The Complainant is Natixis, France, represented by Inlex IP Expertise, France.
The Respondent is Kenny Classic, Nigeria.
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 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 23, 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 October 25, 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 October 28, 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 November 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2021.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on November 29, 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 French company that provides financial services and is part of BPCE Group.
The Complainant owns the trademark NATIXIS, with registrations in numerous jurisdictions, including:
- French Trademark registration no. 3416315, NATIXIS, filed and registered on March 14, 2006;
- European Union Trademark registration no. 5129176, NATIXIS, registered on June 21, 2007; and
- International Trademark registration no. 1071008, registered on April 21, 2010.
The Complainant widely uses the NATIXIS trademarks in connection with banking and financial services.
The Complainant is the owner of the domain name
The Disputed Domain Name was registered on October 8, 2021.
The Respondent is Kenny Classic, and did not respond in the present procedure.
The Disputed Domain Name does not resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant’s submissions can be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The Complainant argues that the Disputed Domain Name is confusingly similar to its NATIXIS trademark. The Disputed Domain Name incorporates the NATIXIS trademark in its entirety. The addition of the word “bank” is directly descriptive of the activity of the Complainant and does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark. Also, the generic Top-Level Domain (“gTLD”) “.org” does not have any impact on the overall impression of the Disputed Domain Name and therefore is irrelevant to determine the confusing similarity between the trademark and the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Also, the Complainant argues that there is no evidence that the Respondent (as individual, business or organization) has been commonly known by the Disputed Domain Name. The Respondent has no connection or affiliation with the Complainant. The Complainant has not licensed or authorized the Respondent to use the NATIXIS trademark.
The Complainant submits that the Respondent has not, before the original filling of the Complaint, used or made preparations to use the Disputed Domain Name in relation to a bona fide offering of goods or services. On the contrary, the Disputed Domain Name does not resolve to an active website.
Also, the Complainant submits that the burden of production shifts to the Respondent to establish the Respondent’s rights or legitimate interests the Respondent may have in the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant argues that their NATIXIS trademark is well known.
The Complainant established that the Respondent had the Complainant’s name and trademark in mind when registering the Disputed Domain Name. The Respondent’s choice of the Disputed Domain Name cannot have been accidental and must have been influenced by the fame of the Complainant’s trademark.
The Respondent registered the Disputed Domain Name long after the Complainant registered the NATIXIS trademarks and their own domain name.
Also, the Disputed Domain Name does not reflect any website and is not in use. The lack of use of the Disputed Domain Name is also proof by itself of a bad faith use by the Respondent.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant established that it is the owner of registered NATIXIS trademarks. The Disputed Domain Name includes the Complainant’s NATIXIS trademark in its entirety, with the addition of the word “bank” and the gTLD “.org”. The addition of the word “bank” does not prevent a finding of confusing similarity, as the Complainant’s NATIXIS trademark is clearly recognizable in the Disputed Domain Name. In this matter, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 provides 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”.
In a similar case, a UDRP panel observed that “the Disputed Domain Name incorporates the Complainant’s GEICO trademark in its entirety with the addition of the descriptive term “bank” and the generic Top-Level Domain (“gTLD”) “.com”. The term “bank” does not prevent a finding of confusing similarity as the Complainant’s GEICO trademark is clearly recognizable in the Disputed Domain Name.” (Government Employees Insurance Company (“GEICO”) v. Domain Admin, Domain Service, Inc,WIPO Case No. D2021-2582). In general, gTLDs are disregarded when evaluating the identity or confusing similarity between the disputed domain name and the complainant’s mark. See section 1.11 of the WIPO Overview 3.0. Indeed, “when assessing confusing similarity, it is permissible for the panel to ignore the generic Top-Level Domain (“gTLD”) “.org” (Philip Morris Products S.A. v. Honest Akbari,WIPO Case No. D2021-2054 regarding the disputed domain name).
In the present case, the Panel considers that gTLDs are generally disregarded when evaluating the identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark. In the current case, the inclusion of the gTLD “.org” does not prevent the confusing similarity between the Disputed Domain Name and the Complainant’s NATIXIS trademark.
For the reasons above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsUnder paragraph 4(c) of the Policy:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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 (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
Paragraph 4(a)(ii) of the Policy requires the complainant to establish that the respondent has no rights or legitimate interests in the domain name. The consensus view among UDRP panels is that where a complainant makes out a prima facie case 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 disputed domain name. See section 2.1 of the WIPO Overview 3.0. In this case, the Respondent did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.
In the present case, the Complainant declared that it is not affiliated or associated with the Respondent in any way. The Complainant also argued that it has not authorized or given any license to the Respondent in order to register, use, or include the Complainant’s trademarks in a domain name or otherwise. Furthermore, the Complainant established that the Respondent is not commonly known by the Disputed Domain Name.
In these proceedings the Respondent is in default. Therefore, the Respondent did not present any evidence, which suggests that it is making a legitimate noncommercial or fair use of the Disputed Domain Name or commonly known by the Disputed Domain Name.
At the time of this Decision, the Disputed Domain Name resolves to an inactive website. The lack of use of the confusingly similar Disputed Domain Name, does not prove by itself that the Respondent has been using or made preparations to use the Disputed Domain Name in relation to a bona fide offering of goods or services.
Furthermore, the Panel finds that the nature of the Disputed Domain Name carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
In conclusion, the Panel finds that the Disputed Domain Name does not reflect a website that could 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.
For all the above-mentioned reasons and based on the available records and evidence, the Panel finds that the Complainant has fulfilled the second element of the Policy.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy provides that “[a domain name holder is] required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”.
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In the present case, the Panel notes that the trademark NATIXIS is well known in France and in several other countries for the financial services that the Complainant provides. Considering the above statement and the choice of the additional term “bank” in the Disputed Domain Name, it seems unlikely that the Respondent was unaware of the Respondent’s activities and of the existence of the NATIXIS trademarks and domain names at the time the registration was made. Registration of the Disputed Domain Name with knowledge of the Complainant’s well-known NATIXIS trademark, and without any rights or legitimate interests in the Disputed Domain Name, amounts to registration in bad faith.
Also, the Disputed Domain Name is used in bad faith. The Disputed Domain Name has been registered with the aim of taking advantage of the reputation of the well-known trademark NATIXIS of the Complainant. Although the Disputed Domain Name does not resolve to an active website, passive holding of a domain name does not prevent a finding of bad faith. A finding of bad faith use can be made inter alia where the respondent “knew or should have known” of the complainant’s trademark rights, and nevertheless used a domain name incorporating a mark, in which he had no rights or legitimate interests. See Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484.
In the present case, the Panel finds that the fact the Respondent is holding an inactive domain name which includes a well-known trademark supports a finding of use in bad faith. In this regard, the Panel also notes the distinctiveness of the NATIXIS trademark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the Disputed Domain Name may be put. See WIPO Overview 3.0, section 3.3, which notes that the “non-use of a domain name” does not prevent a finding of bad faith.
Therefore, the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith for purposes of 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
Ada L. Redondo Aguilera
Sole Panelist
Date: December 10, 2021