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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BNP Paribas v. Simon Sheppard

Case No. D2007-0091

 

1. The Parties

The Complainant is BNP Paribas, Paris, France, represented by Cabinet Dreyfus & Associйs, France.

The Respondent is Simon Sheppard, Yorkshire, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <bnp.net> (the “Domain Name”) is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2007. On January 25, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On January 25, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 31, 2007. In accordance with the Rules, paragraph 5(a), the date due for Response was February 20, 2007. The Response was filed with the Center on February 20, 2007.

The Center appointed Anna Carabelli as sole panelist in this matter on March 2, 2007. 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.

On March 8, the Complainant submitted a Supplemental Filing in reply to the Response and on March 12, the Respondent, in his turn, submitted a Supplemental Filing in reply to the Complainant’s Supplemental Filing. The Center advised the Parties that according to the Rules, it is up to the Panel to determine whether or not to admit and consider the Supplemental Filing in rendering its decision.

The Panel considered these supplemental filings and decided that it would proceed to decide the case on the basis of the Complaint and the Response only. The Panel reached this conclusion for the following reasons:

(i) The Panel considers that the dispute can be adequately dealt with on the basis of the Complaint and the Response;

(ii) The Panel considers that additional submissions are inappropriate save in exceptional circumstances such as the existence of new pertinent facts that did not arise until after the submission of the Complaint or Response. Support for this view is given by previous UDRP decisions including Top Driver, Inc. v. Benefits Benefits, WIPO Case No. D2002-0972, and Radan Corporation v. Rabazzini Winery, WIPO Case No. D2003-0353. In the Panel’s view, exceptional circumstances do not exist in this case, particularly since the Panel considers that it is competent to decide the dispute on the basis of the Complaint and Response .

In consideration of the supplemental filings, the Panel requested an extension of time until March 23, 2007, for the submission of the decision to the Center.

 

4. Factual Background

The Complainant is one of the largest banking networks in the world.

In 1997, the Complainant launched “BNP NET”, which has become one of the major banking web services.

The Complainant is the owner of a number of BNP and BNP PARIBAS registered trademarks protected around the world, including in the U.K., for banking and financial products and services, which fact is acknowledged by the Respondent.

In particular, the Complainant is the owner of the following trademark registrations:

- French figurative trademark BNP + logo n° 1376258, filed on October 24, 1986 for services entering class 36;

- International figurative trademark BNP + logo n° 514814, filed on July 28, 1987 in class 36 designating the following countries: Austria, Azerbaijan, Bosnia and Herzegovina, Bulgaria, Benelux, Belarus, Switzerland, Czech Republic, Algeria, Egypt, Spain, Croatia, Italia, Kazakhstan, Lithuania, Latvia, Morocco, Monaco, the former Yugoslav Republic of Macedonia, Portugal, Romania, Russia, Slovenia, Slovakia, Tunisia, Ukraine, Uzbekistan, Viet Nam, and former Yugoslavia;

- UK word trademark BNP n° 1342476, filed on April 25, 1988 and registered on November 15, 1991, duly renewed, for class 36;

- Community word trademark BNP n° 000089649, filed on April 1, 1996 and registered on October 14, 1999, duly renewed, for classes 35, 36, and 38;

- Community figurative trademark BNP + logo n° 001233394, filed on July 7, 1999 and registered on August 16, 2000 for classes 35, 36, and 38;

- French figurative trademarks BNP + logo n° 3006375, n° 3006377 and n° 3006380, filed on February 9, 2000 for classes 9 and 36.

In 2003, the Respondent registered the Domain Name presently redirecting to a page (“bnpfun” page) of the Respondent’s website “www.heretical.com” containing articles, pictures and other printed materials of anti-Semitic and racist content and attacking the current leadership of the British National Party.

In March 2005, the Complainant sent a first cease and desist letter to the Respondent asking him to transfer the Domain Name amicably.

The Respondent replied rejecting the Complainant’s claim.

In July 2006, the Complainant re-sent its cease and desist letter to the Respondent.

In October 2006, the Respondent posted on its website “www.heretical.com” a link to the Complainant’s website “www.bnpparisbas.com”.

The Respondent has been a member of the British National Party until 1999.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- it is one of the largest international banking networks;

- nowadays, it operates in over 85 countries, and has 138,000 employees including 51,600 in Europe - among whom 20,400 in Italy, 56,100 in France and in the Overseas Departments, 15,100 in North America and 5,200 in Asia;

- it is the owner of numerous registered trademarks BNP and BNP PARIBAS protected around the world and of the domain name <bnp.info> registered in 2001;

- in 1997, the Complainant launched “BNP NET” as one of the first banking web services around the world. In July 2000, 300,000 customers had subscribed to said BNP NET on line service;

- in March 2005, the Complainant discovered that the Respondent had registered the Domain Name which is redirecting Internet users to “www.heretical.com”, a negationist and revisionist website proposing articles, books and pictures related to racial hatred;

- the domain name <heretical.com> belongs to the Respondent;

