WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NATIXIS v. Wale Ojo, Natix Limited
Case No. D2018-0626
1. The Parties
The Complainant is NATIXIS of Paris, France, represented by Inlex Conseil, France.
The Respondent is Wale Ojo, Natix Limited of Lagos Nigeria.
2. The Domain Name and Registrar
The disputed domain name <natixis-online.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 March 21, 2018. On March 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2018, 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 March 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2018.
The Center appointed Daniel Peña as the sole panelist in this matter on May 1, 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 a corporate and financial services company based in France, having more than 15,000 employees in 38 countries.
The Complainant has been registered before the Trade and Companies Register of Paris, France on July 30, 1954.
The Complainant is the owner of numerous trademarks, registered in several countries (thereafter the “NATIXIS trademarks”) such as:
- The French trademark NATIXIS, No. 3416315, filed on March 14, 2006, registered for products and services in classes 9, 16- 35, 36 and 38;
- The European Union Trademark NATIXIS, No. 005129176, filed on June 12, 2006, registered on June 21, 2007, for products and services in classes 9, 16, 35, 36 and 38;
- The international trademark NATIXIS, No. 1071008, filed on April 21, 2010, registered on April 21, 2010, for products and services in classes 9, 16, 35, 36 and 38.
The Complainant registered the following domain names:
- <natixis.com> registered since February 3, 2005;
- <natixis.fr> registered since October 20, 2006.
The disputed domain name <natixis-online.com> was registered by the Respondent on November 15, 2017 with. The disputed domain name resolves to a web page with the sign “coming soon”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its NATIXIS trademarks.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has no trademark rights for the term “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.
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.
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.
Considering the reputation of the wellknown 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 Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel holds that the disputed domain name <natixis-online.com> is confusingly similar to the Complainant’s trademarks. The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks.
Mere addition of the descriptive term “online” as suffix to the Complainant’s mark fails to distinguish. The addition of other terms (whether descriptive, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. The nature of such term(s) may however bear on assessment of the second and third elements. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel is satisfied that the disputed domain name <natixis-online.com> is identical or confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.
Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name.
The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(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;
(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 its website 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 website or location or of a product or service on its website or location.
In the Panel’s view a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark NATIXIS is such that the Respondent, must have had knowledge of the trademark before registering the disputed domain name.
The Complainant has demonstrated that its trademarks are widely recognized and that the disputed domain name incorporates in full its trademarks.
Finally, by passively holding the disputed domain name passively and having no content on its web page, the Respondent has registered and is using the disputed domain name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. “The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy.” Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335; LACER, S.A. v Constanti Gómez Marzo, WIPO Case No. D2001-0177.
Accordingly in the circumstances of this case, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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-online.com> be transferred to the Complainant.
Date: May 11, 2018