The Complainant is BNP Paribas of Paris, France, represented by Nameshield, France.
The Respondent is Stanciu Stefan-George of Bucharest, Romania, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with ROTLD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2018. On November 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2018, the Registrar transmitted by email to the Center its verification response informing the Center that the language of the registration agreement for the disputed domain name is Romanian and disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 27, 2018.
The Center sent an email to the Parties in English and in Romanian regarding the language of the proceeding on November 26, 2018. On November 27, 2018, the Complainant submitted an email to the Center, requesting English to be the language of proceeding. On November 28, 2018, the Respondent submitted an email to the Center, informing that it would send its answer in English.
On December 1, 2018, the Respondent filed a Response with the Center. The proceeding was suspended at the request of the Complainant on December 5, 2018. The proceeding was reinstituted at the request of the Complainant on December 13, 2018.
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 for Uniform Domain Name Dispute Resolution Policy (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 December 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2019. An Amended Response was filed with the Center on December 31, 2018.
The Center appointed Marilena Comanescu as the sole panelist in this matter on January 17, 2019. 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. 4. Factual Background
The Complainant, BNP Paribas, is an international banking group, located in 73 countries worldwide, with more than 198,011 employees and EUR 7,8 billion in net profit.
The Complainant is the owner of several trademarks for BNP PARIBAS, such as the following:
- the International Trademark registration BNP PARIBAS No. 728598, registered on February 23, 2000, and registered for services in classes 35, 36 and 38, designating, inter alia, Romania; and
- the International Trademark registration BNP PARIBAS No. 745220, registered on September 18, 2000, and registered for goods and services in classes 9, 35, 36 and 38, designating, inter alia, Romania.
The Complainant owns several domain names, such as registered on September 2, 1999 and registered on December 29, 1999.
The Complainant’s trademark has been considered to be famous in its field of activity. See BNP Paribas v. Ronan Laster,WIPO Case No. D2017-2167.
The disputed domain name was registered on November 11, 2018 1 , and at the time of filing the Complaint it was not actively used.
During the suspension of the present proceeding, following the Complainant’s email request to conclude the standard UDRP settlement without prejudice, the Respondent replied that he would consent to transfer the disputed domain name to the Complainant if the Complainant agrees to (i) reconsider its initial assumption that the Respondent has registered the disputed domain name in bad faith; (ii) express appreciation regarding the Respondent’s decision to transfer the disputed domain name to it; (iii) state that the Complainant would not pursue in the future any legal action against the Respondent; and (iv) give up in the Respondent’s favour an amount equivalent with the fee refunded by the Center (which is USD 1,000) following the closing of the UDRP proceeding, amount meant to alleviate Respondent’s costs incurred with the legal representation in this proceeding and for the registration of a new domain name “to fit his purpose”. The Respondent further emphasized that the later request was “just a suggestion, and should not be regarded by any means as a condition” for such transfer.
Following Respondent’s reaction, the Complainant requested to resume the proceeding. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to its well-known trademark BNP PARIBAS, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent alleges particularly the following:
- he had registered the disputed domain name for the first time on June 13, 2006, and it renewed it in November 2018. In 2018 the Romanian Registrar implemented the requirement of renewing the domain names annually. According to its procedures, the Registrar informed the Respondent several times to renew its domain name which was due to expiry on August 13, 2018 and scheduled for deletion on November 11, 2018 (the standard procedure is to delete a domain name in 90 days after its expiry). On November 10, 2018 the Respondent alleges he decided to transfer the domain name to another registrar and claims he paid the renewal fee in the same day by debit card, but due to money transfer delays, he was informed that the domain name has been deleted. On the same day, on November 11, 2018, the Respondent registered the disputed domain name with the Registrar. All these were provided as Annex 1 to the Amended Response;
- he was not aware of the Complainant and its trademarks in 2006 when he registered the disputed domain name and that even at the time of filing the Complaint, the Complainant’s presence in Romania is, according to his searches, in a form of a branch office and not as a commercial bank accredited in Romania;
- he agrees on the fact that the disputed domain name is identical to the Complainant’s BNP PARIBAS trademark. But the term “bnpparibas” derives from the acronym of the English words “Butimanu Natural Park Property” together with the word “aribas”, an archaic word found in a dictionary from 1963, used in Oltenia region and meaning “heir, successor”. Butimanu is the name of his family property located in Dambovita county. He registered the disputed domain name in order “to document and share with others how this historic property will be renovated to gain back its former glory”;
- he had some “timid attempts” to developing a website under the disputed domain name and provided as Annex 3 to the Amended Response a screen capture from the Wayback Machine online archive dated July 31, 2008, with a brief English description of the Butimanu park in English and several photographs under the title “Butimanu Natural Park – a Park Area Residence Inside Bucharest and Suburbs”;
- he found out at some point about the Complainant, and, in order to “avoid confusion and also potential legal issues”, he contacted several times the Complainant’s representatives offering to transfer the disputed domain name free of charge. In the Annex 4 to the Amended Response, the Panel could read the Respondent’s proposal to cancel the disputed domain name “as soon as I have a bit more time on my hands”; alternatively he asks the Complainant if it is interested to transfer the disputed domain name to it free of charge but furthermore that the Respondent would appreciate the Complainant’s financial contribution to cover the costs for registering an alternative domain name; and
- he registered and used the disputed domain name in good faith, for documenting the restoration of his family property and he is willing to transfer the disputed domain name free of charge to the Complainant. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances. 6.1. Preliminary Matter: Language of Proceedings
The Complaint was filed in English. The language of the Registration Agreement is Romanian. The Respondent submitted its response in English. On December 13, 2018 the Respondent sent an email communication to the Center with comments regarding the language of the proceeding, as he was not sure what language to further choose, Romanian or English, however he did not expressly choose Romanian nor contested English.
