Decision for dispute CAC-UDRP-104192

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

The Complainant owns several trademark registrations for “BNP PARIBAS”, including the international trademark n° 728598 “BNP Paribas” (word), registered since 23 February 2000 for various services in classes 35, 36, and 38.

The Complainant also owns various domain names incorporating the term “bnpparibas”, including the domain name <bnpparibas.com> which was registered on 2 September 1999.

The disputed domain name <asiabnpparlbas.com> was registered on 24 May 2021, i.e., the Complainant’s trademark registration cited above predates the registration of the disputed domain name.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant BNP PARIBAS S.A. is an international banking group with a presence in 68 countries, and one of the largest banks in the world. With more than 193,000 employees and €7.1 billion in annual net profit, the Complainant stands as a leading bank in the Eurozone and a prominent international banking institution.

The official email addresses used by the Complainant’s subsidiary in Asia are of the form “...@asia.bnpparibas.com”.

The 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. The Respondent is not affiliated with him nor authorized by the Complainant 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.

The Respondent has used the disputed domain name to pass itself off as an existing employee of Complainant’s subsidiary in Asia: On 24 May 2021 the disputed domain name was used to send an email in the name of said employee, using an email address of the form “firstname.lastname@ asiabnpparlbas.com”. Said employee’s official email address is “firstname.lastname@ asia.bnpparibas.com”, with the same combination of “firstname.lastname”. The body of the email was seemingly written by said employee.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

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).

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).

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).

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.

The disputed domain name is confusingly similar to the trademark “BNP PARIBAS”. The misspelling in the domain name (the substitution of the letter “I” by “L”) is not sufficient to escape the finding that the domain name is confusingly similar to the trademark “BNP PARIBAS”. The addition of the geographical term “ASIA” does not change the overall impression of the designation as being connected to the Complainant’s trademark “BNP PARIBAS” and does not prevent the likelihood of confusion between the disputed domain name and the Complainant’s trademark (cf. CAC Case No. 102470, ARCELORMITTAL (SA) v. acero < ARCELORMTALMEXICO.COM> for a similar constellation). This finding is further supported by the fact that the disputed domain name is closely related to the official email addresses used by the Complainant’s subsidiary in Asia having the form “...@asia.bnpparibas.com”.

The Panel further finds that the Complainant successfully submitted prima facie evidence that the Respondent has neither made any use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is making a legitimate non-commercial or fair use of the disputed domain name, nor is commonly known under the disputed domain name. This prima facie evidence was not challenged by Respondent.

Registration and use of the disputed domain name for scam email communication, i.e. for a fraudulent misrepresentation of the Respondent as one of the Complainant’s employees, is an evident case of registration and use of the domain name in bad faith for the purposes of paragraphs 4(a)(iii) of the Policy (cf. CAC Case No. 100909 - ArcelorMittal S.A. v. Chugh Davinder - <ARCELORMTTAL.COM>).