BODIS

UDRP vs. URS : First known case against a dot .ICU #domain failed on a technicality!

URS decision

For many trademark holders and brand owners, the Uniform Rapid Suspension System (URS) is an alternative, attractive option to the UDRP.

How does the URS differ from the well-known UDRP?

IP attorney, Gerald L. Levine, has written an article on that.

In a URS case against a dot .ICU domain, the Complainant delivered every point, but lost the case on a technicality: the web site on that domain changed its content.

According to the URS decision against the domain bnp-paribas.icu, this is what determined the outcome:

“The evidence submitted by the Complainant show a picture showing a parked page with pay-per-click links which appears to target the Complainant. However, the website under the disputed domain name does not resolve to a parked page. As noted by other Panels the URS process is narrow requiring a high level of proof. When the evidence submitted by the Complainant is not in line with the actual use of the disputed domain name the case must fail.”

In other words, the Complainant failed to convince the sole panelist that their claim was true; the Respondent most likely pointed the domain to a different type of content that does not infringe on the Complainant’s products, before the panelist could review the case.

It appears that the less demanding UDRP process will have to be utilized now. Full details on this URS decision follow:

DOMAIN NAME
<bnp-paribas.icu>

PARTIES

Complainant: BNP PARIBAS of Paris, France.

Complainant Representative: Nameshield of Angers, France.

Respondent: GDPR Masked of GDPR Masked, GDPR Masked, US.

Respondent Representative: «cFirstName» «cMiddle» «cLastName»

REGISTRIES and REGISTRARS

Registries: ShortDot SA

Registrars: PDR Ltd. d/b/a PublicDomainRegistry.com

EXAMINER

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.

Jonathan Agmon, as Examiner.

PROCEDURAL HISTORY

Complainant submitted: October 5, 2018

Commencement: October 11, 2018

Default Date: October 26, 2018

Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the “Rules”) .

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW

Clear and convincing evidence.

FINDINGS and DISCUSSION

Complainant, BNP PARIBAS, is a renowned international French bank offering banking and financial services,

Complainant is the owner of the mark “BNP PARIBAS” French trademark n° 728598 which is registered on February 23, 2000. The mark is also registered in the Trademark ClearingHouse on September 19, 2013.

Complainant asserts the following against the Respondent:

1. The registered domain name is identical or confusingly similar to a word or mark [URS 1.2.6.1]: for which the Complainant holds a valid national or regional registration and that is in current use;

2. Registrant has no legitimate right or interest to the domain name [URS 1.2.6.2];

3. The domain name was registered and are being used in bad faith [URS 1.2.6.3] such as: By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant

Complainant is the owner of the mark “BNP PARIBAS” French trademark n° 728598 which is registered on February 23, 2000. The mark is also registered in the Trademark ClearingHouse on September 19, 2013.

The domain name includes the Complainant’s mark in its entirety, separated by a hyphen together with the gTLD “.icu”. The hyphen and the gTLD do not serve to distinguish the disputed domain name from the Complainant’s trademark.

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant

The Complainant has not authorized Respondent to use its BNP PARIBAS mark. The Respondent is not commonly known by the registered domain name. The Respondent’s use is not a legitimate noncommercial or fair use, and is not in connection with a bona fide offering of goods or services. The Respondent failed to provide a response.

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith. d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant

The evidence submitted by the Complainant show a picture showing a parked page with pay-per-click links which appears to target the Complainant. However, the website under the disputed domain name does not resolve to a parked page. As noted by other Panels the URS process is narrow requiring a high level of proof. When the evidence submitted by the Complainant is not in line with the actual use of the disputed domain name the case must fail.

As a result, the Panel finds that the that the Complainant has failed to comply with URS 1.2.6.3 (d).

FINDING OF ABUSE or MATERIAL FALSEHOOD

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. In the present case, the evidence filed with the Complaint does not conform with the actual use of the disputed domain name. The fact that the Complainant failed to meet the high burden established by the URS will not automatically lead to a finding of abuse or material falsehood. On the other hand the failure of the Respondent to file a response would not prevent such finding. See also URS 11.7. The record in URS proceedings are severely limited such that it is difficult for the Examiner to make an informed finding on URS 11.4 which requires a finding that the Complaint contained a deliberate material falsehood. Such material falsehood must be contained in an assertion of fact which at the time it was made, was made with the knowledge that it was false and which if true, would have an impact on the outcome of these proceedings. The URS therefore requires a finding of deliberate and wilful action on the part of the Complainant. Such finding may result in the Complaint being barred from filing additional proceedings under the URS (See URS 11.4, 11.5). As a consequence, the Panel must consider if the record shows that the Complainant has knowingly and with malicious intent attempted to manipulate the results of these proceedings. The Panel finds that there is no evidence of such malicious intent in these proceedings and a result, the Examiner finds as follows:

1. The Complaint was neither abusive nor contained material falsehoods.

DETERMINATION

After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be RETURNED to the control of Respondent.

<bnp-paribas.icu>

Jonathan Agmon, Examiner

Dated: October 29, 2018


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