{ "case_number": "CAC-UDRP-104263", "time_of_filling": "2022-01-11 09:14:05", "domain_names": [ "bnpparibas-fortis.com" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "BNP PARIBAS" ], "complainant_representative": "NAMESHIELD S.A.S.", "respondent": [ "Greg Morgan" ], "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 in 68 countries and one of the largest banks in the world. With over 193,000 employees and €44.3 billion in revenues, 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 several domain names containing “BNP PARIBAS”, such as , registered since September 2, 1999.\r\n\r\nThe disputed domain name was registered on July 13, 2019, and resolves to an inactive page. Besides, MX servers are configured.", "other_legal_proceedings": "The Panel is not conscious of any other pending or decided legal proceedings relating to the disputed domain name.", "no_response_filed": "I. The Complainant states that the disputed domain name is confusingly similar to its previous trademark registration on the term “BNP PARIBAS” and its domain names associated.\r\n\r\nIndeed, the disputed domain name contains the Complainant’s registered trademark “BNP PARIBAS” in its entirety.\r\n\r\nThe Complainant contends that the disputed domain name only differs from the trademark “BNP PARIBAS” by the addition of the term “FORTIS” (which refers to the Complainant’s subsidiary BNP PARIBAS FORTIS) and the addition of a hyphen.\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 gTLD “.COM” does not change the overall impression of the designation as being connected to the trademark “BNP PARIBAS”. Therefore, 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\n\r\nII. A Complainant must make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP.\r\n\r\nThe Complainant asserts that the Respondent is not known as the disputed domain name in the Whois database, but as \"Greg Morgan\", and has not acquired trademark 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 domain names 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\nThe disputed domain name is not used. The Complainant contends that Respondent did not use the disputed domain name since its registration, and it confirms that Respondent has no demonstrable plan to use the disputed domain name. It demonstrates a lack of legitimate interests regarding the disputed domain name.\r\n\r\nThus, the Complainant contends that the Respondent has no rights or legitimate interests regarding the disputed domain name .\r\n\r\n\r\nIII. The Complainant states that the disputed domain name is confusingly similar to its trademark “BNP PARIBAS”.\r\n\r\nPrior UDRP panels have established that the trademark “BNP PARIBAS” is well-known.\r\n\r\nBesides, the Complainant asserts that the Respondent had the Complainant and its subsidiary in mind when it registered the disputed domain name and that this registration cannot be coincidental. Indeed, the association of the term \"FORTIS\" and the trademark “BNP PARIBAS” is only known in relation to the Complainant's subsidiary.\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 disputed domain name is not used, resolving to an inactive page. Besides, the disputed domain name has been set up with MX records. The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name. It is impossible to conceive of any plausible actual or contemplated active use of the 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\nBesides, although the disputed domain name appears to be unused, it has been set up with MX records which suggests that it may be actively used for e-mail purposes.\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\n\r\nRESPONDENT\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 for providing the Decision.", "decision": "Accepted", "panelists": [ "Rodolfo Carlos Rivas Rea" ], "date_of_panel_decision": "2022-02-02 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 February 23, 2000;\r\n- International trademark “BNP PARIBAS” n°745220 registered since September 18, 2000; and\r\n- International trademark “BNP PARIBAS” n°876031 registered since November 24, 2005.", "decision_domains": { "BNPPARIBAS-FORTIS.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }