The Complainant is Natixis, France, represented by Inlex IP Expertise, France.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2020. On August 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2020, 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. The Center verified that the 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 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2020. The Center appointed Frank Schoneveld as the sole panelist in this matter on October 5, 2020. 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 financial services company headquartered in France with global operations. The Complainant uses its NATIXIS trademarks in connection with banking and financial services. The Complainant owns several trademarks registered since 2006, composed of the term “Natixis”, including: - French Trademark registration of NATIXIS No. 3416315, registered on March 14, 2006; The Complainant is registered as the holder of the domain names The disputed domain name The Complainant contends that the disputed domain name reproduces in full the earlier registered mark NATIXIS of the Complainant, noting that the Complainant’s earlier registered marks are both composed of the term “Natixis” placed in the leading position of the disputed domain name followed by “lifeandwealth”. The Complainant points out that the mark NATIXIS has no meaning and is highly distinctive, submitting that to the contrary, the phrase “lifeandwealth” is generic. The Complainant asserts that a previous UDRP decision has already considered that the word “wealth” is generic and that the addition of the word “life” refers to the area where the Complainant offers its insurance services and the addition of the word “life” does not prevent a finding of confusing similarity, concluding that the additional elements “lifeandwealth” does not add any distinctiveness. The Complainant submits that the disputed domain name combines the names of its two subsidiaries, namely Natixis LIFE, a Luxembourg life insurance company and Natixis Wealth Management, a financial services company, concluding that it is therefore obvious that the consumer will be led to think that the disputed domain name is owned by the Complainant. The Complainant concludes that there is a likelihood of confusion between the disputed domain name and the Complainant’s prior trademark rights, and considering the foregoing, the disputed domain name should be considered as confusingly similar to the trademarks owned by the Complainant. The Complainant contends that the Respondent has no right, including trademark rights, in respect of Natixis pointing out that there is no business or legal relationship between the Complainant and the Respondent. The Complainant says that it has neither authorized nor licensed the Respondent to use its trademarks in any way and that previous UDRP decisions have inferred from this lack of license or authorization that the Respondent had no rights or legitimate interests in respect of the domain name, and it should be concluded that the Respondent has no rights or legitimate interest in respect of the disputed domain name. The Complainant also contends that the disputed domain name was registered with the aim of taking advantage of the reputation of the well-known trademark NATIXIS of the Complainant, and that the trademark NATIXIS enjoys a wide reputation not only in France but also around the world, as is demonstrated by the following: - the Complainant’s registered trademarks NATIXIS are well known in France and in several other countries and previous UDRP decisions recognize the notoriety of the Complainant and its NATIXIS trademarks. - the well-known character of the marks NATIXIS, owned by the Complainant, can be established by a simple search on the search engine at “www.google.com” using the word “natixis” and gives about 4,150,000 results. - with more than 17,000 employees in 38 countries, the Complainant is the corporate, investment and financial services arm of BPCE Group, France’s second-largest banking player. - the Complainant was ranked as the first bookrunner for syndicated real estate finance loans in Europe, the Middle East and Africa regions in 2017 according to Dealogic, and the Complainant was also the leader in equity research in France in 2017 (source: Thomson Reuters Analyst Awards 2017) and at the first place in impact management (source: Finansol “Zoom sur la finance solidaire”, 2015 edition based on solidarity-based assets at end of December 2014). - the French Association of Financial Management awarded the Complainant number one account keeper for employee savings in 2015, and according to Thomson Reuters Global Project Finance Review, the Complainant was number one bookrunner for project finance. The Complainant concludes that, considering the above, it seems unlikely that the Respondent was unaware of the Complainant’s activities and of the existence of the trademarks NATIXIS and related domain names at the time registration of the disputed domain name was made. The Complainant submits that when registering the disputed domain name, the Respondent employed a privacy service in order to hide its identity and to avoid being notified of a UDRP proceeding, and that this is an inference of bad faith, recognized in at least one UDRP (e.g., GVC Holdings plc / ElectraWorks Limited v. Registration Private, Domains By Proxy, LLC / Adnan Atakan Alta,WIPO Case No. D2016-2563). The Complainant contends that the disputed domain name is being used as part of a fake bank campaign targeting the Complainant’s customers and the Complainant has already taken countermeasures to stop these fraudulent operations based on the disputed domain name. The Complainant asserts that this type of fraudulent use strongly indicates that the Respondent has deliberately chosen the Complainant’s trademarks as part of the disputed domain name to mislead Internet users. The Complainant submits that a finding of bad faith can be made inter alia where the respondent “knew or should have known” of the complainant’s trademark rights, and nevertheless has used a domain name incorporating a mark, in which it had no rights or legitimate interests. The Complainant provides a copy of the webpage to which the disputed domain name resolved, that has a list stating “Serrurier”, “Carte Grise”, “Location Voiture”, “Assurance Auto”, “Assurance Habitation” (in English respectively “Locksmith”, “Car Registration Document”, “Car Rental”, “Car Insurance”, “Home Insurance” – the Panel’s own translation). Each of the things listed has an arrow adjacent to it. The Complainant contends that it is therefore obvious that the disputed domain name has been registered for a commercial purpose in order to mislead consumers and, in all likelihood, for diverting the Complainant’s customers. The Complainant also asserts that this shows the Respondent is taking advantage of the well-known trademarks NATIXIS to earn money with clicks. The Complainant concludes that for all the above reasons, it should be considered that the disputed domain name has been registered and used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to UDRP paragraph 4(a), in order to have a domain name transferred or canceled, the Complainant must prove that each of the following three elements are present: (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. The Rules at paragraph 15(a) require that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Further, if a party fails to