WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. WhoisGuard Protected, WhoisGuard, Inc. / Eric Barthelemy
Case No. D2019-0139
1. The Parties
The Complainant is Natixis of Paris, France, represented by Inlex IP Expertise, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Eric Barthelemy of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <factornatixis.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2019. On January 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2019, 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 January 25, 2019 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 January 28, 2019.
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 January 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2019.
The Center appointed Isabelle Leroux as the sole panelist in this matter on March 1, 2019. 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 French corporate and financial service Company NATIXIS, part of the BPCE Group that is known internationally.
The Complainant owns prior trademark registered rights in France and other jurisdictions around the world, and in particular:
- French Trademark registration NATIXIS No. 3416315, filed on March 14, 2006;
- European Union Trademark registration NATIXIS FACTOR No. 5589874, filed on December 28, 2006;
- European Union Trademark registration NATIXIS No. 5129176, filed on June 12, 2006 (hereinafter the “Trademarks”).
In addition, the Complainant and affiliates own, among others, the following domain names:
- <natixis.com>, registered on February 3, 2005;
- <natixis.fr>, registered on October 20, 2006.
The Respondents are:
- a company based in Panama which seems to be a privacy shield;
- and a French individual, Eric Barthelemy.
The disputed domain name <factornatixis.com> was registered on January 14, 2019. At the time of the filing of the Complaint, the disputed domain name redirected to a parking webpage. It no longer resolves to an active webpage.
5. Parties’ Contentions
(i) The Complainant contends that the disputed domain name is identical or confusingly similar to the Trademarks of the Complainant, especially as the disputed domain name reproduces identically the trademarks NATIXIS and NATIXIS FACTOR.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the name “Natixis” or “Natixis Factor”. The Complainant submits that the Respondent is not affiliated with the Complainant nor authorized or licensed by the Complainant to use its trademarks.
Besides, the Complainant contends that the Respondent does not make any use of the disputed domain name, which resolves to a parking webpage.
(iii) The Complainant contends that the disputed domain name was registered in bad faith.
The Complainant submits that its trademarks are well-known in France and throughout the world and the Respondent knew or should have known the existence of the Complainant’s rights.
Similarly, the Complainant also contends that the passive holding of a domain name featuring well-known trademarks shows the bad faith of the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
These elements will be examined in turn below.
A. Identical or Confusingly Similar
The relevant part of the disputed domain name is “factornatixis” as the generic Top-Level Domain (gTLD) “.com” is not relevant in determining confusing similarity and has to be analyzed without a legal significance.
Indeed, previous UDRP panels have regularly ruled that the gTLD, such as “.com”, is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain names (CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834).
The Complainant provided evidence that it has prior rights in the NATIXIS and NATIXIS FACTOR trademarks, well before the Respondent registered the disputed domain name. In comparing the disputed domain name <factornatixis.com> with the Trademarks, the Panel finds that the Trademarks, and especially NATIXIS FACTOR, are replicated in their entirety in the disputed domain name, the latter simply differing by the inversion of the two names.
The Panel does not consider that this mere inversion serves to avoid identity with the Complainant’s European Union Trademark registration NATIXIS FACTOR, No. 5589874.
Therefore, the Panel finds that the disputed domain name is identical to the Complainant’s Trademarks and that the requirements under paragraph 4(a)(i) of the Policy are satisfied.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has not been authorized by the Complainant to use the Trademarks and that there is no business or legal relationship existing between the Complainant and the Respondent.
It appears the Respondent is not commonly known by the disputed domain name or the name “Natixis” and the disputed domain name resolves to an inactive page.
Accordingly, the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
Since the Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel finds no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and thus the requirement under paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
It has been proved to the Panel’s satisfaction that the Complainant’s NATIXIS and NATIXIS FACTOR trademarks are well-known in France and all around the world, and the Panel agrees with the Complainant that the Respondent, who seems to be a French national, could not reasonably ignore the Complainant’s trademarks and activities at the time the registration was made.
Previous UDRP panels have regularly ruled that bad faith was found where a domain name is so obviously connected with a well-known trademark that its use by someone, with no connection to the trademark, suggests opportunistic bad faith. See LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091 and Carrefour v. Jean-Claude Bot / Albert Pierre, WIPO Case No. D2017-0969.
Furthermore, the Complainant uses the trademark NATIXIS FACTOR in accordance with banking and financial services. The Respondent used the disputed domain name in connection with a website displaying links to services in the financial industry. The Panel concurs with the Complainant that there is a likelihood of confusion between the disputed domain name and the prior trademarks of the Complainant.
Lastly, the Panel finds that the Respondent may have provided, or failed to correct, false contact details, and/or refused the delivery of the Center’s mail. The Panel further finds that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name.
Accordingly, this Panel finds that the Respondent’s bad faith and his intention to take undue advantage of the Complainant’s trademark rights has been demonstrated.
For the above reasons, the Panel finds the Respondent registered and used the disputed domain name in bad faith, and thus the condition of paragraph 4(a)(iii) of the Policy has been satisfied.
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 <factornatixis.com> be transferred to the Complainant.
Date: March 13, 2019