WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Natixis v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Johnson, Johnson web

Case No. D2020-0099

1. The Parties

The Complainant is Natixis, France, represented by Inlex IP Expertise, France.

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) / Johnson, Johnson web, United States.

2. The Domain Name and Registrar

The disputed domain name <natixisfrance.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2020. On January 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2020, 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 January 17, 2020 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 January 21, 2020.

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 January 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2020.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on February 26, 2020. 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 corporate and investment bank.

The Complainant obtained registrations for the trademark NATIXIS in numerous regions of the world, including the European Trademark Registration Number 005129176, registered on June 21, 2007 and the International Trademark Registration Number 1771008, registered on April 21, 2010.

The Respondent registered the disputed domain name <natixisfrance.com> on December 24, 2019.

The Panel accessed the disputed domain name on March 10, 2020, at which time the disputed domain name did not resolve to any active website. According to the Complaint, an email configuration has been activated for the disputed domain name and the disputed domain name used to redirect to the Complainant’s official website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant is a French corporate and financial services company, owner of several French, European and International prior NATIXIS trademark rights since 2006. The Complainant widely uses NATIXIS trademarks in connection with banking and financial services through its official website <natixis.com>. The Complainant’s reputed services proposed under the trademarks NATIXIS are well known in France, European-Union and internationally. The disputed domain name reproduces the Complainant’s trademark NATIXIS which does not have any meaning and is therefore highly distinctive. The term “France” is descriptive. Therefore, consumers will assume there are economic, legal or other ties between the Complainant and the Respondent.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. First, the Respondent has no right in respect of the term “natixis”. It is also worth pointing out that there is no business or legal relationship between the Complainant and the Respondent. The Complainant have neither authorized nor licensed the Respondent to use its trademarks in any way. In this regard, in the absence of any license from the Complainant to use the trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name can reasonably be claimed. Finally, the disputed domain name has been registered in bad faith in order to mislead the Complainant’s consumers. For all the above-mentioned reasons, it should be concluded that the Respondent has no rights or legitimate interest in respect of the disputed domain name.

- The disputed domain name was registered and is being used in bad faith. The disputed domain name has been registered with the aim of taking advantage of the reputation of the Complainant’s well-known trademark NATIXIS. The disputed domain name is currently not active, but the passive holding of a domain name does not prevent a finding of bad faith in order to take advantage of the reputation of the Complainant. The trademarks NATIXIS are well known in France and in several other countries. Therefore, it seems unlikely that the Respondent was unaware of the Complainant’s activities and of the existence of the trademarks and domain names NATIXIS at the time he registered the disputed domain name. 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 constitutes an additional inference of bad faith. The disputed domain name is also being used in bad faith. The Respondent reproduces the Complainant’s well-known NATIXIS trademark without any authorization. Doing so, the Respondent has intentionally attempted to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s well-known trademark as to the source, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. In addition, a finding of bad faith use can be made inter alia where a respondent knew or should have known of a complainant’s trademark rights, and nevertheless used a domain name incorporating a mark, in which he had no rights or legitimate interests. Furthermore, the disputed domain name redirected to the official website of the Complainant, making obvious that the disputed domain name has been registered for commercial purpose in order to mislead the consumer and for diverting the Complainant’s customers. In all likelihood, the Respondent takes advantage of the well-known trademarks NATIXIS for a phishing scheme, considering that email servers that have been put in place in connection with the disputed domain name were recently blacklisted.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(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.

A. Identical or Confusingly Similar

The Panel has no doubt that “NATIXIS” is a term directly connected with the Complainant’s banking services.

Annex 4 to the Complaint shows European and International trademark registrations for NATIXIS obtained by the Complainant as early as in 2007 and 2010, respectively.

The trademark NATIXIS is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark NATIXIS merely by the addition of the suffix “france” and the generic Top-Level Domain (“gTLD”) extension “.com”.

Previous UDRP decisions have found that the mere addition of geographical or descriptive terms (such as the country name “France”) to a trademark in a domain name does not avoid a finding of confusing similarity (see, e.g., BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284; and Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287).

It is also already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant showed that the disputed domain name redirected to the Complainant’ official website and has been used in connection with email servers included in blacklists.

The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any reason to justify why the specific term “natixisfrance” was chosen to compose the disputed domain name.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted 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 its website or location or of a product or service on its website or location.

When the disputed domain name was registered by the Respondent in December 2019, the trademark NATIXIS was already widely known and directly connected to the Complainant’s banking services.

The disputed domain name encompasses the trademark NATIXIS, which is a neologism with no dictionary meaning. The addition of the term “france” even enhances the risk of confusion in the present case, suggesting that the disputed domain name refers to a French affiliate of the Complainant.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.1.4, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

Therefore, the Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademarks and that the adoption of the disputed domain name <natixisfrance.com> was a mere coincidence.

Currently, no active website is linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith.

In the Panel’s view, the circumstances that the Respondent is

(a) not presently using the disputed domain name;

(b) not indicating any intention to use it; and

(c) not at least providing justifications for the registration of a domain name containing a third-party trademark together with a geographic indicator, certainly cannot be used in benefit of the Respondent in the present case.

Such circumstances, associated with

(d) the use of a privacy service; and

(e) the lack of any plausible interpretation for the adoption of the term “natixisfrance” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied 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 <natixisfrance.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: March 14, 2020