WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. Claus Linder
Case No. D2016-2281
1. The Parties
The Complainant is Natixis of Paris, France, represented by INLEX IP, France.
The Respondent is Claus Linder of Fichtenau, Germany.
2. The Domain Name and Registrar
The disputed domain name <natixis.online> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2016. On November 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 10, 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 14, 2016, the Complainant submitted an amended Complaint.
The Center verified that the Complaint together with the amended Complaint (hereafter referred to as 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 November 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2016.
The Respondent submitted an informal communication on December 7, 2016.
The Center appointed Nicholas Smith as the sole panelist in this matter on December 12, 2016. 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 corporate and financial services company based in France that has traded under its name since 1954.
The Complainant is the owner of a number of trade mark registrations consisting of the word “Natixis” (the “NATIXIS Mark”), which was first registered in France in 2006 and the European Union in 2007. It is also the owner of the domain names <natixis.com> and <natixis.fr>, registered in 2005 and 2006 respectively.
The Domain Name <natixis.online> was registered on May 2, 2016. The Domain Name does not resolve to a functioning webpage, rather the webpage accessible from the Domain Name (the “Respondent’s Website”) simply contains a logo and the words “Intellectual Property Online”.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s NATIXIS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the NATIXIS Mark, having registered the NATIXIS Mark in France, the European Union and internationally. The Complainant’s reputed services are well-known in France, the European Union and internationally.
The Domain Name consists of the NATIXIS Mark in its entirety. The Domain Name is thus identical to the NATIXIS Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name or a domain name corresponding to the NATIXIS Mark. The Domain Name is inactive, and therefore it is obvious that the Respondent has no rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. The NATIXIS Mark is well-known and it is unlikely that the Respondent registered the Domain Name in ignorance of the Complainant. The Respondent has been involved in at least four UDRP complaints in which he registered variants of well-known trade marks. The Respondent’s conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not provide a formal response to the Complainant’s contentions.
On December 7, 2016, he sent a communication to the Center in German (the language of the proceeding in this case being in English) to the effect that the Center was biased, did not support intellectual property rights and that as a result he would not participate in the present proceeding. The Respondent’s communication offered no explanation as to the reasons behind the registration of the Domain Name or its current use.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the NATIXIS Mark, having registrations for the NATIXIS Mark as a trade mark in France and as a European Union Trade Mark (“EUTM”).
The Domain Name consists of the NATIXIS Mark, with the addition of the generic Top-Level Domain (“gTLD”) “.online”. As the presence of the gTLD may be discounted in comparing a domain name with a corresponding trade mark the Domain Name is identical to the Complainant’s NATIXIS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the NATIXIS Mark or a mark similar to the NATIXIS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use or a bona fide offering of goods and services, indeed there is no evidence that the Domain Name has been used for any purpose.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), 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:
(i) circumstances indicating that the Respondent has registered or has 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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 on-line 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. (Policy, paragraph 4(b))
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the NATIXIS Mark at the time the Respondent registered the Domain Name. “Natixis” is not an ordinary English, French or German word. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name that reproduced the NATIXIS Mark unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and the NATIXIS Mark.
The Panel notes that the Respondent has been a named respondent in at least four prior cases under the UDRP. In each case a finding was made that the Domain Name was registered and used in bad faith. In circumstances where the Respondent has offered no explanation for the registration of the Domain Name nor has the Domain Name been used in any active manner the Panel finds that the Respondent has registered and is passively holding the Domain Name in order to prevent the Complainant, being owner of the NATIXIS Mark, from reflecting that mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct. As such Panel finds that the Domain Name has been used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name <natixis.online> be transferred to the Complainant.
Date: December 15, 2016