- before introducing these proceedings, the Complainant sent two warning letters (on April 15, 2005 and on July 28, 2006, respectively) to the Respondent;

- the Respondent replied only to the first one, indicating that it was a member of the British National Party (BNP) and that subsequent to certain disagreements he had had with the current leadership of the British National Party, he had started using the Domain Name to redirect Internet users to the Respondent’s website “www.heretical.com”;

- in October 2006, the Respondent introduced on its website “heretical.com” a link directing users to one of the Complainant’s domain names, <bnpparisbas.com>;

- the Domain Name is confusingly similar to the Complainant’s previous trademarks and domain name, and implies a high risk of confusion, as a consumer may think that this domain name directly refers to the Complainant;

- the Respondent has no rights or legitimate interest in the Domain Name since the Respondent: (i) is not affiliated with the Complainant which has never authorized the Respondent to use and register its trademarks, or to seek the registration of any domain name incorporating said trademark; (ii) was no longer a member of the British National Party at the time of the registration of the Domain name; (iii) was not authorized by the British National Party to register the Domain Name;

- the Respondent is not making any legitimate non-commercial or fair use of the Domain Name, as it leads Internet users to “www.heretical.com”, a negationist and revisionist website proposing articles, books and pictures related to racial hatred;

- the Domain Name has been registered in bad faith since the Respondent obviously knew or must have known of the Complainant at the time he registered the Domain Name;

- the Domain Name is being used in bad faith since the Respondent is redirecting it to his website which is a negationist and anti-Semitic website;

- in October 2006, the Respondent posted on his website “www.heretical.com” a link to one of the Complainant’s domain names, <bnpparisbas.com>, and this shows that the Respondent was aware of the Complainant’s rights. In doing so the Respondent was trying to deceive, mislead or confuse the public into believing that there is a connection or affiliation between the Complainant and the Respondent’s website or to confuse the public into believing that the materials posted on the Respondent’s website are endorsed or sponsored by the Complainant;

- consequently, the use of the Domain Name made by the Respondent is tarnishing the Complainant’s reputation with regard to its content.

Based on the above, the Complainant requests the Domain Name be transferred to the Complainant.

B. Respondent

The Respondent contends that:

- although the Respondent does not dispute that the Complainant has trademark rights in the combination of letters “BNP,” usually associated with another device or logo, in the context of banking and finance, especially in France, it is a fact that the letters “BNP” can denote a number of different organisations;

- in particular, in Great Britain, the initials “BNP” are firmly and almost invariably associated in the public mind with the British National Party which has been using the acronym “BNP” since 1940’s;

- the Respondent is British, resides in Britain, and has been active in supporting British nationalist politics and ideals since 1996 and is using the disputed domain in its British context;

- since 1998, the Respondent has been acting as a web hosting provider specialising in providing Internet services to nationalist and patriotic groups, and an important part of his role is obtaining suitable domain names for his customers and prospective customers;

- in respect to the Domain Name, the Respondent has a legitimate interest in the Domain Name to, amongst others: (i) safeguard the registration of the Domain Name for future use by the British National Party; (ii) provide an alternative web portal for BNP; (iii) point to a site for British nationalists generally (as in “network of like-minded individuals”); (iv) point to a page of criticism of Mr. Griffin’s leadership of the British National Party by existing members of the BNP, individuals who have been denied membership of the BNP on Mr Griffin’s instructions, and individuals who wish to be members of the BNP but have been isolated from it by Mr. Griffin’s changes in fundamental nationalist policies;

- due to disagreements he had with the present Chairman of the British National Party, the Respondent is presently using the Domain Name for providing an information service for “confused” British National Party’s members and for criticism to Mr. Griffin policy;

- the Domain Name has not been registered nor is being used in bad faith;

- the registration of the Domain Name was solely in respect of the letters “BNP”, the latter being firmly associated with the British National Party and having been consistently used to redirect visitors to non-commercial materials of interest to British nationalists, as the history of the Domain Name shows;

- the Domain Name was originally registered by Mr. Rushton, an activist of the British National Party, in the late 1990s, for the purpose of developing an Internet presence for British National Party’s activists and to promote the Party itself. It had been used to identify the Party’s website until Mr. Rushton was expelled from the British National Party. Then, the Domain Name was “recovered” by the Respondent in 2003 and used to redirect visitors firstly to the website of Mr. John Tyndall, another activist of the British National Party, and later to the Respondent’s website “www.heretical.com”;

- the link to “BNP Paribas” was provided as a courtesy to the Complainant as a gesture of goodwill, following the Complainant’s cease and desist letters (which in the Respondent’s view are unreasonable) for those visitors who had accessed the Respondent’s website inadvertently. However, if the Complainant had communicated with the Respondent expressing its objection to the link, the link would certainly have been removed. In any case, such link should directly suggest that the page is not hosted by the Complainant;

- the Respondent is not intentionally diverting the Complainant’s customers, seeking to tarnish the Complainant, or trying to pass itself off as the Complainant;

- the material on the Respondent’s website is so unrelated to financial matters that a confusion between the Respondent’s website and the Complainant’s is extremely unlikely. However, for the avoidance of the slightest doubt, the Respondent has changed the first occurrence of “BNP” on that page to “British National Party”;

