The Complainant is NATIXIS of Paris, France, represented by Inlex IP Expertise, France.
The Respondent is Richard Cohen, Buble of Charenton, France. 2. The Domain Names and Registrar
The disputed domain names and are registered with 1&1 Internet AG (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 27, 2017. On December 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 11, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On January 31, 2018, the Center sent a communication to the Parties, inviting the Complainant to either submit satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in French, or to submit the Complaint translated into English, or to submit a request for French to be the language of the administrative proceedings. The Respondent was also invited to submit comments. On February 5, 2018, the Complainant submitted an amended Complaint in English. The Respondent did not reply.
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 February 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 2, 2018.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on March 27, 2018. 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
The Complainant is a corporate and financial services company based in France, having more than 15,000 employees in 38 countries.
The Complainant has been registered before the Trade and Companies Register of Paris, France on July 30, 1954.
The Complainant is the owner of numerous trademarks, registered in several countries (thereafter the "NATIXIS trademarks") such as:
- The French trademark NATIXIS, No. 3416315, filed on March 14, 2006, registered for products and services in classes 9, 16- 35, 36 and 38;
- The European Trade Mark NATIXIS, No. 005129176, filed on June 12, 2006, registered on June 21, 2007, for products and services in classes 9, 16, 35, 36 and 38;
- The international trademark NATIXIS, No. 1071008, filed on April 21, 2010, registered on April 21, 2010, for products and services in classes 9; 16; 35; 36; 38.
The Complainant registered the following domain names:
- registered since February 3, 2005;
- registered since October 20, 2006.
The disputed domain names and were registered by the Respondent on October 31, 2017 with 1&1 Internet AG.
At the time the Complaint was filed, the disputed domain names and point to the Registrar's website.
The Panel is requested to transfer the disputed domain names to the Complainant. 5. Parties' Contentions A. Complainant
In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.
First of all, the Complainant argues that NATIXIS trademarks are widely used in connection with banking and financial services and the reputed services proposed under NATIXIS trademarks are well-known in France, the European Union and internationally.
The Complainant then stands that the disputed domain names and are identical and highly similar to its NATIXIS trademarks since the domain names are reproducing letter-by-letter the NATIXIS trademarks.
The Complainant adds that the addition of the descriptive terms "crypto" and "coins" to the NATIXIS trademarks do not grant self-distinctiveness to the disputed domain names.
The Complainant points out that both terms are usual in the banking and financial sector so that there is a likelihood of confusion between the disputed domain names and NATIXIS trademarks.
Furthermore, the Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has no connection or affiliation with the Complainant.
Moreover, the Respondent has not been authorized by the Complainant to use the name NATIXIS.
According to the Complainant, the disputed domain names are not really used as they point to the Registrar's website and it is therefore obvious that the Respondent has no legitimate interest in registering or using the disputed domain names.
At least, the Complainant argues that the Respondent has registered and is using the disputed domain names in bad faith.
The Complainant stands that the Respondent has registered the disputed domain names with the aim of taking advantage of the reputation of the well-known NATIXIS trademarks.
The Complainant ended by claiming that even if the disputed domain names are not active, the reservation of domain names including well-known trademarks clearly shows the bad faith of the Respondent. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 in bad faith. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, the Panel finds that the Complainant has provided evidence that it has rights on the NATIXIS trademarks.
Then, the Panel notices that the disputed domain names and are composed of (i) the distinctive element "NATIXIS", which is the exact reproduction of the NATIXIS trademarks, (ii) the generic terms "crypto" and "coins" and (iii) the generic Top-Level Domain ("gTLD") ".com".
The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (See section 1.7 of the WIPO Overview of WIPO Panel Views on selected UDPR Questions, Third Editions ("WIPO Overview 3.0")).
Furthermore, the Panel concurs with the opinion of several prior UDRP panel decisions which have held that the fact that a domain name wholly incorporates a complainant's registered trademark may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059; Hoffmann-La Roche Inc., Roche Products Limited v.Vladimir Ulyanov,WIPO Case No. D2011-1474; Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150).
Regarding the disputed domain names and , the Panel finds that the addition of the generic terms "coins" and "crypto" to the NATIXIS trademarks are not sufficient to exclude confusing similarity. Where the NATIXIS trademarks are recognizable within the disputed domain names, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (See section 1.8 of the WIPO Overview 3.0 and LEGO Juris A/S v. DBA David Inc/ DomainsByP,WIPO Case No. D2011-1290).
Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain names are confusingly similar to the Complainant's trademarks. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain names.
These circumstances are:
- before any notice of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to prior UDRP panel decisions, it is sufficient that the Complainant shows prima facie that the Respondent lacks rights or legitimate interests in the disputed domain names in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie 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 (See section 2.1 of the WIPO Overview 3.0).
According to the Panel, the Complainant has shown prima facie that the Respondent is not affiliated with the Complainant and has not been permitted, licensed or otherwise authorized by the Complainant to use its NATIXIS trademarks, and that the Respondent is not currently and has never been known under the name NATIXIS.
The Complainant having established prima facie that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production has been shifted to the Respondent.
However, it turns out that the Respondent has not provided any answer to the Complainant's contentions.
Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain names and . C. Registered and Used in Bad Faith
According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain names have been registered and are being used in bad faith.
Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent's bad faith:
circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on the respondent's website or location.
First of all, the Panel finds that the Respondent could not have been unaware of the Complainant's prior trademarks at the time of the registration of the disputed domain names, given that the Complainant's trademarks were filed and registered, notably in France, the country in which the Respondent is located, long before the registration of the disputed domain names, so that a simple search on the trademark databases would have allowed the Respondent to find the existence of the Complainant's prior rights.
The Panel therefore finds that the Respondent registered the disputed domain names in bad faith.
Then, and in light of the evidence provided by the Complainant, the Panel finds that the disputed domain names are not currently used since they point to the Registrar's website, but wishes to remind that such "passive holding" does not prevent a finding of bad faith, since according to prior UDRP panel decisions the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (See section 3.3 of the WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Indeed, the Panel considers the passive holding of the disputed domain names proves that the Respondent acts in bad faith. The particular circumstances of this case which lead to this conclusion are:
- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names;
- the Respondent has no rights or legitimate interests in respect of the disputed domain names;
- the Respondent has not provided any answer to the Complainant's contentions;
- taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate, such as by being an infringement of the Complainant's rights under trademark law.
The Panel considers that the disputed domain names are being used in bad faith.
Therefore, in view of all the circumstances of this case the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b). 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 names and be transferred to the Complainant.
Christiane Féral-Schuhl
Sole Panelist
Date: April 10, 2018
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