WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Natixis v. 张伟 (Zhang Wei)

Case No. D2020-2946

1. The Parties

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

The Respondent is 张伟 (Zhang Wei), China.

2. The Domain Name and Registrar

The disputed domain name <natixid.com> (the “Disputed Domain Name”) is registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2020. On November 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 8, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name. The Center sent an email communication to the Complainant on November 10, 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 in English on November 10, 2020.

On November 10, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On November 10, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on November 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2020.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on January 20, 2021. 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 financial service company, part of BPCE Group, with more than 17,000 employees in 38 countries. The Complainant also ranks first book runner for syndicated real-estate finance loans in the EMEA region and is a leader in equity research in France in 2017.

The Complainant is the registered owner of the following trademarks, composed of the term NATIXIS:

(1) NATIXIS, French Trademark Registration No. 3416315, registered on March 14, 2006.

(2) NATIXIS, European Union Trade Mark Registration No. 005129176, registered on June 21, 2007.

(3), International Trademark Registration No. 1071008, registered on April 21, 2010.

The Complainant also owns the following domain names redirecting to NATIXIS official website:

(1) <natixis.com>, registered on February 3, 2005.

(2) <natixis.fr>, registered on October 20, 2006.

The Complainant uses the NATIXIS trademark widely in connection with banking and financial services.

The Respondent is an individual in China, and the Disputed Domain Name <natixid.com> was registered on September 24, 2020. The Disputed Domain Name resolves to a parking page containing links mentioning the Complainant’s trademark and connecting to websites in the field of financial services.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions could be summarized as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant owns several NATIXIS trademarks filed since 2006, and the Complainant’s services provided under the NATIXIS trademark are well-known in France, European Union and internationally. The Disputed Domain Name <natixid.com> is highly similar to the Complainant’s trademark NATIXIS, which is highly distinctive and does not have any meaning other than as the Complainant’s trademark. The Disputed Domain Name is almost identical to the Complainant’s trademark apart from the final letter “d” instead of “s”. The “natixid” is a misspelling of the word “natixis”. In addition, when searching for “natixid”, the Internet browser Google automatically suggests amending the search and discloses results for NATIXIS.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Respondent is not the owner of any NATIXIS or NATIXID trademark. There is no business or legal relationship between the Complainant and the Respondent, and the Respondent has not been licensed or authorized by the Complainant to use the Complainant’s trademark in any form. The Respondent was not commonly known by the Disputed Domain Name prior to the adoption and use by the Complainant of the NATIXIS trademark.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

Many prior UDRP decisions recognized the well-known status of the Complainant and its NATIXIS trademarks. Moreover, the Complainant is second-largest banking player in France. Hence, the trademarks NATIXIS are well-known in France and in several other countries. In addition, 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 creates an inference of bad faith. The Disputed Domain Name <natixid.com> points to a page containing links to other sites promoting financial services and may contain malware. Emails such as “[…]@natixid.com” can be sent/received. Thus, it is obvious that the Respondent is intentionally attempting to take advantage of the well-known character of the trademark NATIXIS of the Complainant in order to attract the Internet user to the website spreading malware, or engage in phishing or other activities in bad faith. Such use may be very detrimental to the Complainant’s clients and should be deemed use in bad faith. In addition, the Respondent was involved in two other UDRP proceedings, which have held him to have registered other domain names in bad faith. This shows that the Respondent engages in a pattern of bad faith behavior as a serial cyber squatter.

B. Respondent

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

6. Preliminary Issue: Language of the Proceeding

Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

Paragraph 10(b) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”; and paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”.

The Registration Agreement for the Disputed Domain Name is in Chinese. The Complainant requested that the language of the proceeding be English. The Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. Given the following factors, the Panel decides that the language of the proceeding be English.

