WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NATIXIS v. mancini pierre, mancini pierre
Case No. D2017-2493
1. The Parties
The Complainant is NATIXIS of Paris, France, represented by Inlex IP Expertise, France.
The Respondent is mancini pierre, mancini pierre of Neuilly-le-Réal, France.
2. The Domain Name and Registrar
The disputed domain name <natixis-moncompte.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2017. On December 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 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.
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 December 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2018. On January 11, 13 and 16, 2018, several email communications were received from the technical contact of the disputed domain name. On January 16, 2018, the Center informed the technical contact of the disputed domain name that the proceeding had been commenced against the registrant of the domain name, not the technical contact. In addition, the Center requested the technical contact of the Complaint to forward the notification of the Complaint and the annexes to the registrant of the disputed domain name.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on January 23, 2018. 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 French corporate and financial services company NATIXIS. It is one of France’s largest banking institutions. It has more than 15,000 employees in 38 countries. It has won various awards for its services and enjoys a wide reputation in France and abroad.
Complainant holds several French, European Union and International rights to the name NATIXIS, notably the following trademarks:
- French trademark registration NATIXIS, no. 3416315, registered on March 14, 2006, protected in classes 9, 16, 35, 36 and 38;
- European Union trademark registration NATIXIS, no. 5129176, registered on June 21, 2007, protected in classes 9, 16, 35, 36 and 38;
- International trademark registration, no.1071008, registered on April 21, 2010, protected in classes 9, 16, 35, 36 and 38.
The Complainant uses its NATIXIS trademarks in connection with banking and financial services.
The Complainant contends that it was incorporated under the company name NATIXIS on July 30, 1954, and that it owns and maintains the following domain names which resolve to its official website:
- <natixis.com>, registered on February 3, 2005;
- <natixis.fr>, registered on October 20, 2006.
The disputed domain name was registered on September 4, 2017. It does not resolve to an active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its NATIXIS trademarks.
Indeed, the NATIXIS trademarks are resume in leading position, associated with the words “moncompte” which means “my bank account” in English. This addition is descriptive in connection with the banking services offered by the Complainant.
It’s obvious that the public will think that the disputed domain name is registered in the name of the Complainant and resolves to a specific website. Thus, rather than generating a distinction between the Complainant and the Respondent, the descriptive terms “moncompte” entail a high rick of association.
The Complainant relies on a prior UDRP decision, SGS Société Générale de Surveillance S.A. v. Inspectorate, WIPO Case No. D2000-0025, that considered that the sole adjunction of descriptive terms are not sufficient to exclude any risk of confusion with the complainant’s rights.
The Complainant contends that the Respondent has no right or legitimate interest in the disputed domain name.
The Respondent has no trademark rights on “natixis”. The Respondent is not commonly known by the disputed domain name, nor does it have a business or legal relationship with the Complainant, nor does the Respondent have any authorization from the Complainant to register the disputed domain name or a domain name corresponding to the NATIXIS trademarks.
In addition, the disputed domain name is not used. The Complainant relies on a prior case about the disputed domain name <natixiis.com>. The panel in said case decided that the absence of authorization to use the well-known trademark, the fact that the respondent was not commonly known by the domain name, that the respondent’s name did not include the word “natixiis”, and that the domain name was not used constituted a prima facie case of the respondent having no right or legitimate interest in the domain names (Natixis v. Sylvia Postler, WIPO Case No. D2015-0960).
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith.
The disputed domain name is registered with the aim of taking advantage of the reputation of the well−known NATIXIS trademarks.
A simple Google search on the word “natixis” leads to 5 million results.
Considering the reputation of the well-known NATIXIS trademarks, it is unlikely that the Respondent was unaware of its activities and of its trademark rights on NATIXIS, at the time of the registration. This registration cannot be a coincidence.
The disputed domain name is not active and there is no offer of goods or services on any website associated with the disputed domain name.
As already decided in many prior cases concerning well-known trademarks, the passive holding clearly shows the Respondent’s bad faith.
The Complainant therefore relies on the decision Jupiters Limited v. Aaron Hall, WIPO Case No. D2000−0574, in which the panel found that the reservation of domain names including well-known trademarks demonstrates the respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has submitted evidence of its registered well-known NATIXIS trademark rights.
The disputed domain name is composed of the Complainant’s NATIXIS trademark, followed by a dash and by the French generic term “moncompte”. Indeed, this term is descriptive in relation to the financial activities of the Complainant.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s NATIXIS trademark. The condition of paragraph 4(a)(i) of the Policy has therefore been satisfied.
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.
The Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the disputed domain name.
The Respondent has not been licensed or authorized to use the NATIXIS trademarks or to register the disputed domain name.
The Respondent did not make a fair or noncommercial use of the disputed domain name. The disputed domain name does not resolve to an active website.
In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, which the Respondent has not rebutted. The condition of paragraph 4(a)(ii) of the Policy has therefore been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name. It provides that:
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 the respondent 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s 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 trademark 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 your web site 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 web site or location or of a product or service on the respondent’s web site or location.
Given the well-known character of the NATIXIS trademarks and the fact that the Respondent is domiciled in France, the Panel finds that the Respondent could not ignore the Complainant’s rights in the NATIXIS trademarks when it registered the disputed Domain Name. In this regard, the addition of the French generic term “moncompte” aims at targeting the Complainant’s clients.
The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
The Panel finds that the disputed domain name was registered in bad faith with the Complainant in mind, to disrupt the Complainant’s activities.
The Panel finds that the passive holding of the disputed domain name which incorporates the well-known NATIXIS trademark, without obvious actual or contemplated good faith use, does not necessarily circumvent a finding that the domain name is being used in bad faith.
The financial activity is regulated in order to protect customers. Any registered domain name enables the registrant to create email addresses. In the present case, the disputed domain name might be used for creating email addresses and notably for spamming or phishing purposes, to obtain banking and personal data from the Complainant’s customers and to misuse these data.
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
For all the above reasons, the Panel is of the opinion that the Respondent’s passive holding of the disputed Domain name satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name “was registered and is being used in bad faith” by the Respondent.
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-moncompte.com>, be transferred to the Complainant.
Date: February 6, 2018