BNP Paribas v David Craig

WIPO Case No. D2022-3333

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

BNP Paribas v. David Craig

Case No. D2022-3333

1. The Parties

The Complainant is BNP Paribas, France, represented by Nameshield, France.

The Respondent is David Craig, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <bnp-paribasam.com> (the “Disputed Domain Name”) is registered with Nicenic

International Group Co., Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2022. On September 9, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 10, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Domain Privacy, Hong Kong, China) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 13, 2022, 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 September 14, 2022.

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 September 23, 2022. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2022.

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The Center appointed Edward C. Chiasson K.C., as the sole panelist in this matter on October 26, 2022.
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.

BNP Paribas S.A is the parent company of the Complainant. It is an international banking group with a presence in 65 countries and is one of the largest banks in the world. With 190,000 employees and EUR 46.2 billion in revenues, it stands as a leading bank in the Eurozone and a prominent international banking institution.

The Complainant owns numerous trademarks BNP PARIBA, for examples:

- the International trademark BNP PARIBAS No. 728598 registered since February 23, 2000;
- the International trademark BNP PARIBAS No. 745220 registered since September 18, 2000;
- the International trademark BNP PARIBAS No. 876031 registered since November 24, 2005.

The Complainant is also the owner of a large portfolio of domain names incorporating its BNP PARIBAS trademarks, for example <bnpparibas.com>, registered since September 2, 1999.

The Disputed Domain Name, <bnp-paribasam.com>, was registered on August 4, 2022. It redirects to an inactive page and has been used in a phishing scheme in order to obtain personal information and payments.

5. Parties’ Contentions

A. Complainant

Based on the following facts and authorities, the Complainant asserts that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

The Disputed Domain Name contains the Complainant’s registered trademark BNP PARIBAS in its entirety. It only differs from the Complainant’s trademark by the addition of the term “am” (for “asset management”, in reference to BNP Paribas Asset Management).

It 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”. (Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888.)

The addition of the generic Top-Level-Domain (“gTLD”) “.com” is not sufficient to escape a finding that the requirement and as such is disregarded under the first element confusing similarity test”.)
Disputed Domain Name is confusingly similar to the Complainant's trademark and does not change the
overall impression of the designation as connected to its trademark. WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section1.11.1, “the applicable

Prior UDRP panels have established that the trademark BNP PARIBAS is well known (for example, BNP Paribas v. Ronan Laster, WIPO Case No. D2017-2167 (“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.”).

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Based on the following facts and authorities, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

A Complainant is required to establish a prima facie case that a respondent lacks rights or legitimate interest in a disputed domain name. Once a prima facie case is established, the 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. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.)

The Respondent is not known by the Disputed Domain Name in the WhoIs database and has not acquired trademarks rights related to the Disputed Domain Name. Past UDRP panels have held that a respondent was not commonly known by a disputed domain name if the WhoIs information was not similar to a disputed

domain name.

The Respondent is neither affiliated with the Complainant nor authorized by the Complainant in any way to use the trademark BNP PARIBAS. The Complainant does not carry out any activity for or have any business with the Respondent.

The Disputed Domain Name resolves to an inactive page and it has been used in a phishing scheme. The
Respondent has used the Disputed Domain Name to pass himself off as one of the Complainant’s
employees, in order to obtain personal information and receive undue payments. Using the Disputed
Domain Name in this manner is neither a bona fide offering of goods or services under Policy, paragraph
4(c)(i), nor a noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii).

Based on the following facts and authorities, the Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith.

As noted, prior UDRP panels have established that the trademark BNP PARIBAS is well known. 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 the Complainant’s rights in the trademark, which evidences bad faith.

Registration of the Disputed Domain Name cannot be coincidental. The association of the acronym “am”, for
“asset management”, in reference to the Complainant’s subsidiary and activities illustrates this.

The Respondent has used the Disputed Domain Name to attempt to pass off as one of the Complainant’s employees in order to obtain personal information and to receive undue payments. It is well established that using a domain name for purposes of phishing or other fraudulent activity constitutes solid evidence of bad faith. (Accor v. SANGHO HEO / Contact Privacy Inc, WIPO Case No. D2014-1471, “The un-opposed allegation of phishing, and the evidence submitted in support of phishing, combined with the likelihood of confusion, is sufficient evidence of bad faith”.)

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has provided clear evidence that it has rights in the trademark BNP PARIBAS and that the trademark is well known.

The Disputed Domain Name, <bnp-paribasam.com>, merely adds a hyphen, the term “am” and the gTLD “.com” to the Complainant’s mark. The addition of the hyphen is irrelevant. As the Complainant notes “am” connotes “asset management”, which is part of the Complainant’s business. It does not prevent a finding of confusing similarity. (Sections 1.7 and 1.8 of the WIPO Overview 3.0). The gTLD is irrelevant for purposes of the first element. (Section 1.11.1 of the WIPO Overview 3.0).

The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights. The Panel concludes that the Complainant has established the requirements of Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant did not authorize the Respondent to use its name and trademark. The Respondent has not been identified with and is not commonly known by the Complainant’s name and mark. The Respondent has advanced no explanation for using the Complainant’s name and mark or showin any legitimate interests or rights in the Complainant’s name and mark.

The Disputed Domain Name was registered and used long after the Complainant registered its trademark.

The Respondent has used the Disputed Domain Name to attempt to pass off as one of the Complainant’s employees in order to obtain personal information and to receive undue payments. This is not a bona fide offering of goods or services or a noncommercial legitimate or fair use that would give rise to rights or

legitimate interests in a disputed domain name.

The inclusion of “am” in the composition of the Disputed Domaine Name carries a risk of implied affiliation because the Complainant’s related company is BNP Paribas Asset Management. This does not constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant.

(Section 2.5.1 of the WIPO Overview 3.0).

The Panel finds that the Complainant has made a prima facie case showing that the Respondent does not
have rights to or legitimate interests in the Disputed Domain Name, which the Respondent has not rebutted.

The Panel concludes that the Complainant has established the requirements of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The trademark BNP PARIBAS has been recognized as well known and the Disputed Domain Name was registered and used long after the Complainant registered its trademark.

The Respondent added a hyphen and “am” to the Complainant’s trademark in a misguided attempt to avoid a finding that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely- known trademark by an unaffiliated entity can by itself create a presumption of bad faith. (See section 3.1.4 of the WIPO Overview 3.0).

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The Respondent has used the Disputed Domain Name to phish for personal information and to improperly
attempt to receive payments.

This is bad faith.

The Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith. The

Panel concludes that the Complainant has established the requirements of 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, <bnp-paribasam.com>, be transferred to the Complainant.

/Edward Chiasson K.C./
Edward Chiasson K.C.
Sole Panelist
Date: November 6, 2022