WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. WhoisGuard, Inc./ louie lawson
Case No. D2019-0721
1. The Parties
The Complainant is Natixis, France, represented by Inlex IP Expertise, France.
The Respondent is WhoisGuard, Inc., Panama / louie lawson, Denmark.
2. The Domain Name and Registrar
The Disputed Domain Name <natexes.info> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2019. On March 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 April 5, 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 April 10, 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 April 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 21, 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 company that provides financial services as part of the BPCE Group.
The Complainant is the owner of several French, European Union and International trademark registrations for the term NATIXIS, among others:
- French Trademark NATIXIS registration No. 3416315, registered on March 14, 2006;
- European Union Trademark NATIXIS registration No. 5129176, registered on June 21, 2007; and
- International Trademark NATIXIS (&Design) registration No. 1071008, registered on April, 21, 2010.
Furthermore, the Complainant is the owner of the domain names <natixis.com> registered in 2005 and <natixis.fr> registered in 2006.
The Disputed Domain Name <natexes.info> was registered on March 4, 2019.
The Disputed Domain Name is currently inactive.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant alleges that the Disputed Domain Name is highly similar to the Complainant’s trademark NATIXIS, due to the fact that both of them are composed of seven letters which five of them are identical, creating a high visual similarity.
Moreover, this similarity is reinforced by using the three first letters “nat” and the last three letters “xes”. This similarity is not avoided by using the letter “e” which is phonetically very similar to the letter “i” in French language.
The Complainant further states that a Google search with the word “natexes” suggests trying another search with the word “natixis”. Consequently, there is a likelihood of confusion between the Disputed Domain Name and the Complainant’s trademark.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect to the name NATIXIS.
Moreover, there is no business or legal relationship between the Complainant and the Respondent.
Furthermore, the Respondent has no legitimate interests in registering or using the Disputed Domain Name.
Registration and use in bad faith
The Complainant alleges that the Respondent registered the Disputed Domain Name to take advantage of the reputation of the NATIXIS trademark.
The Complainant states that the fact that the Disputed Domain Name is inactive does not prevent a finding of bad faith.
In addition, it is improbable that the Respondent was unaware of the Complainant’s activities and trademark at the time of the registration of the Disputed Domain Name. Therefore, the Disputed Domain Name cannot be a coincidence.
Finally, the fact that the Respondent provided false contact details in the registration of the Disputed Domain Name supports the argument that the Disputed Domain Name was registered in bad faith. Moreover, the Disputed Domain Name is not active, thus, there is no substantial offer of goods and services on the website associated with the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(i) The Disputed Domain Name 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.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Disputed Domain Name <natexes.info> is confusingly similar to the Complainant’s trademark NATIXIS. The replacement of the letter “i” by an “e” in the Disputed Domain Name represents a misspelling that does not prevent a finding of confusing similarity to the Complainant’s trademark.
This is a classic example of typo-squatting. As section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
(…) Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.”
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name. In addition, the Respondent is not known by the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate his rights or legitimate interests, but it did not reply to the Complainant’s contentions.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered on March 4, 2019, while the Complainant’s NATIXIS Trademark Registration No. 3416315 was registered on March 14, 2006.
The Panel is of the view that the Respondent registered the Disputed Domain Name in bad faith since it is a typographical misspelling of and is confusingly similar to the Complainant’s well-known NATIXIS trademark (see, NATIXIS v. Montez T, Cybortech, WIPO Case No. D2019-0409). Therefore, the Panel concludes that the Respondent was aware of the Complainant’s rights when it registered the Disputed Domain Name.
This is a clear case of typo-squatting and that the Respondent deliberately registered the Disputed Domain Name with a slight misspelling with the intent to divert Internet users from the Complainant’s website to the Respondent’s parking page. Thus, this behavior constitutes bad faith registration and use.
Moreover, it is important to highlight that the Respondent has provided, and failed to correct or update false contact details, in breach of its registration agreement (see, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111; Royal Bank of Scotland Group v. Stealth Commerce v. a.k.a. Telmex Management Services, Inc., WIPO Case No. D2002-0155).
In the case at hand, in view of the Respondent’s registration of a domain name confusingly similar to the Complainant’s well-known trademark, the provision of false contact information, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name, and its failure to respond to the Complaint, the Panel finds that the Respondent’s lack of use of the Disputed Domain Name also amounts to bad faith.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith.
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 <natexes.info> be transferred to the Complainant.
Pablo A. Palazzi
Date: June 4, 2019