WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. Zhang Yin
Case No. D2017-1393
1. The Parties
The Complainant is Natixis of Paris, France, represented by Inlex IP Expertise, France.
The Respondent is Zhang Yin of Xianning, Hubei, China.
2. The Domain Name and Registrar
The disputed domain name <natixis.club> (the "Domain Name") 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 July 19, 2017. On July 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 21, 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 July 24, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 25, 2017, 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 August 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 24, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on August 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 corporate and financial services company, Natixis, formed in 1954. It is the corporate, investment and financial services arm of Groupe BPCE, France's second-largest banking institution. It has more than 15,000 employees in 38 countries. It has won various awards for its services including Best Euro Lead Manager for Covered Bonds in 2013.
The Complainant trades under the name "Natixis". It has the following trade mark trade mark registrations for NATIXIS:
- French Trade Mark registration NATIXIS, no. 3416315, filed on March 14, 2006;
- European Union Trade Mark registration NATIXIS, no. 5129176, filed on June 12, 2006 and registered on June 21, 2007;
- International Trade Mark registration , no.1071008, registered on April 21, 2010.
(collectectively, the "Trade Mark").
The Complainant also owns and maintains the following domain names which resolves to their official website:
- <natixis.com>, since February 3, 2005; and
- <natixis.fr>, since October 20, 2006.
The Domain Name was registered on September 1, 2016. It is connected to a webpage which offers the Domain Name for sale (the "Website"). Details of the broker are listed.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
6.2. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in Paragraph IV of the Complaint and confirmed in an email of July 25, 2017 that the language of the proceeding should be English. The Complainant contends that the Domain Name is in Latin characters whilst the domain extension ".club" is in English language and therefore targets people who are familiar with English language. English is the business language. The cost of translation services and the inconvenience of having to conduct the proceeding in Chinese impose a disproportionate burden on the Complainant. It would also cause undue delay.
The Panel accepts the Complainant's submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Chinese and English. There is therefore no question of the Respondent not being able to understand the Complaint. The Respondent chose not to respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.3. Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the domain name is confusingly similar to the trade mark. The trade mark would generally be recognizable within the domain name. In this case the Domain Name contains the Trade Mark in its entirety. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain as it is viewed as a standard registration requirement.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent comes forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Respondent is not affiliated or connected to the Complainant in any way nor has it been authorised and licensed by the Complainant to register and use the Domain Name which incorporates the Trade Mark. It does not appear to have any independent right to the Domain Name. There is no evidence that the Respondent is commonly known by the Domain Name. The Website is a page which offers the Domain Name for sale.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant's trade mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name. The primary significance of the meaning of the Trade Mark is its reference to the Complainant's trade mark and company name. In the WIPO Overview 3.0, section 3.2.2 states as follows:
"Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark."
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent's choice of the Domain Names is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. The Domain Name directs to a page which offers the Domain Name for sale by contacting a broker. It is clear that the Respondent is seeking to lure users to the Website by capitalising on the Complainant's fame and reputation with the intent to cause confusion on the part of Internet users by creating the false impression that the Website is that of the Complainant or authorised by it. The Panel is of the view that the use of the Trade Mark in the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant's goods and services. They are then led to the offer for sale of the Domain Name through a broker. The use of the Domain Name shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent's website is authorised or endorsed by the Complainant. Further the Domain Name resolves to the Website which has the sole purpose of selling the Domain Name. It is highly improbable that any such sale would not be more than the out-of pocket costs related to the Domain Name. The Respondent has chosen not to challenge these allegations. Considering the circumstances, the Panel considers that the Domain Name is also being used in bad faith.
Accordingly, the Complaint has satisfied the third element of the UDRP.
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.club>, be transferred to the Complainant.
Date: September 6, 2017