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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NATIXIS v. Li Ru Xuan

Case No. DPW2016-0006

1. The Parties

The Complainant is NATIXIS of Paris, France, represented by Inlex IP Expertise of France.

The Respondent is Li Ru Xuan of Anqing, Anhui, China.

2. The Domain Name and Registrar

The disputed domain name <natixis.pw> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2016. On November 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 2016, 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.

On November 22, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 23, 2016, 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 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 December 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2017.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 12, 2017. 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 services company. The Complainant is an arm of Groupe BPCE, which is the second largest banking group in France. It has more than 15,000 employees and operates in 36 countries in the Americas, Europe, Middle East, Africa and Asia-Pacific. The commercial name NATIXIS registered in France in 1954.

The Complainant was awarded the 2014 Label of Excellence by Dossiers de l’Épargne for the Complainant’s Assur-BP Habitat, Multipro and Protection Juridique contracts and its Solévia life insurance policy and was also designated the Best Euro Lead Manager for Covered Bonds in 2013.

The Complainant owns several French, Community and International trademark registrations for the mark NATIXIS, including French Trademark Registration No. 3416315 for the mark NATIXIS (filed March 14, 2006), Community Trademark Registration No. 5129176 for the mark NATIXIS (filed June 12, 2006), and International Trademark Registration No. 1071008 for the mar NATIXIS stylized (filed April 21, 2010), which is designated for protection in Australia, China, Russian Federation, Singapore, Turkey, Viet Nam and other countries. The Complainant also owns the following domain names: <natixis.com> (registered February 3, 2005) and <natixis.fr> (registered October 20, 2006).

The Respondent registered the disputed domain name on May 13, 2016. At the time the Complaint was filed, the disputed domain name resolved to a website that contained “NATIXIS” throughout, finance and banking industry terms in French, and a stock image of a business man. When later viewed by the Panel, the website continued to contain the word “NATIXIS” and the image of the business man and also contained financial and banking industry terms in English. Both websites contained hyperlinks directing users to third party websites. While the disputed domain name was so parked, the resolving websites advertised that the disputed domain name was for sale.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. The Complainant has rights in the NATIXIS mark and owns several trademark registrations for the same. The Complainant’s services offered under the NATIXIS mark are well-known internationally. The disputed domain name is identical to the NATIXIS mark.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no business or legal relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to use the NATIXIS mark. The Respondent is not making active use of the disputed domain name; therefore, it is obvious that the Respondent has no legitimate interest in registering or using the disputed domain name. The Respondent’s intention is to attract consumers and to take advantage of the Complainant’s reputation for the Respondent’s own commercial gain.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name is registered with the aim of taking advantage of the reputation of the Complainant’s well-known trademark NATIXIS. The Complainant’s NATIXIS trademark is well-known in France and in several other countries. That the mark is well-known can be established with a simple Internet search. It is unlikely that the Respondent was unaware of the Complainant and of the existence of the NATIXIS trademark at the time the Respondent registered the disputed domain name. The registration of a domain name that includes a well-known mark clearly shows the Respondent’s bad faith. Moreover, the disputed domain name is used in bad faith. There is no real and substantial offer of goods and/or services on the website associated with the disputed domain name. The disputed domain name points to a parking page inspired by the spirit of the Complainant with the use of French language and a picture of a business man, evoking the banking sector. The website referred to the Complainant. Because the Respondent is in China and the country-code Top-Level Domain (“ccTLD”) “.pw” does not immediately target French consumers, it is clear that the registration of the disputed domain name composed of the NATIXIS mark and its redirection to a parking page in French language with reference to the Complainant is not a coincidence. The sole purpose of the registration of the disputed domain name is to take advantage of the reputation of the Complainant’s mark and to mislead consumers.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. In this case the language of the Registration Agreement is Chinese. However, the Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment or request that the language of the proceeding be Chinese. Additionally, the Respondent’s conduct suggests that the Respondent understands English. The disputed domain name resolves to a website that, when accessed by the Panel, contains English words and the Respondent’s email address is composed of English words. Finally, substantial additional expense and delay likely would be incurred if the Complaint must be translated into Chinese. The Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English, in light of these circumstances.

