The Complainant is Natixis, France, represented by Inlex IP Expertise, France.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Natixis123 Natixis123, France.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2021. On September 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 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 September 20, 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 on September 23, 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 September 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2021.
The Center appointed Elise Dufour as the sole panelist in this matter on November 14, 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 BackgroundThe Complainant is Natixis, a corporate, financial services and investment management company based in Paris, France, part of the BPCE Group, that is known internationally.
The Complainant owns several trademark registrations in many countries including the following trademarks:
- French trademark registration NATIXIS No. 3416315, filed and registered on March 14, 2006;
- European Union trademark registration NATIXIS No. 5129176, filed on June 12, 2006 and registered on June 21, 2007;
- International trademark registration NATIXIS No. 1071008, registered on April 21, 2010.
The Complainant also owns and uses numerous domain names incorporating the NATIXIS trademark. These include
The disputed domain name
A. Complainant
The Complainant contends that (i) the disputed domain name is confusingly similar to the Complainant’s trademarks; (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the Respondent registered and is using the disputed domain name in bad faith.
(i) The Complainant claims that the disputed domain name is confusingly similar to its well-known and distinctive trademarks and domain names. Indeed, the disputed domain name incorporates entirely the Complainant’s trademark NATIXIS, associated with the word “invest”, which directly describes the Complainant’s activity.
(ii) The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name: the Complainant has not licensed or otherwise permitted the Respondent to use its trademark NATIXIS. In addition, the Complainant stresses that the disputed domain name is not used, and that an Internet research shows that the Respondent is not commonly known by “Natixis” or “Natixis Invest”.
(iii) Due to the strong reputation and well-known character of the trademark NATIXIS, the Complainant considers that the Respondent could not have ignored the existence of the Complainant’s trademark at the time the disputed domain name was registered. In addition, for the Complainant, the use of a privacy service together with the use of a fake address are an inference of bad faith.
The Complainant also claims that the Respondent’s use of the disputed domain name is made in bad faith, as the disputed domain name is currently inactive but used to resolve to the Registrar’s parking page with pay-per-click links. Additionally, the Complainant points out the fact that the email servers are activated for the disputed domain name, enabling consequently the sending and receipt of potential fraudulent emails. In that respect, the Complainant indicates that, as a banking group, it has continually to face phishing attempts.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
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 was registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly SimilarThe Complainant submitted evidence, which incontestably and conclusively establishes rights in the trademark NATIXIS.
The disputed domain name is confusingly similar to the Complainant’s registered trademark NATIXIS since it entirely contains this distinctive mark and only adds the word “invest” together with a hyphen.
It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name, the mere addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, the burden of production then shifts to the Respondent, which has then to demonstrate rights or legitimate interests in the disputed domain name.
On the basis of the submitted evidence, the Panel considers that the Complainant has successfully established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name: the Respondent is not commonly known under the disputed domain name, nor owns any registered rights on the disputed domain name or has been authorized by the Complainant to use the prior trademarks in any way.
The Respondent did not to reply to the Complaint, not providing any explanation or evidence of rights or legitimate interests in the disputed domain name. The Panel considers that if the Respondent had rights or legitimate interests in respect of the disputed domain name, the Respondent would have submitted a response to the Complaint.
Furthermore, the disputed domain name used to resolve to a parking website comprising of pay-per-click links that compete with or capitalize on the Complainant’s trademark, which cannot be considered fair as these falsely suggest an affiliation with the Complainant that does not exist (see section 2.9 of the WIPO Overview 3.0”).
Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
Noting the above, and in the absence of any Response or allegations from the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithWith regards to the registration of the disputed domain name, the Panel finds that at the time of the registration of the disputed domain name, the Respondent knew or should have been aware of the existence of the Complainant’s trademarks and activities. Indeed, given the fact that the Complainant’s trademarks are well-known in the financial sector and highly distinctive, the Respondent cannot credibly claim to have been unaware of the existence of the previous trademarks.
This finding is emphasized by the fact that the disputed domain name incorporates the Complainant’s trademark NATIXIS entirely together with the term “invest”, which describes the Complainant’s activities and hence strengthen the impression that the disputed domain name is in some way connected to the Complainant or the Complainant’s services.
Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent.
As to use of the disputed domain name in bad faith, the disputed domain name used to resolve to a parking website comprising of pay-per-click links that compete with or capitalize on the Complainant’s trademark. The disputed domain name is currently inactive and links to an “error page”. In this regard, section 3.3 of the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”.
The Panel has hence reviewed all elements of this case, and attaches particular relevance to the following elements to assert use in bad faith:
Firstly, the Panel notes that when the Respondent registered the disputed domain name, the Respondent employed a privacy service in order to hide its identity and used a fake address, which both support a finding of bad faith (see section 3.6, WIPO Overview 3.0).
In addition, the disputed domain name incorporates the Complainant’s distinctive and well-known trademark in its entirety, to which is added the term “invest”, describing the Complainant’s activity, which together creates a likelihood of confusion with the Complainant’s mark.
Finally, the Complainant has provided clear evidence that the Respondent has set up MX Records for the disputed domain name. This means that the disputed domain name may currently be used or could be used or has been used in the past for email communication and in particular fraudulent emails, such as messages containing spam or used for phishing attempts. Considering the Complainant’s financial activities, the Panel deems that there is a high risk that the disputed domain name may be used for such fraudulent activities which suggests bad faith.
Therefore, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).
7. DecisionFor 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
Elise Dufour
Sole Panelist
Date: November 28, 2021