(1) The Disputed Domain Name <natixid.com> is comprised completely of English words;

(2) Neither the Complainant nor its legal representatives are in a position to conduct the proceeding in Chinese without additional expense and delay due to the need for translation of the Complainant into Chinese. Hence, the use of Chinese in the proceeding would impose burden on the Complainant, which will be deemed excessive in view of the cost for the present proceeding;

(3) Previous UDRP panels have already accepted English as the language of proceeding in cases involving DNSPod, Inc. as the Registrar of the disputed domain name (see Instagram, LLC v. Wu Hai Tao (吴海涛), WIPO Case No. D2020-2040; Siemens AG v. 郑嵩 (zhengsong), WIPO Case No. D2020-1777);

(4) The Disputed Domain Name resolves to a website that appears to be a paid parking site with links to other websites promoting financial services in English, which suggests the website is directed to global Internet users;

(5) The Center sent an email communication to the Parties in both Chinese and English on November 10, 2020 inviting them to comment on the language of the proceeding. The Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. The Center also formally notified the Respondent in both Chinese and English of the Complaint on November 16, 2020. However, the Respondent has chosen not to file a Response.

Given these facts, the Panel is satisfied that the Respondent has been given an opportunity to participate and has chosen not to respond. Therefore, it would not be prejudicial to the Respondent in his abilities to articulate his arguments in Chinese or English in the administrative proceeding, whereas requiring the Complainant to translate the Complaint and all supporting materials into Chinese would cause unnecessary delay to the administrative proceeding. (See, Dolce & Gabbana S.r.l. v. Zhang Yali, WIPO Case No. D2013‑1101). The Panel does not consider it prejudicial to the Respondent to adopt English as the language of the proceeding, and determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English.

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present:

(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 Complainant alleges that the Disputed Domain Name <natixid.com> is identical or confusingly similar to its NATIXIS trademarks.

The Complainant has established that it is the owner of the trademarks NATIXIS.

The Disputed Domain Name is confusingly similar to the Complainant’s NATIXIS trademark. Both the Complainant’s trademark and the Disputed Domain Name have six identical letters placed in the same order, which creates a high visual similarity. Although “natixid” is not identical with “natixis”, the letters “d” and “s” are placed next to each other on QWERTY AZERTY keyboards. Hence, the element “natixid” is an obvious misspelling of the word “natixis”. Additionally, the generic Top‑Level Domain (“gTLD”) “.com” does not distinguish the Disputed Domain Name from the Complainant’s trademark. Therefore, the misspelling and the extension “.com” do not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademarks. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.11.1 and 1.8.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s NATIXIS trademarks, and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interest in respect of the [disputed] domain name[.]”.

Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of paragraph 4(a)(ii) [of the Policy]:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

The Complainant has established that it is the owner of the NATIXIS trademarks, and that is has neither licensed nor authorized the Respondent to make any use of such trademarks or apply for registration of the Disputed Domain Name.

There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the name of “natixid” or similar. The Disputed Domain Name resolves to a parking page containing links to other sites for commercial gain.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

The Respondent did not submit any allegation or evidence to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name or that it is used in connection with a bona fide offering of goods or services or for legitimate noncommercial or fair use as demonstrated in paragraph 4(c) of the Policy.

Having considered the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable
[administrative-dispute-resolution service providers], in compliance with the [Rules], that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”.

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

[…]

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location”.

The Complainant’s NATIXIS trademarks have been registered in many countries around the world. These registrations were made long prior to the registration of the Disputed Domain Name. The Complainant has invested heavily in establishing the reputation of its NATIXIS trademark, which does not have any other meaning other than to refer to the Complainant’s services. Hence, it seems unlikely that the Respondent was unware of the existence of the trademarks at the time of the Disputed Domain Name registration was made. The Respondent chose the “natixid” element as the distinctive part of the Disputed Domain Name. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected the “natixid” element for any reason other than the reputation of the Complainant’s trademarks. The Panel finds that the Disputed Domain Name has been registered in bad faith.

The Disputed Domain Name resolves to a parking page with commercial links advertising financial services, some of which mention the Complainant’s NATIXIS trademark and others are related to the Complainant’s competitors. The website to which the Disputed Domain Name resolves may contain malware. Additionally, it appears that the Respondent was involved in two other UDRP proceedings, which have held him to have registered other domain names in bad faith.

Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.

8. 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 <natixid.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: February 3, 2021