6.2 Substantive Issues

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(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 disputed domain name is identical to a trademark in which the Complainant has rights.

The Complainant has rights in the NATIXIS trademark. It is the registered owner of trademark registrations for the NATIXIS trademark. Use and registration of the NATIXIS trademark by the Complainant precedes the Respondent’s registration of the disputed domain name by many years. The Panel accepts that the Complainant’s trademark is internationally well-known.

The disputed domain name is composed exclusively of the term “natixis,” which is identical to the Complainant’s NATIXIS trademark, and the ccTLD “.pw”. However, as a technical part of a domain name, a ccTLD is not relevant in determining whether the disputed domain name is identical or confusingly similar to the NATIXIS trademark and is without legal significance. See, e.g., CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Therefore, the disputed domain name is identical to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:

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

(ii) The Respondent 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 Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is not used in connection with a website that makes any active offer of goods or services. Instead the disputed domain name resolves to a parking website. Additionally, the Respondent has not demonstrated preparation to use the disputed domain name in connection with a bona fide offering of goods or services.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant contends, and the Respondent does not deny, that the Complainant is in no way related to the Respondent and never authorized the Respondent to use the NATIXIS trademark.

The Respondent is not making any noncommercial or fair use of the disputed domain name. Instead, the Respondent is using the disputed domain name commercially in connection with a domain name parking service. The disputed domain name resolves to a website that includes links to third-party websites, presumably to generate pay-per-click revenue, and that advertises the disputed domain name for sale.

C. Registered and Used in Bad Faith

The Respondent registered and is using the disputed domain name in bad faith.

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

(i) Circumstances indicating that the Respondent has registered or has acquired the disputed 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) The Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in the disputed domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the disputed 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 such website or location or of a product or service on such website or location.

The Respondent was undoubtedly aware of the Complainant and its NATIXIS trademark at the time of registration of the disputed domain name and that such registration was in bad faith. The Complainant and its NATIXIS trademark are known widely and throughout the world. Additionally, the Complainant owns trademark registrations for its NATIXIS trademarks in many jurisdictions, including in China where the Respondent is located. A simple Internet search for “NATIXIS” would have yielded many obvious references to the Complainant. Moreover, the resolving website indicates that the Respondent was aware of the Complainant. The website includes the NATIXIS mark and references to financial activities. The Respondent’s intentional registration of a domain name incorporating the Complainant’s well-known mark, being fully aware of the Complainant’s rights in the mark, without any right or legitimate interest in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

The Respondent is parking the disputed domain name and the resolving website includes hyperlinks to third-party websites, presumably for the purpose of generating pay-per-click commissions. The Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Initially, Internet users would be likely to be drawn to the Respondent’s website because of the confusing similarity between the disputed domain name and the Complainant’s NATIXIS mark. See Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181. By prominently featuring the Complainant’s NATIXIS mark and various terms related to the Complainant’s financial activities on the resolving website the Respondent affirmatively created an impression that the Respondent’s website and the disputed domain name were associated with the Complainant. Therefore, once they arrived at the Respondent’s website, Internet users would be led to believe mistakenly that the website is controlled by or affiliated with the Complainant. By creating this false impression, the Respondent could commercially benefit by pay-per-click commissions earned from consumers clicking the hyperlinks on the website. These activities amount to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy. Additionally, offers to sell to the public at large a domain name that is identical or confusingly similar to a third-party mark may constitute bad faith within the meaning of Paragraph 4(b)(iii). See BHP Billiton Innovation v. Ravindra Bala, WIPO Case No. D2008-1059. The disputed domain name resolves to a website offering it for sale. Given that it is virtually impossible that the Respondent was not aware of the Complainant and its mark, the Panel concludes that the Respondent holds the disputed domain name for the purpose of reselling it at a profit to the Complainant or one of its competitors. These activities amount to bad faith use of the disputed domain name.

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, <natixis.pw>, be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: January 20, 2017

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