The Complainant is BNP Paribas of Paris, France, represented by Nameshield, France.
The Respondent is Ronan Laster of Paris, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Register.IT SPA (the "Registrar"). 3. Language of proceedings
Pursuant to the paragraph 11 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
The language of the Registration Agreement for the disputed domain name is French. The Complaint was filed in English. The Complainant requests that the language in this case be English because the Respondent can understand English.
The Respondent did not reply to the Complainant's request.
Therefore, in light of the above and of the circumstances of the case, in particular the fact that the Respondent did not reply, the Panel accepts the Complainant's request. 4. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 6, 2017. On November 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and stating that the language of the registration agreement is French. In response to a request by the Center to amend the Complaint, the Complainant filed an amendment to the Complaint on November 20, 2018.
On November 10, 2017, the Center sent a communication to the Parties, inviting the Complainant to either submit satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English, or to submit the Complaint translated into French, or to submit a request for English to be the language of the administrative proceedings. The Respondent was also invited to submit comments. On November 20, 2017, the Complainant submitted a request for English to be the language of the proceedings. The Respondent did not reply to this request.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 12, 2017.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on January 17, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 5. Factual Background
The Complainant, BNP Paribas, is an international banking group, one of the largest in the world, located in about 70 countries including France.
The Complainant is the owner of numerous trademarks, registered in several countries (thereafter the "BNP PARIBAS trademarks") such as:
- The international trademark BNP PARIBAS, No. 728598, filed on February 23, 2000 registered for products and services in classes 35, 36 and 38;
- The international trademark BNP PARIBAS, No. 745220, filed on September 18, 2000 registered for products and services in classes 9, 35, 36 and 38;
- The international trademark BNP PARIBAS, No. 876031, filed on November 24, 2005 registered for products and services in classes 9, 35, 36 and 38.
The Complainant registered the following domain names:
- registered since September 2, 1999;
- registered since December 29, 1999;
- registered since March 17, 2003.
The domain name was registered by the Respondent on September 5, 2017 with Register.IT SPA.
The domain name currently directs to an inactive website containing an error message in French that informs Internet users that the service is unavailable. 6. Parties' Contentions A. Complainant
First of all, the Complainant contends that the disputed domain name is confusingly similar to the BNP PARIBAS trademarks on which the Complainant has rights since it contains the Complainant's trademarks without the adjunction of any letter or word.
The Complainant then explains that the generic Top-Level Domain Name ("gTLD") ".com" and the term "group" are not distinguishing.
Furthermore, the Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no connection or affiliation with the Complainant.
Moreover, the Respondent has never been authorized or permitted by the Complainant to register or to use the BNP PARIBAS trademarks.
The Respondent used the domain name to resolve to an inactive website, which proves that the Respondent has no plan to use the disputed domain name.
Finally, the Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith because it could not ignore the notoriety of the Complainant, especially in France, the country in which the Respondent is located according to the information WhoIs. B. Respondent
The Respondent did not reply to the Complainant's contentions. 7. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, the Panel finds that the Complainant has provided evidence that it has rights on the BNP PARIBAS trademarks.
Then, the Panel notices that the disputed domain name is composed of (i) the distinctive element "bnpparibas", which is the exact reproduction of the BNP PARIBAS trademarks, (ii) the generic term "group" and (iii) the gTLD ".com".
As pointed out by the Complainant, the applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.
The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition ("WIPO Overview 3.0")).
Furthermore, the Panel concurs with the opinion of several prior UDRP panels which have held that the fact that a domain name wholly incorporates a complainant's registered trademark may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059; Hoffmann-La Roche Inc., Roche Products Limited v.Vladimir Ulyanov,WIPO Case No. D2011-1474; Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150).
Regarding the disputed domain name , the Panel finds that the addition of the generic term "group" to the BNP Paribas trademarks is not sufficient to exclude confusing similarity. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (See section 1.8 of the WIPO Overview 3.0 and LEGO Juris A/S v. DBA David Inc/ DomainsByP,WIPO Case No. D2011-1290).
Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant's trademarks. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name.
These circumstances are:
- before any notice of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to prior UDRP panel decisions, it is sufficient that the Complainant shows prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Indeed, "[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element" (See section 2.1 of the WIPO Overview 3.0).
According to the Panel, the Complainant has shown prima facie that the Respondent is not affiliated with the Complainant and has not been permitted, licensed or otherwise authorized by the Complainant to use its BNP PARIBAS trademarks, and that the Respondent is not currently and has never been known under the name BNP Paribas.
The Complainant having established prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production has been shifted to the Respondent. However, the Respondent has not provided any response to the Complainant's contentions.
Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.
Section 3.2.1 of the WIPO Overview 3.0 states that: "Particular circumstances panels may take into account in assessing whether the respondent's registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant's mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant's area of activity or natural zone of expansion), (ii) the chosen top-level domain (e.g., particularly where corresponding to the complainant's area of business activity or natural zone of expansion), (iii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof, (iv) the timing and circumstances of the registration (particularly following a product launch, or the complainant's failure to renew its domain name registration), (v) any respondent pattern of targeting marks along a range of factors, such as a common area of commerce, intended consumers, or geographic location, (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent's choice of the domain name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant"..
First of all, the Panel finds that the Complainant's trademarks were registered long before the Respondent registered the disputed domain name.
Then, according to the Panel, the Complainant has shown that the Respondent knew, or should have known, that its registration would be identical or confusingly similar to the Complainant's mark specifically because of the high notoriety of the BNP PARIBAS trademarks throughout the world and in France, the country in which the Respondent is located.
The Panel finds that the disputed domain name is not currently used since it resolves to a webpage that indicates in French that the service is unavailable, but wishes to remind that such "passive holding" does not prevent a finding of bad faith, since according to prior UDRP panel decisions the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). In the circumstances of this case, and in particular the reputation of the BNP PARIBAS Trademarks and the Respondent's failure to participate to the proceedings, the Panel finds that the disputed domain name has been used in bad faith.
Therefore, in view of all the circumstances of this case the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Christiane Féral-Schuhl
Sole Panelist
Date: January 30, 2018
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