comply with any provision of, or requirement under, the Rules (including the failure to submit a response as set out in paragraph 5(a) of the Rules), paragraph 14(b) of the Rules makes it clear that, in the absence of exceptional circumstances, the Panel shall draw such inferences therefrom as it considers appropriate. In the absence of any rebuttal by the Respondent to the Complainant’s contentions, the Panel proceeds on the basis of the Complaint and in accordance with the Policy, the Rules and any rules and principles of law that are applicable, and draws such inferences as it considers appropriate from the failure to submit a response. A. Identical or Confusingly Similar The Complainant provides evidence that its NATIXIS mark has been registered in the European Union since 2007 and internationally since 2010. The Complainant therefore has rights in this mark. The mark NATIXIS, according to the Complainant, is a made up word. This submission is not challenged by the Respondent. The difference between the disputed domain name and the Complainant’s NATIXIS registered mark is the addition of the words “life and wealth”. The disputed domain name is therefore, at least confusingly similar to the Complainant’s trademark because it includes the mark NATIXIS in its entirety. The Complainant’s registered mark NATIXIS is clearly recognizable within the disputed domain name, tThe addition of the words “life and wealth” does not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s mark under the first element of UDRP, paragraph 4(a). The Respondent does not challenge the evidence submitted by the Complainant and does not respond to the Complainant’s contentions. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests There is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. It is clear that: (i) the Respondent has no business or legal relationship with the Complainant in any way; (ii) the Complainant has not authorized or licensed the Respondent to register or use any domain name incorporating the Complainant’s NATIXIS trademark; (iii) registration of the NATIXIS trademark in the European Union preceded by more than 13 years registration of the disputed domain name; and (iv) there is nothing in the evidence before the Panel, including in the WhoIs record for the disputed domain name, that suggests the Respondent might be known by the disputed domain name or any part of it. The evidence provided by the Complainant indicate it is unlikely there are circumstances in which the Respondent might have any rights or legitimate interests in the disputed domain name and there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. In the absence of any submission from the Respondent on this aspect of the Policy, a prima facie case has been established by the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name. In the Panel’s view it is more likely than not the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has failed to provide any rebuttal of this prima facie case. In those circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Complainant asserts that registration of the disputed domain name was done in order to attract Internet users to the disputed domain name, and to the website to which the disputed domain name resolves. The Respondent does not respond to this contention of the Complainant. The disputed domain name includes the words “Natixis life and wealth” and the Complainant has two companies that include the words “Natixis Life” (a life insurance company) and “Natixis Wealth Management” (a financial services company). At the same time, it is reasonably clear that the Complainant has significant recognition in the global financial services market, particularly in Europe, using the name Natixis which forms the most prominent part of the disputed domain name. In view of this recognition in Europe and globally, it seems likely that at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s rights in the trademark NATIXIS and chose to incorporate that mark into the disputed domain name. Previous UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names incorporating a complainant’s mark plus a descriptive term) to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0” at the section 3.1.4). There is also evidence of use of the disputed domain name to trade-off the Complainant’s trademark and wide reputation, for commercial gain either through payments for “clicks” to other websites/products or payment for insurance and other products offered at the links on the webpage to which the disputed domain name resolves. Such conduct indicates registration and use in bad faith of the disputed domain name. At the website to which the disputed domain name resolves, there are links to offers of insurance, a financial service product that competes with the Complainant’s products offered by the Complainant’s affiliated company Natixis Life. The Complainant asserts that the disputed domain name and the website to which the disputed domain name resolves are a diversion of Internet users searching for products provided by the Complainant. In such cases there would be a commercial gain when diverted Internet users acquire products offered by entities that are unaffiliated with the Complainant. In that case the Respondent has used the disputed domain name, to attract for commercial gain, Internet users to the relevant website, by creating a likelihood of confusion with the Complainant’s NATIXIS trademark as to the source, sponsorship, affiliation, or endorsement of the website or the products offered on the website. Such conduct would, within the meaning of paragraph 4(b)(iv) of the Policy, be evidence of registration and use in bad faith of the disputed domain name. It is reasonably clear, in the absence of any submission from the Respondent, that this is what the Respondent has done and there is therefore evidence of registration and use in bad faith. In addition, the webpage to which the disputed domain name resolved had a list of products with an arrow adjacent to each point on the list that could be “clicked” by an Internet user. The Complainant asserts that the Respondent earned money with each such “click”. In the absence of any other explanation, the Panel accepts that the disputed domain name resolved to a website which offered a list of links to an Internet user who could click on such links and the Respondent would then earn money from each such click. In those circumstances, the Respondent has used the disputed domain name to attract for commercial gain (from each click), Internet users to the relevant website, by creating a likelihood of confusion with the Complainant’s NATIXIS trademark as to the source, sponsorship, affiliation, or endorsement of the website or the products offered on the website. Such conduct would, within the meaning of paragraph 4(b)(iv) of the Policy, also be evidence of registration and use in bad faith of the disputed domain name. Based on all of the above, including the failure of the Respondent to rebut or respond to the Complainant’s contentions of bad faith registration and use of the disputed domain name, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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 Frank Schoneveld
- European Union Trademark NATIXIS No.°5129176, registered on June 21, 2007;
- International Trademark registration of NATIXIS No. 1071008, registered on April 21, 2010.
Sole Panelist
Date: October 19, 2020
Full & Egal Universal Law Academy