WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. Domain Admin, Privacy Protect, LLC / Marc Hugon
Case No. D2017-1971
1. The Parties
The Complainant is Natixis of Paris, France, represented by Inlex IP Expertise, France.
The Respondent is Domain Admin, Privacy Protect, LLC of Burlington, Massachusetts, United States of America ("United States") / Marc Hugon of Neuilly le Réal, France.
2. The Domain Name and Registrar
The disputed domain name <bpce-natixis.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 10, 2017. On October 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 13, 2017, 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 on October 16, 2017.
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 of the Complaint, and the proceedings commenced on October 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 12, 2017.
The Center appointed Alexandre Nappey as the sole panelist in this matter on November 16, 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 the corporate and investment banking, asset management, insurance and financial services arm of Groupe BPCE, one of the largest banking groups in France, serving a total of 36 million customers through its two retail banking networks, Banque Populaire and Caisse d'Epargne.
The Complainant owns several French, European Union and International trademarks, registered since 2006, composed of the term "natixis", notably:
- French Trademark Registration NATIXIS No. 3416315, registered on March 14, 2006, for goods and services in classes 9, 16, 35, 36 and 38;
- European Union Trade Mark Registration NATIXIS No. 5129176, filed on June 12, 2006, and registered on June 21, 2007, for goods and services in classes 9, 16, 35, 36 and 38; and
- International Trademark Registration NATIXIS No. 1071008, registered on April 21, 2010, for goods and services in classes 9, 16, 35, 36 and 38.
BPCE is also a registered trademark owned by Groupe BPCE (head of the group which owns the Complainant) and notably of the following trademarks:
- French Trademark Registration BPCE No. 3658703, registered on June 19, 2009, and registered for goods and services in classes 9, 16, 35, 36, 38, 41 and 45;
- European Union Trade Mark Registration BPCE No. 8375875, filed on June 19, 2009, and registered on January 12, 2010, for services in class 36; and
- International Trademark Registration BPCE No. 1033662, filed on December 15, 2009, and registered for services in class 36.
The company name "Natixis" has been registered on July 30, 1954, and the Complainant also owns numerous domain names among which:
- <natixis.com>, registered on February 3, 2005; and
- <natixis.fr>, registered on October 20, 2006, resolving to the Complainant's official website.
The Complainant widely uses its NATIXIS trademarks in connection with banking and financial services. The Complainant's services proposed under the trademarks NATIXIS are widely known in France, the European Union and internationally.
The disputed domain name was registered on August 18, 2017. In accordance with the evidence submitted with the Complaint, the disputed domain name resolves to a website displaying, inter alia, the following messages: "This Domain Name is Suspended" and "The domain name you have entered is not available. It has been taken down because the email address of the domain holder (Registrant) has not been verified."
5. Parties' Contentions
(i) Identical or Confusingly Similar:
According to the Complainant, the disputed domain name is the combination of two registered trademarks. It is worth pointing out that the signs NATIXIS and BPCE have no meaning and are highly distinctive.
Consequently, there is a likelihood of confusion between the disputed domain name and the Complainant's prior trademarks rights.
The domain name registered by the Respondent shall be considered as confusingly similar with the Complainant's prior rights on the trademark NATIXIS.
(ii) Rights or Legitimate Interests
First, the Complainant claims that the Respondent has no rights in respect of the name "natixis".
There is no business or legal relationships between the Complainant and the Respondent. Moreover, the Respondent has not been authorized by the Complainant to use the name "natixis".
In addition, the disputed domain name <bpce-natixis.com> is not used and it is therefore obvious that the Respondent has no legitimate interests in registering or using the disputed domain name.
Indeed, the disputed domain name points to a warning page stating that the hosting account has been suspended.
Last but not least, the disputed domain name has been registered anonymously which is a clue that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
(iii) Bad Faith Registration and Use
The Complainant claims that the disputed domain name "is registered with the aim of taking advantage of the reputation of the well−known trademark NATIXIS of the Complainant."
The disputed domain name is not active but it is worth remembering that, the passive holding of a disputed domain name does not prevent a finding of bad faith in order to take advantage of the reputation of the complainant.
The Complainant requests that the disputed domain name <bpce-natixis.com> be transferred.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Notwithstanding the lack of formal response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(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.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the panel "shall draw such inferences therefrom as it considers appropriate".
Having regarded to the Parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above mentioned elements are the following:
A. Identical or Confusingly Similar
The Complainant has shown it has rights in the NATIXIS trademark. The entire trademark has been incorporated into the disputed domain name without any variation.
The additional component "bpce", being the trademarked name of the Complainant's parent company, does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark.
Moreover, previous UDRP panels have found that when a complainant's trademark is recognizable, the addition of another third-party mark is insufficient in itself to avoid a finding of confusing similarity to the complainant's mark. See for instance: Audi AG v Hans Wolf, WIPO Case No. D2001-0148, concerning <audi-lamborghini.com> and stating: "Even if an Internet user does not know that .Lamborghini is owned by the Complainant, he is likely to understand the addition of LAMBORGHINI as a reference to some relationship ore association between the respective companies, which are the owners of the respective trademarks."
The addition of the ".com" generic Top-Level Domain ("gTLD"), which is a technical requirement of domain names, does not serve to remove the confusing similarity 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 trademark alone or in combination with other words, generic or trademarked like BPCE, which belongs to the Complainant's parent company, or to register the disputed domain name. There is no evidence that the Respondent has been known by the name "natixis", or that there have 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 of production accordingly shifts to the Respondent to come forward with evidence of 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 Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark NATIXIS.
Furthermore, the Panel finds that the disputed domain name, which combines trademarks belonging to companies from the same banking group, cannot have been chosen randomly.
See for instance N. M. Rothschild & Sons Limited and Banque Martin Maurel v. Xiamen PrivacyProtection Service Co. Ltd. / Yang hongjuan, WIPO Case No. D2016-2508: "The Panel therefore finds that the ROTHSCHILD and MARTIN MAUREL marks are not marks that a trader would randomly adopt for the purpose other than to create an impression of an association with Complainants.
Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainants' ROTHSCHILD and/or MARTIN MAUREL-branded products or services."
The disputed domain name is currently not in use since it seems to have been suspended.
Prior UDRP panels have long found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Reviewing the totality of the circumstances in this case, including the registration of the disputed domain name long after the registration of the Complainant's marks, the degree of distinctiveness or reputation of the Complainant's NATIXIS trademark, the failure of the Respondent to provide any evidence of actual or contemplated good faith use, coupled with the implausibility of any good faith use to which the disputed domain name may be put to, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden 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 disputed domain name <bpce-natixis.com> be transferred to the Complainant.
Date: December 11, 2017