WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. Nashan
Case No. D2017-1227
1. The Parties
The Complainant is Natixis of Paris, France, represented by Inlex IP Expertise, France.
The Respondent is Nashan of Shenyang, Liaoning, China.
2. The Domain Name and Registrar
The disputed domain name <natixis.website> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2017. On June 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2017, 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 June 28, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on June 29, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on July 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on July 31, 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 company offering financial and banking services. It owns and has registered trade mark rights in NATIXIS (e.g., European Union Trade Mark No. 5129176, registered on June 21, 2007, and French Trade Mark No. 3416315, registered on March 14, 2006.
The Complainant is present across 38 countries with more than 15,000 employees. It is the corporate, investment and financial services arm of Groupe BPCE, one of France’s banking players.
The Complainant also owns domain names such as <natixis.com> (registered on February 3, 2005) and <natixis.fr> (registered on October 20, 2006). The Complainant asserts its NATIXIS mark is well-known in France, the European Union and internationally.
The disputed domain name was registered on January 21, 2017, and resolves to a parking page displaying sponsored links, on which the disputed domain name is offered for sale.
5. Parties’ Contentions
1. The disputed domain name is identical and/or highly similar to the NATIXIS trade mark in which the Complainant has rights.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no business or legal relationship with the Complainant. The Respondent has not been authorized by the Complainant to use the NATIXIS mark. The disputed domain name resolves only to a parking page.
3. The disputed domain name was registered and is being used in bad faith. It was registered with the aim of taking advantage of the reputation of the well-known trade mark of the Complainant. The Respondent was unlikely to have been unaware of the Complainant and its NATIXIS trade mark when it registered the disputed domain name. The passive holding of the disputed domain name does not prevent a finding of bad faith. The fact that the disputed domain name is offered for sale shows bad faith use and registration. The Respondent has registered domain names corresponding to well-known trade marks, e.g., see PVH Corp., Calvin Klein, Inc., Calvin Klein Trademark Trust, Tommy Hilfiger Licensing, LLC v. Zhao Zhong Xian, nashan, Liu Hong Bao, WIPO Case No. D2017-0465 involving the domain names <calvinklein.site>, <tommyhilfiger.club>, <tommyhilfiger.site> and <tommyhilfiger.website>; and E. Remy Martin & C° . v. Liu Hong Bao, nashan, Na Shan, Yuqing, Naziyu, ZhangXin, WIPO Case No. D2016-1948 involving the domain names <remymartin.online>, <remymartin.site> and <remymartin.website>
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement is Chinese, whereas the Complainant requested that English be the applicable language of the proceeding. The reasons given were that the disputed domain name is in Latin characters, which leads to a presumption that the Respondent is familiar with a language outside of Chinese; the domain extension “.website” suggests an English website; and the parking page to which the disputed domain name resolves is in French, which shows that the Respondent is conversant and proficient in European languages. Since English is a commonly-used language of business, more so than French, it would be more expedient to use English. Significant expense and delay would be caused if the Complainant were required to translate the Complaint and Annexes into Chinese. The language requirement should not lead to undue burdens on the Complainant.
The Respondent did not respond on the issue of the language of the proceeding.
The Panel has discretion to determine that a language other than that of the Registration Agreement will apply as the language of the proceeding, having regard to the circumstances of the case: see paragraph 11(a) of the Rules, which states that “unless 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.”
At the same time, the Panel has an obligation to ensure that administrative proceedings take place with due expedition (paragraph 10 of the Rules), whilst bearing in mind the need to consider the interests of the respective parties.
The Panel is persuaded in this case that the Respondent would not be prejudiced by English being the language of the proceeding. The disputed domain name does not contain Chinese words but, rather, an invented, fanciful word in combination with a generic Top-Level Domain (“gTLD”) in English, “.website”. It also appears that the intention of the Respondent in registering the disputed domain name was to target the European Internet community. One can therefore reasonably proceed on the assumption that the Respondent has a requisite minimal level of the command of English. The fact that the Respondent is associated with other English-language domain names such as <calvinklein.site>, <tommyhilfiger.club>, <tommyhilfiger.site> and <tommyhilfiger.website>, all of which comprise well-known brands from the United States of America, is also indicative that the assumption is not misplaced.
To require the Complainant to translate the Complaint and supporting evidence into Chinese would cause a significant delay in the proceeding. The Center has provided to the Respondent communications in Chinese and English. The Respondent has had the opportunity to respond in the proceeding and on the issue of the language to be applied. The Respondent, however, did not file any response.
On a balance of the respective Parties’ interests, the Panel finds that it would be reasonable and appropriate for English to apply as the language of the proceeding.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Complainant has shown it has rights in the NATIXIS trade mark. The entire word has been incorporated into the disputed domain name without any variation. The addition of the “.website” gTLD, which is a technical requirement of domain names, does not serve to remove the identity with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not authorize the Respondent to use the NATIXIS trade mark or to register the disputed domain name. There is no evidence that the Respondent has been known by the name “natixis”, or that there has been demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services.
The burden accordingly shifts to the Respondent to establish, with evidence, circumstances showing that it has rights or legitimate interests in the disputed domain name. The Respondent failed to do so.
In the circumstances, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
The requirement of paragraph 4(a)(ii) of the Policy has been met.
C. Registered and Used in Bad Faith
The Panel makes the determination that there has been bad faith registration and use in this case. The rationale for the decision stems from the fact that the NATIXIS mark has been extensively used in Europe and the Complainant and its mark have a significant level of reputation. In the light of this and the fact that the parking page to which the disputed domain name resolves is in French (which corresponds with the nationality of the Complainant), it is indeed highly unlikely that the Respondent was unaware of the Complainant when it registered the disputed domain name. The Complainant already secured the <natixis.com> domain name many years ago (i.e., in 2005). The “.com” gTLD is typically the first (or one of the first) gTLDs an applicant would consider when registering a brand as a domain name. In this day and age of the Internet, with quick and easy access to information, simple searches on the Internet would have surfaced links to the Complainant and its NATIXIS mark and brand.
In the light of the aforementioned factors, it is of importance for the Respondent to have provided a response, explaining its choice of adopting the NATIXIS word in the disputed domain name and how it has rights or legitimate interests therein. Since the Respondent is Chinese or located in China, the fanciful non-Chinese word “natixis” is not what one would consider to be a “natural” or obvious choice for a domain name. In the absence of any response or explanation by the Respondent, the Panel can only surmise that the disputed domain name was registered in bad faith with an intent to ride off the Complainant’s fame and the fame of its NATIXIS trade mark and thereby to “attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a 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.” Alternatively, taking into account the other domain names the Respondent has been associated with and the fact that the disputed domain name is offered for sale on the parking page, the Panel believes that “the Respondent has registered or 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 trademark 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 domain name” (per pargraph 4(b)(i) of the Policy).
The Panel has not been provided any basis to find otherwise than that the registration and use of the disputed domain name have been in bad faith.
The requirement of paragraph 4(a)(iii) of the Policy has therefore been met.
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.website> be transferred to the Complainant.
Date: August 1, 2017