Under paragraph 11 of the Rules, the language of the proceeding is the language of the registration agreement of the disputed domain name, unless both parties agree otherwise, or the Panel determines otherwise based on one party’s request. A panel may decide that the proceeding should be conducted in another language than that the registration agreement when it is necessary due to the specific circumstances of the case, such as for example when the complainant does not understand the language of the registration agreement and it would therefore be unfairly disadvantaged by the fact that it must translate all the documents involved in such proceeding.
In the present proceeding, the Complainant does not understand Romanian and requested that English be the language of the proceeding. Also, the Respondent, having been notified of the present proceeding in both English and Romanian, submitted its Response and Amended Response in English with the annexes in both languages making no express request that the language of the proceeding be Romanian.
The Panel is familiar with both languages and therefore is able to understand the submissions made by the parties in either of these two languages.
Noting the aim of conducting the proceeding with due expedition, paragraph 10 of the UDRP Rules vests the Panel with authority to conduct the proceeding in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
For all the above, the Panel decides that English is the language of the proceeding. 6.2. Substantive Matters: A. Identical or Confusingly Similar
The Complainant holds rights in the BNP PARIBAS trademark.
The disputed domain name incorporates the Complainant’s trademark BNP PARIBAS in its entirety, with no addition or misspelling.
Further, it is well established in decisions under the UDRP that the generic or country code Top-Level Domain (“ccTLD” or “gTLD”) (e.g., “.ro”, ”.it”, “.net”, “.info”, “.com”, “.org”) may typically be disregarded for the purposes of consideration of identity or confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name is identical to the Complainant’s trademark BNP PARIBAS, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark BNP PARIBAS, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case 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 theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it 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
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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.
The Respondent claims it has rights in the disputed domain name since 2006 and that it registered it to document the restoration of his family property.
However, the website corresponding to the disputed domain name is inactive.
Although the date of the registration of the disputed domain name shall be addressed under section 6.2.C below, the evidence of use provided as Annex 3 to the Amended Response cannot be considered a legitimate noncommercial or fair use nor demonstrable preparations to use a domain name in connection with a bona fide offering of goods or services because, in twelve years, the website associated with the disputed domain name was not actively and genuinely used but, instead, during this time, according to its own statements, the Respondent contacted the Complainant several times to offer to cancel or to transfer the disputed domain name to the Complainant. In order to cancel a domain name is not necessary to have a third party’s consent, so this was not a serious proposal. Furthermore, in the documents referring to the transfer offers (provided as Annexes 4 and 5 to the Amended Response), the Respondent, although it has mentioned the transfer for free, the Respondent was further suggesting the transfer in exchange of an amount of money.
This is definitely not an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating Respondent’s rights or legitimate interests in the disputed domain name.
Further, there is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complainant holds trademark rights since 2000 and it is well known in its field of activity.
Here the Panel will briefly seek to clarify the date of registration of the disputed domain name.
The Complainant states that the disputed domain name was registered by the Respondent on November 11, 2018.
The Respondent claims that the disputed domain name was registered by him in June 2006 and was renewed in November 11, 2018. According to the evidence provided as Annex 1 to the Amended Response, the domain name was initially registered on June 13, 2006, this was documented with the invoice issued by the Registrar to the Respondent. Furthermore, Annex 1 to the Amended Response contains the Registrar’s emails of June 14, 2018 informing the Respondent that the disputed domain name shall expire on August 13, 2018, and further, on August 14, 2018, that the disputed domain name was scheduled for deletion on November 11, 2018 (“the Old Domain Name”).
On November 11, 2018, the Respondent registered the disputed domain name .
The information in the WhoIs record provides that the date of registration of the disputed domain name is November 11, 2018.
Information provided by the Registrar in the administrative check procedure indicates that the disputed domain name was registered on November 11, 2018.
