The Complainant is NATIXIS, France, represented by Inlex IP Expertise, France.
The Respondent is WhoisSecure, United States of America (“United States”) / Ade Banjo, Nigeria.
The disputed domain name <loanatixisinvestment.com> is registered with OwnRegistrar, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2020. On October 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 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 October 20, 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 October 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 November 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2020. Informal communications sent by the Respondent were received by the Center on October 21, 2020, and November 8, 2020.
The Center appointed Andrew F. Christie as the sole panelist in this matter on December 7, 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 is a French corporate and financial services company, with more than 17,000 employees in 38 countries. It is the corporate, investment and financial services arm of the BPCE Group, one of France’s largest banking organizations.
The Complainant is the owner of a number of trademark registrations for the word trademark NATIXIS, including French Trademark Registration No. 3416315 (filed on March 14, 2006), and European Union Trade Mark Registration No. 5129176 (registered on June 21, 2007).
The Complainant is the owner of the domain names <natixis.com>, registered on February 3, 2005, and <natixis.fr>, registered on October 20, 2006.
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) it reproduces the Complainant’s NATIXIS trademark, which has no meaning and is highly distinctive; (ii) the element “loa”, which is associated with the first letter of “natixis” refers to the term “loan”, which is generic and directly related to the services offered by the Complainant; (iii) the addition of the word “investment”, which refers to the Complainant’s activities, does not prevent a finding of confusing similarity; and (iv) the additional elements “loan” and “investment” do not add any distinctiveness, and the consumer will be led to think that the disputed domain name is owned by the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) it appears that the Respondent, whose identity was disclosed by the Registrar, is not the owner of any NATIXIS or LOANATIXISINVESTMENT trademarks; (ii) there is no business or legal relationship between the Complainant and the Respondent; (iii) the Complainant has neither authorized nor licensed the Respondent to use its trademarks in any way; and (iv) following the disclosure of the Respondent’s identity it appears that the Respondent’s address does not exist.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the disputed domain name has been registered with the aim of taking advantage of the reputation of the Complainant’s well-known NATIXIS trademark, the notoriety of which has been recognized in many decisions by the Center; (ii) the Complainant enjoys a wide reputation in France and around the world, so it seems unlikely that the Respondent was unaware of the Complainant’s activities and of the existence of the NATIXIS trademark and domain names at the time of registration of the disputed domain name; (iii) 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; (iv) the website resolving from the disputed domain name looks like a bank website, but it is not a genuine website as the mandatory Terms and Conditions are missing and many of its links do not work; (v) the disputed domain name has been registered for fraudulent purposes, in order to mislead the consumer and, in all likelihood, to divert the Complainant’s consumers so as to collect personal banking data or to obtain payments fraudulently; and (vi) the Respondent knew, or should have known, of the Complainant’s trademark rights, and nevertheless used a domain name incorporating a trademark in which it had no rights or legitimate interests.
The Respondent did not submit a formal Response to the Complaint. The Respondent did, however, send two unsigned email communications to the Center. The first, on October 21, 2020, states, amongst other things: “your domain name stated natixis is not cloned I can assume its just a coincidence and you can see the domain is loan atixis investment”. The second, on November 8, 2020, states: “Dear Sir / Madam. I will like to inform you that the domain will be cancelled hope its all good and fine by you Thanks”.
Once the generic Top-Level Domain (“gTLD”) “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark NATIXIS preceded by the letters “loa” and followed by the word “investment”. The Complainant’s word trademark NATIXIS is clearly recognisable in the disputed domain name. The addition of the first three letters “loa”, which Internet users are likely to read as “loan” as they link up to the first letter of the Complainant’s trademark, and the addition of the word “investment” after the Complainant’s trademark, does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its NATIXIS word trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to a website that resembles a banking website but which, almost certainly, is fraudulent as it omits key elements of a genuine banking website. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. As described above, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name was registered many years after the Complainant first registered its NATIXIS word trademark. The evidence on the record provided by the Complainant with respect to its use of its NATIXIS word trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s NATIXIS word trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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, <loanatixisinvestment.com>, be transferred to the Complainant.
Andrew F. Christie
Date: December 21, 2020
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