ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Natixis v. Registration Private, Domains By Proxy, LLC / Cyber Lab Case No. D2022-1821 1. The Parties The Complainant is Natixis, France, represented by Inlex IP Expertise, France. The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Cyber Lab, France. 2. The Domain Name and Registrar The disputed domain name
is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 20, 2022. On May 20, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 May 27, 2022, 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 May 31, 2022. 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 June 22, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 29, 2022. page 2 The Center appointed Alexandre Nappey as the sole panelist in this matter on August 8, 2022. 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 multinational financial services firm specialized in asset and wealth management, corporate and investment banking, insurance and payments. The Complainant is part of the Groupe BPCE. Groupe BPCE is one of the largest banking groups in France. The Complainant owns several French, European Union ("EU"), and International trademark registrations for NATIXIS, notably: - French Trademark registration for NATIXIS No. 3416315, registered on March 14, 2006; - EU Trademark registration for NATIXIS No. 005129176 registered on June 21, 2007; - International Trademark registration No. 1071008, registered on April 21, 2010. The Complainant owns numerous domain names among which the following redirect to its official website: - registered on February 3, 2005, - registered on October 20, 2006. The Complainant uses the NATIXIS trademark in connection with banking and financial services. The disputed domain name was registered on May 16, 2022, and resolves to a webpage featuring pay-perclick ("PPC") links to third-party websites. 5. Parties' Contentions A. Complainant First, the Complainant claims that the term "natixis" has no meaning and the NATIXIS trademark is highly distinctive. On the contrary, the terms "wealth management" are not distinctive and descriptive of the Complainant's activities. Indeed, the Complainant is a leading financial establishment able to provide its major private clients, entrepreneurs and their families with optimum solutions for international wealth and asset management. Therefore, it is obvious that the public will think that the disputed domain name belongs to the Complainant. The disputed domain name almost reproduces the subdomain which directs to the website of the Complainant's affiliate, Natixis Wealth Management. The disputed domain name creates a likelihood of confusion with Natixis Wealth Management, a Complainant subsidiary assisting expatriates, non-residents and international clients in the management and structuring of their personal and professional assets. page 3 Second, it is underlined that the Respondent uses the disputed domain name in connection with a parking page displaying PPC links. UDRP panels have constantly found that the use of a domain name to host a parking page comprising PPC links in certain circumstances does not represent a bona fide offering. Therefore, the Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial use of the disputed domain name. Considering that the disputed domain name incorporates the Complainant's trademark, there is a risk of affiliation with the Complainant. It is also worth pointing out that there is no business or legal relationship between the Complainant and the Respondent. The Complainant has neither authorized nor licensed the Respondent to use its trademarks in any way. Therefore the Respondent has no rights or legitimate interests in the disputed domain name. Finally the Complainant reminds that the trademark NATIXIS is well known in France and in several other countries. When registering the disputed domain name, the Respondent employed a privacy service in order to hide its identity and to avoid being notified of a UDRP proceeding which is an inference of bad faith. The disputed domain name has been registered with the aim of taking advantage of the well-known NATIXIS trademark of the Complainant. It is obvious that the disputed domain name has been registered for commercial purpose in order to mislead the consumer and, in all likelihood, for diverting the Complainant's consumers. The Respondent takes advantage of the well-known trademark NATIXIS to earn money with clicks. As a consequence the Complainant claims that the disputed domain name has been registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Notwithstanding the lack of response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate 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 has been registered and is being used in bad faith. However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the panel "shall draw such inferences therefrom as it considers appropriate". Having regard to the Parties' contentions, the Policy, the Rules, the Supplemental Rules and any applicable substantive law, the Panel's findings on each of the above-mentioned elements are the following: page 4 A. Identical or Confusingly Similar The Complainant has shown it has rights in the NATIXIS trademark. The entire trademark has been incorporated into the disputed domain name without any variation. The additional component "wealthmanagement-" does not prevent the Complainant's trademark from being recognizable within the disputed domain name. The 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". See also Amundi Asset Management v. Bonnie faber WIPO Case No. D2022-0947, concerning where the panel stated: "The Panel notes that the disputed domain name incorporates the AMUNDI trademark in its entirety. The addition of the word "particulier" and of the abbreviation "ee" does not prevent a finding of confusing similarity under Policy, paragraph 4(a)(i)." The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not authorize the Respondent to use the NATIXIS trademark alone or in combination with other words, less so in combination with the words "wealth management" which is the name of the Complainant's subsidiary Natixis Wealth Management, nor to register the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name, or that there have been demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services. Moreover, the use of an inherently misleading domain name to host a parked page comprising PPC links does not represent a bona fide offering of goods or services. See section 2.9 of the WIPO Overview 3.0. The burden of production accordingly shifts to the Respondent to come forward with evidence of circumstances showing that it has rights or legitimate interests in the disputed domain name. The Respondent failed to do so. In the circumstances, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. The requirement of paragraph 4(a)(ii) of the Policy has been met. C. Registered and Used in Bad Faith The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; (ii) circumstances indicating that the respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided page 5 that the respondent has engaged in a pattern of such conduct; (iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent intentionally is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location. The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant had registered its trademark NATIXIS. Furthermore, the Panel finds that the disputed domain name, which combines the trademark and a business name belonging to companies from the same group, cannot have been chosen randomly. The mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark (particularly domain names incorporating the mark plus a descriptive term, as in the present case) by an unaffiliated entity can itself create a presumption of bad faith (section 3.1.4 of the WIPO Overview 3.0). See also Association des Centres Distributeurs E. Leclerc - A.C.D. Lec. v. Farid Hamed Aryaee, WIPO Case No. D2020-2490 concerning . Thus, the Panel concludes that the disputed domain name was registered in bad faith. Furthermore, the inherently misleading disputed domain name is used for a website with PPC links which are related to the Complainant's area of business. In the Panel's view, such activity of itself constitutes registration and use of the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy. Moreover, section 3.5 of WIPO Overview 3.0 makes clear that respondents cannot disclaim responsibility for "automatically" generated PPC links on their websites and that neither the fact that such links are generated by a third party such as a registrar, nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith. Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy. Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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, , be transferred to the Complainant. /Alexandre Nappey/ Alexandre Nappey Sole Panelist Date: August 22, 2022
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