- the material contained on the Respondent’s website (defined by the Complainant’s as “negationist and revisionist” and “offensive”) relates exclusively to the leadership of the BNP by Nick Griffin, and is parody in the very long-established tradition of political criticism;

- the Respondent is making legitimate non-commercial use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark(s) or service mark(s);

- the Respondent does not seek to offer banking or financial services, which would entail a risk of confusion with the Complainant, or to interfere with the business of the Complainant;

- the Respondent has not acquired the Domain Name to: (i) sell or rent it to the Complainant, or (ii) prevent the Complainant from reflecting its mark in the Domain Name, or (iii) disrupt a competitor’s business.

Based on the above, the Respondent requests that the Complaint is denied and raises the issue of the Complainant’s conduct being qualified as “reverse domain name hijacking”.

 

6. Discussion and Findings

General Principles under the Policy and the Rules

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proof in showing:

(1) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in the letters BNP, that are also acknowledged by the Respondent.

The Domain Name entirely incorporates Complainant’s trademark BNP and is therefore identical to the Complainant’s trademark.

The Panel finds therefore that the Complainant has met the requirement under paragraph 4(a)(i) of the Policy.

B. Bad Faith

The Panel will address first the issue of registration and use in bad faith since, in the Panel’s view, it is dispositive of the case. In this connection, it has to be taken in due consideration that the scope of the Policy is limited to cases of abusive registration of a domain name. Therefore, a domain name that was registered for reasons unrelated to a third party’s trademark has not been registered in bad faith.

As a matter of fact, the Policy (in paragraph 4(b)) provides four examples of circumstances that constitute evidence of registration and use in bad faith: (1) registration with the intent to resell the domain name to the complainant, or a competitor of the complainant, at a profit; (2) registration with the intent to prevent the complainant from reflecting its trademark in a corresponding domain name, if the respondent has engaged in a pattern of such conduct; (3) registration with the intent to disrupt a competitor’s business; and (4) use of a domain name that intentionally attempts to attract Internet users for commercial gain by creating a likelihood of confusion with the complainant’s trademark. While it is true that the fourth example on its face refers only to use, not registration, the panel still must find that the domain name was registered in bad faith in order for the complainant to prevail. The fourth example therefore merely provides that the nature of the respondent’s use of a domain name is relevant evidence that a panel should consider in assessing the respondent’s intent at the time the domain name was registered.

The examples of bad faith set forth in the Policy have at least one element in common: all of them effectively require that the respondent, at the time the domain name was registered, directly or indirectly harbored an intent that related in some manner to the complainant or its trademark (see Fabricas Agrupadas de Munecas de Omil S.A. v. Palameta, WIPO Case No. D2000-1689).

Based on the circumstances of this case, the Panel considers that the Respondent did not select the Domain Name because it corresponded to the Complainant’s trademark.

The Panel has made a search on the Internet using Google and Yahoo! engines and received confirmation that the letters BNP, while certainly identifying the Complainant, are also firmly associated with the British National Party of which the Respondent was a member until his expulsion in 1999.

The above facts, which are not contested by the Complainant, support the credibility and plausibility of the Respondent’s claimed motivation, also considering the following additional circumstances:

- at present, the Respondent still appears to be active in supporting British nationalist and far-right politics and ideals;

- the Domain Name is redirecting to the “BNP fun” page of the Respondent’s website “www.heretical.com”, containing articles, pictures and other printed materials having anti-Semitic and racist contents and in general materials on far-right related issues, as well as attacking the current leadership of the British National Party. The statement by Mr. Rushton attached to the Response as Annex 3, which has not been contested by the Complainant, indicates that before that, the Domain Name was used by the Respondent as re-direction to the website of the former British National Party Chairman, John Tyndall;

- as a matter of fact, the Respondent has changed the first occurrence of “BNP” on that page to “British National Party”, and also the link to BNP Paribas now appears to have been changed into “THIS ISN’T BNP Parsbas”, which fact seems to lend some support to the above-mentioned other factors.

On the other hand, there is no evidence that the Respondent has sought to pass himself off as having any connection or association with the Complainant. In addition, there is no evidence before the Panel that the Respondent has registered the Domain Name with the intent to (1) resell it to the Complainant, or a competitor of the complainant, at a profit; or (2) with the intent to prevent the Complainant from reflecting its trademark in a corresponding Domain Name.

Based on the above, within the limited scope of the UDRP proceedings, the Panel has no choice but to conclude that the Complainant has failed to satisfy its burden of proof on the bad faith registration element.

7. Reverse Domain Name Hijacking

Finally, the Respondent wonders somewhat rhetorically whether the Complaint was brought in a bad faith attempt at reverse domain name hijacking. Under all the circumstances of this case, the Panel declines to enter such a finding.

8. Decision

For all the foregoing reasons, the Complaint is denied.


Anna Carabelli
Sole Panelist

Dated: March 23, 2007

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2007/d2007-0091.html

 

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