WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. Private Person Registration / Zenos Zhang
Case No. D2017-2059
1. The Parties
The Complainant is Natixis of Paris, France represented by Inlex IP Expertise, France.
The Respondent is Private Person Registration of Denver, Colorado, United States of America ("United States) / Zenos Zhang of Shenzhen of China.
2. The Domain Name and Registrar
The disputed domain name <wwwnatixis.com> ("Disputed Domain Name") is registered with TurnCommerce, Inc. DBA NameBright.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 23, 2017. On October 23, 2017, the Center transmitted by email to Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 23, 2017, 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 Complainant on October 24, 2017, providing the registrant and contact information disclosed by Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 25, 2017. Accordingly, the name of the Respondent referred to in the original complaint "Private Person Registration" has been deleted and solely the name of the individual registrant provided by the Registrar has been listed.
The Center verified that the Complaint together with the amendment to the 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 October 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 20, 2017.
The Center appointed James H. Grossman as the sole panelist in this matter (the "Panel") on November 27, 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. Finally, although the Complainant's principal office is in France, the proceeding will be conducted in English.
4. Factual Background
Natixis is the international corporate, investment management, and financial services arm of Group BPCE, the second largest banking entity in France with more than 15,000 employees in 38 countries around the world. Over a third of these employees work outside of France. Revenues in 2015 exceeded 8 billion euros. It is unlikely that persons involved in the international banking business are unaware of the BP or Natixis businesses and their brand.
Complainant holds several French, European Union and international prior rights to the name NATIXIS, notably the following Trademarks (hereinafter referred to as the "Trademark" or as the "Trademarks"):
- French registration for NATIXIS No. 3416315, filed on March 14, 2006;
- European Union registration NATIXIS No. 51291756, filed on June 11, 2006;
- International registration (design) Natixis, No. 1771008, filed on April 21, 2010.
Complainant advises that the Trademarks above are widely used in connection with its financial services and banking business.
The Company name was registered in France on July 30, 1954.
With regard to domain names, <natixis.com> was filed on February 3, 2005 and <natixis.fr> was filed on October 20, 2006. According to Complainant, both of these domain names redirect the viewer to the NATIXIS official website "www.natixis.com".
Complainant advises that, according to the "Whois" database, Respondent reserved the Disputed Domain Name on August 26, 2017.
Respondent failed to respond to the Complaint filed by the Center.
5. Parties' Contentions
Complainant has provided evidence of its size and image not only in France but also around the world with over 15,000 employees, a third of whom are working outside France. The Trademarks referred to above in Section 4 as well as its rights to the Domain Names are well recognized as referring to its banking and services businesses.
Complainant in its Complaint contends that the Disputed Domain Name contains all of the elements necessary for the Panel to transfer the Disputed Domain Name to it in that:
1. Complainant has demonstrated its prior rights in terms of its Trademarks and Domain Names filings;
2. The Disputed Domain Name is basically identical to one of Complainant's Domain Names and can only confuse someone looking at the site into believing it is that of Complainant.
3. Respondent has no rights or legitimate interests in the Disputed Domain Name and Complainant has not given Respondent any right to use the Disputed Domain Name;
4. Respondent registered the Disputed Domain Name in order to take advantage somehow of the well recognized and highly regarded NATIXIS Trademarks and domain names, which is evidence of bad faith. The fact that the Disputed Domain Name does not resolve to an existing website but only states "Address Not Found" is another element in showing Respondent is acting in bad faith and damaging the image of Complainant.
Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that each (and thus all) of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint "on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Respondent has defaulted by failing to timely file a response to the allegations of Complainant. Paragraph 14(a) of the Rules states: "In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the panel, the panel shall proceed to a decision on the complaint. Further, pursuant to paragraph 15(a), certain factual conclusions may be drawn on the basis of complainant's undisputed representations."
Also, paragraph 14(b) of the Rules states: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate." When applying this provision, UDRP panels have generally concluded that the respondent's default does not automatically result in a decision in favor of the complainant. A number of cases hold for a non-responsive respondent where a complainant fails to prove all the elements of paragraph 4(a). Nevertheless, a panel may draw negative inferences from the respondent's default as per paragraph 14 of the Rules, particularly with respect to those issues uniquely in the knowledge and possession of the respondent. See Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413.
Another UDRP panel stated that the panel is entitled to accept all reasonable allegations and inferences set forth in the complaint as true unless the evidence is clearly contradictory.
A. Identical or Confusingly Similar
Complainant makes the argument that the Disputed Domain Name meets the test of confusing similarity with Complainant's Trademark. The Trademark NATIXIS is incorporated in its entirety within the Disputed Domain Name, together with the generic element "www". Complainant states the "www" element (without any period after the third "w") is either a generic word or is included for the purpose of typosquatting. Regardless, the end result is inherently confusing due to its identical use of Complainant's Trademark. The applicable Top Level Domain in a domain name such as ".com" is viewed as a standard registration requirement and, as such, is disregarded under the confusing similarity test. RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582."
