests in respect of the disputed domain name.\r\n\r\nThus, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.\r\n\r\n\r\nC. Prior UDRP panels have established that the trademark “BNP PARIBAS” ® is well-known.\r\n\r\nBesides, the Respondent has used the disputed domain name in a phishing scheme in order to pass off as the Complainant’s Client Support in the UK.\r\n\r\nThus, given the distinctiveness of the Complainant's trademarks and reputation, it is inconceivable that the Respondent could have registered the disputed domain name without actual knowledge of Complainant's rights in the trademark, which evidences bad faith.\r\n\r\nFurthermore, the Complainant states that the Respondent used the disputed domain name in bad faith. It is well-established that using a domain name for purposes of phishing or other fraudulent activity constitutes solid evidence of bad faith use.\r\n\r\nFinally, the disputed domain name is inactive. The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, except for the phishing scheme, and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.\r\n\r\nOn these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.\r\n\r\n\r\nRESPONDENT\r\n\r\nNo administratively compliant Response has been filed.", "rights": "To the satisfaction of the Panel, the Complainant has shown that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).", "no_rights_or_legitimate_interests": "To the satisfaction of the Panel, the Complainant has 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": "To the satisfaction of the Panel, the Complainant has 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 have been met and there is no other reason why it would be unsuitable to provide the Decision.", "decision": "Accepted", "panelists": [ "Rodolfo Carlos Rivas Rea" ], "date_of_panel_decision": "2019-11-07 00:00:00", "informal_english_translation": "The Complainant owns several trademarks for “BNP PARIBAS” ®, such as:\r\n\r\n- International trademark “BNP PARIBAS” ® n°728598 registered since 2000-02-23;\r\n\r\n- International trademark “BNP PARIBAS” ® n°745220 registered since 2000-09-18; and\r\n\r\n- International trademark “BNP PARIBAS” ® n°876031 registered since 2005-11-24.", "decision_domains": { "UKBNPPARIBAS.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }