The Complainant is NATIXIS, France, represented by Inlex IP Expertise, France.
The Respondent is Calmettes thomas, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2021. On January 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 29, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint February 1, 2021. 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 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2021. The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on March 22, 2021. 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 French corporate and financial services company which is part of BPCE Group. The Complainant is the owner of numerous trademarks, registered in several countries (thereafter the “NATIXIS trademarks”) such as: - The French word trademark NATIXIS No. 3416315, filed on March 14, 2006, registered for products and services in classes 9, 16, 35, 36 and 38; The Complainant also registered the following domain names, redirecting to its official website: - The disputed domain name At the time of the complaint, the disputed domain name pointed to an error page indicating in Russian characters that the website is under construction and, at the time of the decision, points to an error page. The Panel is requested to transfer the disputed domain name 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 stands that the disputed domain name is identical to its well-known NATIXIS trademarks, giving rise to confusion for the consumer. The Complainant underlines that NATIXIS trademarks are widely used in connection with banking and financial services, and that the NATIXIS sign has no meaning and is highly distinctive. Furthermore, the Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not the owner of any NATIXIS trademark. Moreover, the Complainant argues that there is no business or legal relationship between the Complainant and the Respondent, since the Complainant has neither authorized nor licensed the Respondent to use its NATIXIS trademarks in any way. The Complainant adds that the disputed domain name does not resolve to an active website or web page but, at the time of the complaint, pointed to an error page indicating in Russian characters that the website was under construction, which does not confer the Respondent any rights or legitimate interests in the disputed domain name. At least, the Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith, with the aim of taking advantage of the reputation of its well-known NATIXIS trademarks, whose notoriety has already been recognized by several prior UDRP panel decisions. The Complainant considers it unlikely that the Respondent was unaware of the Complainant’s activities and NATIXIS trademarks and domain names at the time of the registration of the disputed domain name. The Complainant also underlines that the Respondent used a privacy service in order to hide its identity, which is an inference of bad faith, and that according to the information provided by the Registrar, it appears that the Respondent deliberately mentioned a wrong address when registering the disputed domain name. Finally, the Complainant points out that email servers have been activated, which means that emails can be sent with email addresses using “@natixis.global”, so that there is a high risk that the disputed domain name be used for phishing or scams, what would be very detrimental to the Complainant’s clients given the Complainant’s field of activity. 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 name is 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 name The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark. 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 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 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 the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)). Regarding the disputed domain name Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is identical 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 name. 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 name. 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 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 name in order to shift the burden of production to the respondent (see Croatia Airlines did. 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 has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not the owner of any NATIXIS trademark and since there is no business or legal relationship between the Complainant and the Respondent, the Complainant never having authorized nor licensed the Respondent to use its NATIXIS trademarks in any way. Moreover, the disputed domain name resolves to an error page at the time of the decision, which does not represent a bona fide offering of goods or services. However, the Respondent did not reply to the Complainant’s contentions. Finally, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0). 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 name According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is 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: (i) 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 (ii) 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 (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) 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. Section 3.3 of the WIPO Overview 3.0 provides that different factors are relevant in determining a finding of bad faith under the doctrine of passive holding, including: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. First of all, the Panel finds that it is established that the Complainant’s trademarks were registered before the registration of the disputed domain name, and that the Respondent could not have been unaware of the Complainant’s prior trademarks at the time of the registration of the disputed domain name, given the reputation of the well-known NATIXIS trademarks and the high distinctiveness of the term “Natixis”. Moreover, the Panel notes that the Respondent has registered the disputed domain name mentioning a wrong address and using a privacy service, which constitute factors relevant to the bad faith passive holding of the disputed domain name, according to prior UDRP panel decisions (see section 3.3 of the WIPO Overview 3.0). The Panel therefore finds that the Respondent registered the disputed domain name in bad faith. Then, and in light of the evidence provided by the Complainant, the Panel finds that the disputed domain name is not currently used, given that it points to an error page, 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 that the passive holding of the disputed domain name proves that the Respondent acts in bad faith. The particular circumstances of this case which lead to this conclusion are: - the reputation of the well-known NATIXIS trademarks; Furthermore, it is established that email servers have been activated with the disputed domain name, which means that emails could be sent with an address using “@natixis.global”, allowing to fear a use of the disputed domain name for phishing or scams purposes. Therefore, in view of all the circumstances of this case the Panel finds that the Respondent has registered and is using the disputed domain name 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 name Christiane Féral-Schuhl
- The European Union word trademark NATIXIS No. 5129176, filed on June 12, 2006, registered for products and services in classes 9, 16, 35, 36 and 38;
- The international semi-figurative trademark NATIXIS No. 1071008, registered on April 21, 2010, for products and services in classes 9, 16, 35, 36, and 38.
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- 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.
- the fact that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;
- the lack of rights or legitimate interests of the Respondent in respect of the disputed domain name;
- the fact that the Respondent has used a privacy service and mentioned a wrong address when registering the disputed domain name;
- the fact that 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 name by the Respondent that would not be illegitimate.
Sole Panelist
Date: April 5, 2021
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