Accordingly, if the Disputed Domain Name had a dot after the third "w" together with the addition of the generic ".com", it would be identical to the Complainant's principal website "www.natixis.com".
Such a small difference between the Disputed Domain Name and Complainant's principal website leads the Panel to the conclusion that Respondent is trying to pass off the Disputed Domain Name as its own business.
A similar fact pattern led the panel in VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269, to disregard the meaningless letters and ".com" as well. "The mere addition of the letters "wx" and the gTLD suffix ".com, having no meaning by themselves or in combination with the Complainants' trademark, does not have the capacity to distinguish the disputed domain name from the Complainant's registered trademark and is disregarded when comparing the disputed domain name with the Complainant's trademark."
The issue of confusing similarity was well considered by the panel in Playboy Enterprises International Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768. The panel in that case, which involved a well known trademark, "concurs with the opinion of several prior WIPO UDRP panels, which have held that, when a domain name wholly incorporates a complainant's registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g. Hitachi, Ltd. v. Arthur Wrangle, supra. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615. Within the Disputed Domain Name the NATIXIS trademark stands out and leads the public to think that the Disputed Domain Name is somehow connected to the owner of the registered Trademark. See Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159."
Based on the evidence provided by Complainant, decisions of prior UDRP panels cited above, and the Panel's own analysis, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy has been met.
B. Rights or Legitimate Interests
The second element that Complainant needs to prove is that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"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 noncommercial 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." Policy, paragraph 4(c).
Respondent has failed to rebut Complainant's prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Further, as to these criteria, Complainant has stated the following:
Respondent has no right to use the Trademark. There is no business or legal relationship between Complainant and Respondent and Respondent has not been authorized by Complainant to use the name NATIXIS. Respondent is not making any legitimate non-commercial or fair use of the Disputed Domain Name. Also, Complainant notes that the Disputed Domain Name was apparently registered anonymously, which Complainant argues demonstrates Respondent's intent to hide in view of his lack of legitimacy.
In addition to the above, as earlier noted, the Disputed Domain Name resolves to a statement stating "Address Not Found". Complainant points out that, ruling on a similar case about the disputed domain name "natixiis.com", [note intentional misspelling], the panel in that case considered the following:
"the Complainant asserts that it has given no authorization to the Respondent to use its well-known trademark; that the Respondent is not commonly known by the disputed domain name; that the Respondent's name does not seem to include the word "natixiis", and that since its registration the disputed domain name does not resolve to an active website" constitutes "a prima facie case of the Respondent's lack of right or legitimate interests in relation to the disputed domain name and that "the Complainant has established that the Respondent has no rights or legitimate interest in the disputed domain name <natixiis.com>, pursuant to the Policy, paragraph 4 (a)(ii)" Natixis v. Sylvia Postler, WIPO Case No. D2015-0960."
The points in the above quoted paragraph are also true in this case. Complainant has provided, with which the Panel concurs, a clear picture showing Respondent has failed to meet any of the requirements of the Policy, paragraph 4(a)(ii).
The Panel herein determines that Respondent lacks rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the complainant to demonstrate that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a list of circumstances, inter alia, that may indicate bad faith. Complainant has set out arguments to meet these considerations and the Panel has made its own analysis.
It has long been recognized that consumers expect domain names incorporating a company's name or trademark to lead to a website maintained by or affiliated with the trademark owner. See Panavision Int'l L.P. v. Toeppen, 141 F.3d. 1316, 1326 (9th Cir. 1998). Obviously, this is not what has occurred in this case.
Complainant's position is quite clear that the Disputed Domain Name is registered with the aim of taking advantage of the reputation of the well-known Trademark NATIXIS and the international banking and services business related thereto. Further, Complainant argues the passive holding of a disputed domain name without any business or services being provided does not prevent a finding of bad faith to take advantage of the reputation of Complainant. See Junipers Limited v. Aaron Hall, WIPO Case No. D2000-0574 and paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). Also see "Dr. Martens" International Trading GmbH and "Dr.Maertens" Marketing GmbH v. GoDaddy.com, Inc., WIPO Case No. D2017-0246.
In view of the worldwide reputation of Complainant, Complainant has made a strong argument with which the Panel agrees, that it is unlikely Respondent was unaware of Complainant's reputation or Trademarks issued many years before the Respondent registered the Disputed Domain Name in August 2017.
The Panel holds that Complainant has met its burden of proof 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 <wwwnatixis.com> be transferred to the Complainant.
James H. Grossman
Date: December 11, 2017