On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No.	104755
Time of Filing	2022-07-29 08:54:14
Disputed domain name	BNPPARIBASAM-AU.COM

Case Administrator
Name	Iveta Špiclová

Complainant
Organization	BNP PARIBAS
Authorized Representative
Organization	NAMESHIELD S.A.S.

Respondent
Name	Max Arnolt

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

Identification of rights
The Complainant is owner of the following trademarks: - international trademark (word) BNP PARIBAS no. 728598, registered since February 23, 2000, in classes 35, 36, 38; - international trademark (device) BNP PARIBAS no. 745220, registered since September 18, 2000, in classes 9, 35, 36, 38; - international trademark (word) BNP PARIBAS no. 876031, registered since November 24, 2005, in classes 9, 35, 36, 38. The Complainant is also the owner of the domain name <bnpparibas.com>, registered since September 2, 1999, and used as its main website. Finally, the Complainant conducts its business under the company / trade name BNP PARIBAS (SA). The Complainant’s above-mentioned rights are hereinafter collectively referred to as the BNP PARIBAS Trademark.

Identification of rights

The Complainant is owner of the following trademarks:

- international trademark (word) BNP PARIBAS no. 728598, registered since February 23, 2000, in classes 35, 36, 38;

- international trademark (device) BNP PARIBAS no. 745220, registered since September 18, 2000, in classes 9, 35, 36, 38;

- international trademark (word) BNP PARIBAS no. 876031, registered since November 24, 2005, in classes 9, 35, 36, 38.

The Complainant is also the owner of the domain name <bnpparibas.com>, registered since September 2, 1999, and used as its main website.

Finally, the Complainant conducts its business under the company / trade name BNP PARIBAS (SA).

The Complainant’s above-mentioned rights are hereinafter collectively referred to as the BNP PARIBAS Trademark.

Factual Background
The Complainant is an international banking group with a presence in 65 countries, and one of the largest banks in the world. With nearly 190 000 employees and €46.2 billion in revenues, the Complainant stands as a leading bank in the Eurozone and a prominent international banking institution. BNP PARIBAS ASSET MANAGEMENT is the investment management branch of the Complainant, managing 522 billion EUR in assets. The disputed domain name was registered with privacy or proxy service on January 28, 2022, well after the registration of the Complainant's BNP PARIBAS Trademark, by an individual residing in the UK. The disputed domain name resolves to an inactive website and has been used in a phishing scheme for sending fraudulent e-mails impersonating the Complainant and its employees. The facts asserted by the Complainant are not contested by the Respondent.

Factual Background

The Complainant is an international banking group with a presence in 65 countries, and one of the largest banks in the world. With nearly 190 000 employees and €46.2 billion in revenues, the Complainant stands as a leading bank in the Eurozone and a prominent international banking institution. BNP PARIBAS ASSET MANAGEMENT is the investment management branch of the Complainant, managing 522 billion EUR in assets.

The disputed domain name was registered with privacy or proxy service on January 28, 2022, well after the registration of the Complainant's BNP PARIBAS Trademark, by an individual residing in the UK.

The disputed domain name resolves to an inactive website and has been used in a phishing scheme for sending fraudulent e-mails impersonating the Complainant and its employees.

The facts asserted by the Complainant are not contested by the Respondent.


PARTIES' CONTENTIONS: COMPLAINANT: The Complainant contends that the disputed domain name is confusingly similar to its trademark, since it incorporates in its entirety the Complainant’s registered and well-known BNP PARIBAS Trademark. The mere addition of the letters "AM", standing for asset management, and "AU", standing for Australia, does not prevent a finding of confusing similarity to the Complainant's trademark. The Complainant contends that the Respondent has nothing to do with the Complainant, nor has been licensed or authorised to register or use the disputed domain name. The disputed domain name does not correspond to the Respondent's name, nor is this latter commonly known by the disputed domain name or owns any corresponding registered trademarks. The disputed domain name resolves to an inactive website and the Respondent has used it in a phishing scheme to pass himself off as one of the Complainant’s employees, obtain personal information and receive undue payment. Using the domain name in this manner is neither a bona fide offering of goods or services, nor a non-commercial or fair use under the Policy. Finally, the Complainant contends that, given the distinctiveness and reputation of the BNP PARIBAS Trademark, it is unlikely that the Respondent had no knowledge of the Complainant's mark when he had registered the disputed domain name confusingly similar to such mark. To the contrary, the Respondent has used the disputed domain to send phishing e-mails. Therefore, it is clear that the disputed domain name has been registered and used with bad faith intention. The Complainant, therefore, requests the transfer of the disputed domain name. RESPONDENT: No administratively compliant Response has been filed.

PARTIES' CONTENTIONS:

COMPLAINANT:

The Complainant contends that the disputed domain name is confusingly similar to its trademark, since it incorporates in its entirety the Complainant’s registered and well-known BNP PARIBAS Trademark. The mere addition of the letters "AM", standing for asset management, and "AU", standing for Australia, does not prevent a finding of confusing similarity to the Complainant's trademark.

