The Complainant is Natixis, France, represented by Inlex IP Expertise, France.
The Respondent is Wallace Moore, ML LLC, Canada.
The disputed domain name <natixis-online-ca.com> (“Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2020. On September 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 23, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2020.
The Center appointed Martin Schwimmer as the sole panelist in this matter on October 30, 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.
The Complainant, one of France’s largest financial companies, has registered and use the NETIXIS trademark since 2006.
The Disputed Domain Name, registered on July 27, 2020, resolves to an inactive webpage. The Complainant alleges that an email server attached to the Disputed Domain Name has been created and used.
The Complainant is a French corporate and financial services company which is part of BPCE Group. The Complainant employs more than 17,000 people over 38 countries. It is considered to be France’s second-largest bank.
The Disputed Domain Name reflects the Complainant’s famous NATIXIS trademark.
The Complainant is the owner of many trademarks consisting or including the word “natixis”, such as: French trademark No. 3416315 for NATIXIS, registered on March 14, 2006, in classes 9, 16, 35, 36, and 38, and renewed on May 13, 2016; European Union trademark No. 5129176 for NATIXIS, registered on June 21, 2007, in classes 9, 16, 35, 36, and 38, and renewed on June 12, 2016; and International Registration No. 1071008 for NATIXIS and logo, registered on April 21, 2010, in classes 9, 16, 35, 36, and 38.
The Complainant’s NATIXIS mark is famous. Numerous UDRP Panels have previously recognized the notoriety of NATIXIS Group (see, e.g., Natixis v. Marcel Brient, WIPO Case No. D2019-0053; Natixis v. Whoisguard Protected, Whois Guard, Inc. / Jacques Ralph, WIPO Case No. D2019-0048; Natixis v. Satheesh Mani, Sri Angala Parameshwari Enterprise, WIPO Case No. D2018-0726; Natixis v. Contact Privacy Inc. Customer 0150420537 / Arnaud Melis, WIPO Case No. D2018-0725; Natixis v. Registration Private, Domains By Proxy, LLC / Chuon Sophear; WIPO Case No. D2018-0691).
The Complainant operates a website at “www.natixis.com” (and re-directs its domain name <natixis.fr> to that website as well). These domain names were registered in the name of the Complainant in 2005 and 2006 respectively.
The Disputed Domain Name was registered on July 27, 2020. It does not resolve to a webpage. Email exchange databases indicate that an email server has been created for the Disputed Domain Name. This creates the possibility that the Respondent can use the Disputed Domain Name for fraudulent purposes such as phishing.
The Respondent is not authorized or licensed to utilize the NATIXIS trademark by the Complainant.
Contact information provided by the Respondent is inaccurate and incomplete.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has submitted evidence of its prior registered NATIXIS trademarks which are protected in France and in many other countries, including Canada. It has also demonstrated its use of the NATIXIS mark at its website at “www.natixis.com”. Promotional activity targeted at Canada can be viewed at “https://americas.cib.natixis.com/canada”.
The Disputed Domain Name incorporates entirely the Complainant’s well-known NATIXIS trademark, and the addition of the letter strings “online” and “ca”. The word “online”, the two letters “ca” (which comprises the ISO code for Canada), and the hyphens do not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademarks.
The generic Top-Level Domain (“gTLD”) “.com” is generally disregarded when determining identity or confusing similarity under the first element.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s NATIXIS trademark.
The condition of paragraph 4(a)(i) of the Policy has therefore been satisfied.
The Complainant indicates that the Disputed Domain Name does not correspond to the name of the Respondent, nor to any trademark registered in its name. Furthermore, there is no business or legal relationship between the Parties. The Complainant has also never authorized nor licensed the Respondent to use the Complainant’s trademarks. Lastly, no actual evidence of any fair or noncommercial or bona fide use of the Disputed Domain Name exists.
The Respondent has created an email server for the Disputed Domain Name. Noting the composition of the Disputed Domain Name, an email utilizing the address in the form “[username]@natixis-online-ca.com”, would easily be perceived as originating with the Complainant.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. As the Respondent has defaulted, it has not rebutted that case.
The condition of paragraph 4(a)(ii) of the Policy has been satisfied.
The Complainant asserts that its NATIXIS trademark is famous. Numerous UDRP Panels have previously recognized the notoriety of NATIXIS (see, e.g., Natixis v. Marcel Brient, WIPO Case No. D2019-0053; Natixis v. Whoisguard Protected, Whois Guard, Inc. / Jacques Ralph, WIPO Case No. D2019-0048; Natixis v. Satheesh Mani, Sri Angala Parameshwari Enterprise, WIPO Case No. D2018-0726; Natixis v. Contact Privacy Inc. Customer 0150420537 / Arnaud Melis, WIPO Case No. D2018-0725; Natixis v. Registration Private, Domains By Proxy, LLC / Chuon Sophear, WIPO Case No. D2018-0691). The Panel holds that the NATIXIS trademark is well-known.
The Panel may make negative inferences against the Respondent as (1) it has defaulted in this Proceedings; and (2) it provided incomplete and inaccurate information when registering the Disputed Domain Name.
The Disputed Domain Name is not being used in connection with a website. The record also shows that an email server has been created by the Respondent. As noted above, the Panel finds that, noting the composition of the Disputed Domain Name, an email originating from an address in the form “[username]@natixis-online-ca.com” would likely be understood to have originated with the Complainant.
If it is the case that the Respondent is using the Disputed Domain Name as an email address, then such use would comprise a bad-faith exploitation of the Complainant’s reputation in its well-known mark.
If it is the case that the Respondent is simply passively holding the Disputed Domain Name, previous UDRP panels have ruled that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Action S.A. v. Robert Gozdowski, WIPO Case No. D2008-0028. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.3 stipulates that:
“[w]hile panelists will look at the totality of the circumstances in each case, 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.”
Accordingly, the Panel holds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <natixis-online-ca.com> be transferred to the Complainant.
Date: November 2, 2020
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