WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. Satheesh Mani, Sri Angala Parameshwari Enterprise
Case No. D2018-0726
1. The Parties
Complainant is Natixis of Paris, France, represented by Inlex IP Expertise of Nantes, France.
Respondent is Satheesh Mani, Sri Angala Parameshwari Enterprise of Bangalore, India.
2. The Domain Name and Registrar
The disputed domain name <natixisbank.xyz> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2018. On April 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 4, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 April 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2018. The Center received informal email communications from the Respondent on April 18, 2018 and April 23, 2018.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on May 11, 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
Complainant states that it is “a French corporate and financial services Company” that is “the corporate, investment and financial services arm of Groupe BPCE, France’s second-largest banking player”. Complainant further states that it employs 15,000 people in 38 countries.
Complainant states that it “owns several French, Community and International prior rights registered since 2006, composed of the term ‘NATIXIS’,” which it “widely uses […] in connection with banking and financial services” and which “are well-known in France, European-Union and internationally”. Complainant specifically identifies the following trademark registrations (the “NATIXIS Trademark”), for which it has provided relevant evidence:
- French Reg. No. 3,416,315 for NATIXIS, filed on March 14, 2006
- European Union Reg. No. 5,129,176 for NATIXIS, filed on June 12, 2006 (registered June 21, 2007)
- International Reg. No. 1,071,008 for NATIXIS, filed on April 21, 2010
The Disputed Domain Name was created on November 30, 2017, and is not being used in connection with an active website.
5. Parties’ Contentions
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the NATIXIS Trademark because it contains the NATIXIS Trademark plus the word “bank”, which “is in direct connection with the activity of the Complainant.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,“Respondent has no right including trademark rights in respect of the name NATIXIS”; “there is no business or legal relationship between the Complainant and the Respondent”; “the Respondent has not been authorized by the Complainant to use the name NATIXIS”; and the Disputed Domain Name “is not really used and it is therefore obvious that the Respondent has no legitimate interests in registering or using this domain name.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, the Disputed Domain Name “is not active, but it must be recalled that the passive holding of a domain name does not prevent a finding of bad faith in order to take advantage of the reputation of the Complainant”; the NATIXIS Trademark is “well-known in France and several other countries” as shown by the trademark registrations, a Google search and the size of Complainant; “it seems unlikely that the Respondent was unaware of the [Complainant’s] activities and of the existence of the trademarks and domain names ‘NATIXIS’ at the time the registration was made”; and “there is not real and substantial offer of goods/services on the website associated with the disputed domain name.”
The Respondent did not formally reply to the Complainant’s contentions. However, in an email to the Center, Respondent stated:
“I had register the website in the name of natixisbank.xyz to do business in future.
But i had received complaint from natixis saying i am using their brand.
Bank is the generic term where anyone can use the name
The reason why i use NATIXISBANK means NATI= National: X= Axis: I= Indian: S= Service Bank
I personally do not want to spoil any other brand reputation
Let me know if you need any further clarification”
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (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 in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the NATIXIS Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the NATIXIS Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “natixisbank”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
It is obvious that the Disputed Domain Name contains the NATIXIS Trademark in its entirety and simply adds the word “bank”. As stated in WIPO Overview 3.0, section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Here, given that Complainant is in the banking industry, the Panel finds that inclusion of the word “bank” in the Disputed Domain Name does nothing to eliminate (and, in fact, may enhance) confusing similarity.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,“Respondent has no right including trademark rights in respect of the name NATIXIS”; “there is no business or legal relationship between the Complainant and the Respondent”; “the Respondent has not been authorized by the Complainant to use the name NATIXIS”; and the Disputed Domain Name “is not really used and it is therefore obvious that the Respondent has no legitimate interests in registering or using this domain name.”
WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case and that Respondent has not provided a formal Response containing anything to the contrary. The Panel further finds that Respondent’s informal email sent to the Center, quoted above (stating, among other things, that Respondent selected the Disputed Domain Name because “NATI= National: X= Axis: I= Indian: S= Service Bank”) is not credible and does not provide any evidence of rights or legitimate interests. Accordingly, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
This section is derived, of course, largely from the landmark decision on passive holding in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
As applied to the instant proceeding, the Panel finds that the NATIXIS Trademark is highly distinctive and enjoys a broad reputation, for the reasons set forth above; that, as stated above, Respondent’s informal communication with the Center does not provide credible evidence of actual or contemplated good-faith use; and that it is implausible there would be any good faith use to which the Disputed Domain Name may be put.
Accordingly, the Panel finds that Complainant has proven the third element 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 <natixisbank.xyz> be transferred to the Complainant.
Douglas M. Isenberg
Date: May 21, 2018