The Complainant contends that the Respondent has nothing to do with the Complainant, nor has been licensed or authorised to register or use the disputed domain name. The disputed domain name does not correspond to the Respondent's name, nor is this latter commonly known by the disputed domain name or owns any corresponding registered trademarks. The disputed domain name resolves to an inactive website and the Respondent has used it in a phishing scheme to pass himself off as one of the Complainant’s employees, obtain personal information and receive undue payment. Using the domain name in this manner is neither a bona fide offering of goods or services, nor a non-commercial or fair use under the Policy.

Finally, the Complainant contends that, given the distinctiveness and reputation of the BNP PARIBAS Trademark, it is unlikely that the Respondent had no knowledge of the Complainant's mark when he had registered the disputed domain name confusingly similar to such mark. To the contrary, the Respondent has used the disputed domain to send phishing e-mails. Therefore, it is clear that the disputed domain name has been registered and used with bad faith intention.

The Complainant, therefore, requests the transfer of the disputed domain name.

RESPONDENT:

No administratively compliant Response has been filed.

Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

No rights or legitimate interests
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).

Bad faith
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).

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

Principal Reasons for the Decision
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to succeed in the administrative proceeding: (i) the disputed domain name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith. I. THE COMPLAINANT’S RIGHTS AND CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAME TO THE COMPLAINANT'S MARK The Complainant has established that it has rights in the BNP PARIBAS Trademark since 2000. In assessing identity or confusing similarity, the Panel finds that the disputed domain name is confusingly similar to the BNP PARIBAS Trademark, because it incorporates the entirety of such mark and differs from it by merely adding the letters "AM", a hyphen, the letters "AU", and the TLD .COM. In UDRP cases where the relevant trademark is recognisable within the disputed domain name, panels agree that the addition of other letters and terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see paragraph 1.7 of WIPO Overview 3.0). UDRP panels also agree that the TLD is usually to be ignored for the purpose of determination of identity or confusing similarity between the disputed domain name and the Complainant’s trademark, as it is a technical requirement of the registration (see paragraph 1.11.1 of WIPO Overview 3.0). Hence, the Panel finds that the Complainant has proven the first element of the paragraph 4(a) of the Policy and the disputed domain name is confusingly similar to the Complainant's mark. II. THE RESPONDENT’S LACK OF RIGHTS OR LEGITIMATE INTERESTS TO THE DISPUTED DOMAIN NAME It is a consensus view of UDRP panels that a complainant shall establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to that respondent (see paragraph 2.1 of the WIPO Overview 3.0: "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"). The Complainant has no relationship with the Respondent whatsoever. The Respondent has never received any approval of the Complainant, expressed or implied, to use the BNP PARIBAS Trademark or to register the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name or acquired any trademark or service mark rights in a name corresponding to the disputed domain name. The disputed domain name was registered with privacy or proxy service on January 28, 2022. Upon CAC's request for Registrar verification, the Registrar has identified the registrant in an individual residing in the UK. Although the disputed domain name does not resolve to any active website, the Complainant has shown that the Respondent had used the disputed domain name to send e-mails impersonating the Complainant and its employees to obtain sensitive or confidential personal information and/or to solicit payment. Therefore, the Panel is unconvinced that, before any notice of the dispute, the Respondent used or prepared to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the BNP PARIBAS Trademark. While the Complainant has established its prima facie case, the Respondent has not submitted a Response to the Complaint and, thus, has failed to invoke any of the circumstances, which could demonstrate any rights or legitimate interests to the disputed domain name. Therefore, the Panel is satisfied that the Complainant has met the second requirement of the paragraph 4(a) of the Policy and finds that the Respondent lacks rights or legitimate interests to the disputed domain name. III. REGISTRATION AND USE OF THE DISPUTED DOMAIN NAME IN BAD FAITH The disputed domain name has been registered and is being used in bad faith for the following cumulative reasons. The Respondent registered the disputed domain name and concealed his identity by using privacy or proxy service. Panels agree that, although the use of privacy or proxy service is not in and of itself an indication of bad faith, the circumstances and the manner in which such service is used may however impact a panel’s assessment of bad faith (see paragraph 3.6 of WIPO Overview 3.0). The Respondent registered the disputed domain name, incorporating in its entirety of the Complainant's prior mark. The addition of the letters "AM" (standing for asset management) and "AU" (standing for Australia), a hyphen, and the TLD .COM (a technical requirement of the registration) is insufficient to escape the finding of confusing similarity between the disputed domain name and the Complainant’s mark. Given the distinctiveness of the Complainant's prior mark, confirmed by several UDRP decisions (see WIPO Case No. D2017-2167, BNP Paribas v. Ronan Laster), the Respondent's choice to add non distinctive letters to the BNP PARIBAS Trademark could not have been for a mere chance without actual knowledge of the Complainant's rights in such mark and the intention to exploit its reputation by diverting traffic away from the Complainant’s website. Indeed, the Complainant has shown that the Respondent used the disputed domain name for sending fraudulent e-mails. Therefore, the Panel finds that the Respondent, by registering and using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the BNP PARIBAS Trademark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location (paragraph 4(b)(iv) of the Policy). The Complainant has discharged the burden of proof to show that the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). The disputed domain name is to be transferred to the Complainant.

