ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Natixis v. Host Master, Njalla Okta LLC Case No. D2024-4238 1. The Parties The Complainant is Natixis, France, represented by MIIP MADE IN IP, France. The Respondent is Host Master, Njalla Okta LLC, Saint Kitts and Nevis. 2. The Domain Name and Registrar The disputed domain name (“Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2024. On October 15, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 15, 2024, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 2024, 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 17, 2024. 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 October 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2024.
page 2 The Center appointed Jane Lambert as the sole panelist in this matter on November 20, 2024. 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 subsidiary of the Groupe Banque Populaire Caisse d’Epargne, France’s second largest banking group. It specializes in asset and wealth management, corporate and investment banking, insurance, payments and other financial services. It employs more than 16,000 persons in 36 countries. The Complainant has received many awards and accolades. More than 1,500 fund managers and investors worldwide ranked it fourth for European Fixed Income Research in the Euromoney Fixed Income Research Survey. On July 13, 2020, the Complainant received the Latin America MLA of the Year Award at the 2019 IJGlobal Awards that celebrate best-in-class transactions and organizations across the international infrastructure and energy sectors of the past year. It has registered the following trademarks for goods and services in the following classes: Jurisdiction Mark Number Registration Date Classes France NATIXIS 3416315 August 18, 2006 9, 16, 35, 36, 38 European Union NATIXIS 5129176 June 21, 2006 9, 16, 35, 36, 38 International 1071008 April 21, 2010 9, 16, 35, 36, 38 The Complainant has also registered the following domain names: - on February 3, 2005; - on October 20, 2005; and - on March 26, 2016. The Complainant supplies its services in France and other countries under the trade name NATIXIS. Because of its use of that name, members of the public associate NATIXIS with the Complainant and none other. Until the commencement of these proceedings, the Respondent hid its identity behind a privacy service. All that is known are the registration particulars disclosed by the Registrar. The Respondent registered the Disputed Domain Name on October 8, 2024. The Disputed Domain Name is not used as a uniform resource locator for a page on the Internet. When the Complainant entered the Disputed Domain Name into a browser on October 15, 2024, an error page appeared.
page 3 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. First, the Complainant submits that the Disputed Domain Name is confusingly similar to a trademark in which it has rights. The Disputed Domain Name incorporates the first 6 letters of the mark that it has registered in France, the European Union, and internationally, it omits the letter “I” and combines “NATIXS” with the descriptive word “PORTAL”. The Complainant relies on Natixis v. Duke Maine, WIPO Case No D2023-3838 where the disputed domain name in that case also reproduced the trademark in its entirety except for the second letter “I”. In that case the respondent also combined “NATIXS” with the letters “INTER” and the generic top-level domain “.com”. The panel in that case found that the omission of the letter “I” and the addition of the word “INTER” did not prevent the disputed domain name from being confusingly similar to the Complainant’s trademark. The Complainant refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.8 which provides: “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 Complainant submits that it is a well-established practice to disregard the generic Top-Level Domain “.com”. It cites Société Anonyme des Eaux Minerales d’Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416, in support of that submission. Secondly, the Complainant contends that the Respondent has no rights or interests in the Disputed Domain Name. It has searched the Global Brand Database and found no registrations of NATIXSPORTAL as a trademark anywhere in the world. Further, it has found no registrations of any kind in the name of the Respondent or in any of the other names or designations of the Respondent that have been disclosed by the Registrar. The Complainant has no business relationship with the Respondent and has neither licensed nor authorized the Respondent to use its trademarks. It cites Crédit Industriel et Commercial S.A v. CIC Banq, WIPO Case D2016-1875, as authority for the proposition that the lack of a license or other authorization raises an inference that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has searched “NATIXSPORTAL” on Google and the only results it has found relate to the Complainant. As the Disputed Domain Name in this case resolves to an error page, the Complainant referred to Intesa Sanpaolo S.p.A. v. Charles Duke/One and one Private Registration, WIPO Case No. D2013-0875, where the panel noted that the disputed domain name also resolved to an error page and said: “Such use does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name.” Finally, the Complainant contends that the Disputed Domain Name has been registered and is used in bad faith. In support of that contention, it alleges that the Disputed Domain Name was registered to take advantage of the Complainant’s reputation and goodwill. It argues that the Disputed Domain Name could not
page 4 have been chosen haphazardly because NATIXIS has no meaning. The most likely reason for registering it would have been to create confusion in the public’s mind in order to carry out unlawful activities. The Complainant refers to WIPO Overview 3.0, section 3.3, and notes that, from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of passive holding. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Registrar’s Master Domain Registration Agreement incorporates by reference paragraph 4 (a) of the Policy: “You are 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 (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar It is well-accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy, that is to say, the mark NATIXIS which has been registered in France, the European Union and internationally. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “portal”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the Disputed Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
page 5 Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. 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. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the Disputed Domain Name, and finds that in the circumstances of this case, the passive holding of the Disputed Domain Name does not prevent a finding of bad faith under the Policy. The Panel finds that the Complainant has established the third element 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. /Jane Lambert/ Jane Lambert Sole Panelist Date: November 29, 2024
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