The Complainant is Natixis, France, represented by Inlex IP Expertise, France.
The Respondent is Felix Anderson, United States of America (the “United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2021. On June 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 22, 2021, 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 June 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2021. The Center appointed Nicholas Weston as the sole panelist in this matter on August 11, 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 company that operates a corporate, investment and financial services business with more than 17,000 employees in 38 countries and net revenues in 2017 exceeding EUR 9,467 million and part of BPCE Group, France’s second-largest bank. The Complainant holds a portfolio of registrations for the trademark NATIXIS, and variations of it, in numerous jurisdictions. French Trademark Registration No. 3416315 for the word mark NATIXIS, for example, was registered on March 14, 2006 for goods and services of classes 9, 16, 35, 36 and 38. The Complainant owns a number of domain names that incorporate its trademark including The Respondent registered the Disputed Domain Name The Complainant cites its French Trademark Registration No. 3416315 registered on March 14, 2006 and numerous other registrations around the world, for the mark NATIXIS as prima facie evidence of ownership. The Complainant submits that the mark NATIXIS is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to an inactive webpage. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules and submits that “The disputed domain name The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark NATIXIS in numerous jurisdictions including France. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the NATIXIS trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark NATIXIS; (b) followed by the letters “bnk”; (c) followed by the gTLD “.com”. It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “natixisbnk”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word, in this case, the letters “bnk”: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033. The Panel finds that the addition of the letters “bnk” does not avoid a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark. “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” (see: WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (i) the Disputed Domain Name is parked; (ii) the Respondent has not acquired or owned any trademark or service mark rights in the name NATIXIS, and has not been commonly known by the name NATIXIS; and (iii) the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating the Complainant’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Further, where the composition of the Disputed Domain Name consists of a trademark and a generic word or abbreviation such as “bnk”, identifiably the word “bank” with the letter “a” missing, the potential for phishing or fraud attendant on a payments service, in this Panel’s view carries “a risk of affiliation” that other UDRP panels have not considered fair use as it “effectively impersonates or suggests sponsorship or endorsement by the trademark owner” (see Guerlain S.A. v. PeiKang,WIPO Case No. D2000-0055 (“in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”); and Veuve Clicquot Ponsardin Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (“so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”) and WIPO Overview 3.0, section 2.5.1). The Panel notes the evidence that the Disputed Domain Name in this proceeding resolves to a dormant webpage. The Panel is satisfied that the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests. In the absence of a response, this Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith The third element of the Policy requires that the complainant must also demonstrate that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found. The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230; WIPO Overview 3.0, section 3.1). The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, the trademark NATIXIS is so widely known in Europe that this Panel infers that the Respondent knew, or should have known, that its registration of the Disputed Domain Name would be identical or confusingly similar to the Complainant’s trademark (see Natixis v. WhoisGuard Protected, WhoisGuard, Inc. / Adam Price, PLUS500AU PTY. LTD, WIPO Case No. D2019-3209 (“the Complainant’s trademark is well-known”); Natixis v. Contact Privacy Inc. Customer 0150507289 / Kevin Deffolin, WIPO Case No. D2018-0690 (“the widely-known NATIXIS trademark”); Natixis v. Domain Privacy Service FBO Registrant / Bruce Hansen, WIPO Case No. D2019-2804 (“The disputed domain name consists of the Complainant’s well-known trademark”). In addition, a gap of more than ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by 15 years. On the issue of use, the Complainant’s evidence is that the Disputed Domain Name does not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (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” (See WIPO Overview 3.0, section 3.3). This Panel notes that the evidence is that three of these four factors are present in this proceeding. There is also evidence that a DNS “mail exchange” (MX) record has been activated, allowing email to be routed to a mail server, in further evidence of bad faith under the Policy in view of the increased risk of fraud or phishing (see: Drägerwerk AG & Co. KGaA v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / BLACK ROSES,WIPO Case No. D2020-3167 (“Furthermore, the certificate and the MX record relating to the disputed domain name suggest that it is or was possibly used for email communication. Under these circumstances, the Panel considers it likely that the Respondent intended to use the disputed domain name as a support for a potential fraudulent email scheme, namely to impersonate the Complainant and extract personal or financial data from persons believing that the communication comes from the Complainant”). This Panel finds that use of the Disputed Domain Name to resolve to a passive website is also evidence of bad faith. In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark NATIXIS and incorporated it in the Disputed Domain Name along with the letters “bnk”, without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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, Nicholas Weston
Sole Panelist
Date: August 17, 2021
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