Principal Reasons for the Decision

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to succeed in the administrative proceeding:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.

I. THE COMPLAINANT’S RIGHTS AND CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAME TO THE COMPLAINANT'S MARK

The Complainant has established that it has rights in the BNP PARIBAS Trademark since 2000.

In assessing identity or confusing similarity, the Panel finds that the disputed domain name is confusingly similar to the BNP PARIBAS Trademark, because it incorporates the entirety of such mark and differs from it by merely adding the letters "AM", a hyphen, the letters "AU", and the TLD .COM.

In UDRP cases where the relevant trademark is recognisable within the disputed domain name, panels agree that the addition of other letters and terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see paragraph 1.7 of WIPO Overview 3.0).

UDRP panels also agree that the TLD is usually to be ignored for the purpose of determination of identity or confusing similarity between the disputed domain name and the Complainant’s trademark, as it is a technical requirement of the registration (see paragraph 1.11.1 of WIPO Overview 3.0).

Hence, the Panel finds that the Complainant has proven the first element of the paragraph 4(a) of the Policy and the disputed domain name is confusingly similar to the Complainant's mark.

II. THE RESPONDENT’S LACK OF RIGHTS OR LEGITIMATE INTERESTS TO THE DISPUTED DOMAIN NAME

It is a consensus view of UDRP panels that a complainant shall establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to that respondent (see paragraph 2.1 of the WIPO Overview 3.0: "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").

The Complainant has no relationship with the Respondent whatsoever. The Respondent has never received any approval of the Complainant, expressed or implied, to use the BNP PARIBAS Trademark or to register the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name or acquired any trademark or service mark rights in a name corresponding to the disputed domain name.

The disputed domain name was registered with privacy or proxy service on January 28, 2022. Upon CAC's request for Registrar verification, the Registrar has identified the registrant in an individual residing in the UK.

Although the disputed domain name does not resolve to any active website, the Complainant has shown that the Respondent had used the disputed domain name to send e-mails impersonating the Complainant and its employees to obtain sensitive or confidential personal information and/or to solicit payment.

Therefore, the Panel is unconvinced that, before any notice of the dispute, the Respondent used or prepared to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the BNP PARIBAS Trademark.

While the Complainant has established its prima facie case, the Respondent has not submitted a Response to the Complaint and, thus, has failed to invoke any of the circumstances, which could demonstrate any rights or legitimate interests to the disputed domain name.

Therefore, the Panel is satisfied that the Complainant has met the second requirement of the paragraph 4(a) of the Policy and finds that the Respondent lacks rights or legitimate interests to the disputed domain name.

III. REGISTRATION AND USE OF THE DISPUTED DOMAIN NAME IN BAD FAITH

The disputed domain name has been registered and is being used in bad faith for the following cumulative reasons.

The Respondent registered the disputed domain name and concealed his identity by using privacy or proxy service.

Panels agree that, although the use of privacy or proxy service is not in and of itself an indication of bad faith, the circumstances and the manner in which such service is used may however impact a panel’s assessment of bad faith (see paragraph 3.6 of WIPO Overview 3.0).

The Respondent registered the disputed domain name, incorporating in its entirety of the Complainant's prior mark. The addition of the letters "AM" (standing for asset management) and "AU" (standing for Australia), a hyphen, and the TLD .COM (a technical requirement of the registration) is insufficient to escape the finding of confusing similarity between the disputed domain name and the Complainant’s mark.

Given the distinctiveness of the Complainant's prior mark, confirmed by several UDRP decisions (see WIPO Case No. D2017-2167, BNP Paribas v. Ronan Laster), the Respondent's choice to add non distinctive letters to the BNP PARIBAS Trademark could not have been for a mere chance without actual knowledge of the Complainant's rights in such mark and the intention to exploit its reputation by diverting traffic away from the Complainant’s website.

Indeed, the Complainant has shown that the Respondent used the disputed domain name for sending fraudulent e-mails.

Therefore, the Panel finds that the Respondent, by registering and using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the BNP PARIBAS Trademark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location (paragraph 4(b)(iv) of the Policy).

The Complainant has discharged the burden of proof to show that the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

The disputed domain name is to be transferred to the Complainant.

Decision
For all the reasons stated above, the Complaint is	Accepted
and the disputed domain name(s) is (are) to be
BNPPARIBASAM-AU.COM	Transferred to BNP PARIBAS

Panellists
Name	Avv. Ivett Paulovics
Date of Panel Decision	2022-09-05

Publication of the Decision
Publish the Decision