The Complainant is Natixis, France, represented by Inlex IP Expertise, France.
The Respondent is Laura Molenaar, Netherlands.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2021. On October 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 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 November 1, 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 November 3, 2021.
On November 1, 2021, the Center transmitted an email in English and German to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on November 3, 2021. The Respondent did not comment on the language of the proceeding.
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 November 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2021.
The Center appointed Malte Müller, Tobias as the sole panelist in this matter on December 10, 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 a French company in the financial sector. With more than 17,000 employees in 38 countries it is the corporate, investment, and financial services arm of BPCE Group, France’s second-largest banking player.
The Complaint is based, amongst others, on the European Union Trademark registration NATIXIS (verbal) no 5129176, filed on June 12, 2006, for goods and services in classes 9, 16, 35, 36, and 38.
The disputed domain name was registered on October 10, 2021, and the language of the registration agreement is German.
It results from the Complainant’s documented allegations that the disputed domain name resolves to an “error” page so that no content is displayed on the website to which the disputed domain name resolves.
5. Parties’ Contentions A. ComplainantFirstly, the Complainant request that English be the language of the present administrative proceeding. In its view, it is important to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceedings. In the present case, the Complaint has been submitted in English because, (1) English is the business language and (2) “.com” is a supranational character; (3) the Respondent is domiciled in the Netherlands, where German is not an official language; (4) WIPO already accepted English as the language of proceeding in cases involving the same Registrar as in the present case; (5) the Complainant is a French company and it would cause significant expenses and delay if the Complainant was required to translate the Complaint and annexes into German language.
Secondly, the Complainant points out that the disputed domain name is confusingly similar to the registered mark, since it wholly incorporates the Complainant’s trademark and merely adds the letters “CP”. These letters “CP” refer to generic French words “credit de paiement” (payment credit) and “communiqué de presse” (press release).
Thirdly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant submits that the Respondent did not register any NATIXIS trademarks and has not been commonly known by the disputed domain name. Further, on the Complainant’s information and belief, no information can be found associating the Respondent to the mark NATIXIS so that it does not appear to engage in any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with bona fide offering goods and services.
Fourthly, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In the Complainant’s view, the trademark NATIXIS is well-known in France, so that it seems unlikely that the Respondent was unaware of the Complainant’s activities and of the existence of the NATIXIS trademarks and domain names at the time of registration. Furthermore, the Respondent employed a privacy service to hide its identity. In addition, the Complainant reminds that passive holding of a domain name does not prevent a finding of bad faith. Finally, the Complainant contends, that the disputed domain name has been activated so that there is a high risk that the litigious domain name be used for phishing or scam purposes.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs this Panel to “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”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
A. Language of the proceedingsThe Complainant requests for the proceedings to be administered in English language.
Panels have recognized that a preliminary determination by the WIPO Center may be necessary where a party requests for the proceeding to be administered in a language other than that of the registration agreement. The Panel acknowledges that the WIPO Center notified both parties in German and English language of the discrepancy between the language of the registration agreement and the Complaint. The Complainant formally submitted a motivated request that the proceedings be conducted in English language.
Paragraph 10 of the UDRP Rules vests the Panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case. The Respondent did not reply to this request, since she did not actively participate at all in these proceedings
Against this background, the Panel finds that the following arguments warrant proceeding in a language other than that of the registration agreement: (i) none of the parties being located in a country where German is an official language; (ii) English is the business language and the generic Top-Level Domain (“gTLD”) “.com” is a supranational character; and (iii) taking into consideration that translating the Complaint and the annexes would cause significant expenses and delay while the Respondent is not participating in these proceedings.
Taking account of the Panel’s ability to understand both languages at issue and taking into account the interest of fairness and to preserve continuity in the case, the Panel decides English to be the language of the present proceedings.
B. Identical or Confusingly SimilarPursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and subsequently establish that the disputed domain name is identical or confusingly similar to said mark.
The Complainant is the registered owner of European Union Trademark registration NATIXIS no 5129176, filed on June 12, 2006, for goods and services in classes 9, 16, 35, 36, and 38.
The disputed domain name entirely incorporates this trademark, followed by the acronym with a hyphen “-CP” under the gTLD “.com”. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, in cases where a domain name incorporates the entirety of a trademark, or at least where 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 the purposes of UDRP standing. The Panel finds the Complainant’s NATIXIS mark to be readily recognizable in the disputed domain name.
The addition of the letters/hyphen “-cp” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. In fact, it is acknowledged amongst UDRP panels that 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 (see WIPO Overview 3.0, section 1.8). The Panel finds the trademark to constitute the dominant or principal component of the disputed domain name, while the mere addition of the acronym “cp” will be considered as secondary element, divided from the trademark by a hyphen.
The gTLD “.com” may be disregarded, as it is viewed as a standard registration requirement (see WIPO Overview 3.0, section 1.11.1).
Hence, this Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark NATIXIS pursuant to the Policy, paragraph 4(a)(i).
C. Rights or Legitimate InterestsPursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. In the Panel’s view, based on the unrebutted allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
No content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy (see, e.g., Sanofi, Genzyme Corporation v. Domain Privacy,WIPO Case No. D2016-1193; Volkswagen AG v. Nowack Auto und Sport – Oliver Nowack,WIPO Case No. D2015-0070; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320). In addition, the construction of the disputed domain name is also taken in consideration, and this Panel finds that it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s registered trademarks NATIXIS by registering a domain name consisting of that trademark with the acronym “cp” that is descriptive of the services offered by the Complainant, thus misleading Internet users through the implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
Finally, the Panel does not dispose of any elements that could lead the Panel to the conclusion that the Respondent is commonly known by the disputed domain name or that it has acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithPursuant to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
According to the Complainant’s undisputed allegations, the Respondent does not actively use the disputed domain name. With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, prior UDRP panels have found that the apparent lack of active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith under the doctrine of passive holding (see Sanofi, Genzyme Corporation v. Domain Privacy,WIPO Case No. D2016-1193; Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel,WIPO Case No. D2016-0068; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel must therefore examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. 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 and Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, supra).
In the case at hand, the Panel finds that the Complainant did not submit substantial evidence in order to support the alleged reputation of the NATIXIS trademark. Nevertheless, in this Panel’s view, the further circumstances surrounding the registration, i.e.,
(i) the distinctiveness of the trademark NATIXIS which has existed since 2006;
(ii) the trademark NATIXIS is fully and identically incorporated in the disputed domain name;
(iii) the Respondent’s failure to respond to this Complaint;
(iv) the fact that the details disclosed for the Respondent by the Registrar were incomplete, noting the mail courier’s inability to deliver the Center’s written communications; and
(v) the fact that the disputed domain name has been connected to active MX records, so that there is a risk that the Respondent is engaged in a phishing scheme,
suggest that the Respondent was aware that it has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith (see CCA and B, LLC v. Domain Administrator, Fundacion Privacy Services LTD,WIPO Case No. D2021-1532; Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, supra; America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460).
In addition, due to these circumstances this Panel concludes that the Respondent knew or should have known the trademark NATIXIS when it registered the disputed domain name, and that there is no plausible legitimate active use that the Respondent could make of the disputed domain name.
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant is therefore deemed to also have satisfied the third element, paragraph 4(a)(iii) of the Policy.
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,
Tobias Malte Müller
Sole Panelist
Date: December 23, 2021