According to the above, it results that the Old Domain Name expired on August 13, 2018 because it was not renewed in due time and that the disputed domain name was registered by the Respondent on November 11, 2018. Technically it was not a renewal, it was a new registration when the Respondent had the chance to choose from all the available domain names, including the Old Domain Name, a name that corresponded to his needs and met the legal criteria, including that of not infringing third parties rights.
According to its own admission, the Respondent was well aware of the Complainant and its trademark BNP PARIBAS at the time of registering the disputed domain name.
In its own Response, the Respondent alleges it offered several times the Old Domain Name to the Complainant in order to avoid confusion with the Complainant’s trademark and any potential legal issues. Further on, its action to register again the disputed domain name which is identical to the Complainant’s mark and Old Domain Name, which expired, contradicts its assertions and constitutes bad faith behavior.
The Old Domain Name was registered in 2006. The Complainant holds trademarks since 2000 and domain names since 1999. The Respondent, as presented himself, is a highly educated person, a scientific researcher with good knowledge in science and technology areas and thus it is unlikely that it was not aware of the Complainant when registering even the Old Domain Name six years earlier.
Accordingly, the Panel finds that the Respondent registered the disputed domain name (and the Old Domain Name) knowing and targeting the Complainant.
The explanation provided for choosing the name of the disputed domain name (and the Old Domain Name) is hard to be accepted by this Panel for several reasons. Firstly, the Complainant’s trademark BNP PARIBAS is distinctive and it is incorporated identically in the disputed domain name (and in the Old Domain Name). The Respondent claims that the disputed domain name (as well as the Old Domain Name) derives from the acronym of the English words “Butimanu Natural Park Property” together with the archaic Romanian word “aribas”, meaning “heir, successor” and coming from Oltenia region. Secondly, in the screen captures provided as Annex 3 to the Amended Response, the name of the property was presented as “Butimanu Natural Park – A Park Area Residence Inside Bucharest and Suburbs” and not “Butimanu Natural Park Property”. Thirdly the Romanian archaic word “aribas” has not been used in the current language for decades and it was found in a dictionary dated 1963. Such word appears to derive from the region of Oltenia, whereas the Respondent’s family property is in another region, respectively in Dambovita county, Muntenia region. It is difficult to understand a combination of an English words acronym which has no sense in Romanian language with an word older than a half of century and coming from another geographical area to that supposedly promoted on the website under the disputed domain name.
Based on the above, the Panel does not accept the Respondent’s explanations in choosing the disputed domain name (as well as the Old Domain Name).
At the time of filing the Complaint the disputed domain name resolves to an inactive website. The passive holding or non-use of a domain name does not prevent a finding of bad faith. See section3.3 of the WIPO Overview 3.0.
Annex 3 to Amended Response contains excerpts from the Wayback Machine online archive as evidence of use of the website associated to the Old Domain Name. The screen captures were all from July 31, 2008, and contain a short presentation in English of Butimanu property and pictures thereof. The Panel visited the other 5 captures, all having the same content. This again does not seem to be a good faith use, given all the other elements of this case.
During the suspension of the present proceeding for settlement purposes, in an email dated December 7, 2018, the Respondent said it agrees to transfer the disputed domain name to the Complainant in exchange of, inter alia, the equivalent of the fee refunded by the Center (of USD 1,000) to the Complainant for closing the UDRP proceeding before a decision was made, supposedly in order to cover the Respondent’s costs caused with the legal representation in this proceeding and for the registration of a new domain name. The disputed domain name (and the Old Domain Name) was registered with full knowledge of Complainant’s rights and the Respondent had the option to choose a name that did not include any third party’s rights or trademark. Thus, claiming that it was willing to transfer the disputed domain name free of charge and asking the money for its costs is definitely not a good faith proposal and use of the disputed domain name.
One example of bad faith registration and use is set forth in paragraph 4(b)(i) of the Policy and refers to circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of selling the domain name registration to the complainant who is the owner of the trademark, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
Even for the Old Domain Name the evidence provided by the Respondent himself proved that the offer to transfer the Old Domain name was made with the expectation of receiving a compensatory amount, even if this was mentioned only as a suggestion.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 7. 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.
Marilena Comanescu
Sole Panelist
Date: January 25, 2019
1 In 2018 the Romanian Registrar implemented the requirement of renewing the domain names annually. According to its procedures, the Registrar informed the Respondent several times to renew its domain name which was due to expiry on August 13, 2018, and scheduled for deletion on November 11, 2018. On November 10, 2018, the Respondent alleges he decided to transfer the domain name to another registrar and claims he paid the renewal fee in the same day, but due to money transfer delays, he was informed that the domain name has been deleted. On the same day, on November 11, 2018, the Respondent registered the disputed domain name with the Registrar. All these were provided as Annex 1 to the Amended Response;
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