WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. Domain Privacy Service FBO Registrant / Bruce Hansen
Case No. D2019-2804
1. The Parties
The Complainant is Natixis, France, represented by Inlex IP Expertise, France.
The Respondent is Domain Privacy Service FBO Registrant, United States of America (“United States”) / Bruce Hansen, Spain.
2. The Domain Name and Registrar
The disputed domain name <cib-natixis.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2019. On November 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 November 21, 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 November 26, 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 November 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2019.
The Center appointed Adam Samuel as the sole panelist in this matter on January 2, 2020. 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 an international corporate finance and investment management company and is part of the BPCE group. The Complainant owns a number of trademarks for the name NATIXIS in a variety of countries including a United States trademark, registration number 4127350 registered on April 17, 2012.
The disputed domain name was registered on October 28, 2019. The disputed domain name currently resolves to a parking page with no relevant content. It previously resolved to another parking page listing links for various financial products and services.
The Complainant promotes its businesses through the domain name <natixis.com>, registered on February 3, 2005.
5. Parties’ Contentions
The disputed domain name reproduces the Complainant’s trademark NATIXIS, a word with no meaning that is consequently highly distinctive. The initials “cib” are an abbreviation for “Corporate & Investment Banking”, a wording used by the Complainant on its sub-domain <cib.natixis.com> to describe the Complainant’s activities. They do not add any distinctiveness to the disputed domain name.
The Respondent has no rights in respect of the name NATIXIS. There is no business or legal relationship between the Complainant and the Respondent. The Complainant has neither authorized nor licensed the Respondent to use its trademarks in any way.
The Complainant’s trademark NATIXIS is well-known in France and several other countries. It seems unlikely that the Respondent was unaware of the Respondent’s activities and the Complainant’s trademarks when the disputed domain name was registered. The Respondent reproduced the NATIXIS trademark on the website linked to the disputed domain name. The Respondent employed a privacy service to hide its identity and avoid being notified of a UDRP proceeding. The disputed domain name has the same structure as the sub-domain name <cib.natixis.com> used by the Complainant. The Respondent has probably registered the disputed domain name for the purpose of selling the disputed domain name to the Complainant. The Respondent has registered other domain names containing the mark NATIXIS.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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
The disputed domain name consists of the Complainant’s well-known trademark, a made-up name with no ordinary meaning, preceded by the letters “cib” and a hyphen and followed by the generic Top-Level Domain (“gTLD”) “.com”. The gTLD is irrelevant here because it is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The addition of ordinary meaning words to a trademark does not prevent the disputed domain name from being confusingly similar to that trademark. As section 1.8 of the WIPO Overview 3.0 explains:
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
Here the added letters “cib” actually describe, in the jargon of the Complainant, the Complainant’s activities. They are either descriptive of the Complainant’s activities or are meaningless. Either way, they do not affect the predominance of the Complainant’s distinctive trademark in the disputed domain name.
For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is not called “natixis” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. Based on the available record, and in the absence of any response on this point, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent’s registration of a domain name incorporating prominently a well-known trademark which is a made-up word with no other meaning suggests bad faith in both registration and use.
Without a Response, one cannot be certain why the Respondent registered the disputed domain name. However, the use of the Complainant’s trademark, particularly when qualified by the Complainant’s abbreviation for what it does, suggests that the Respondent’s motive in registering and using the website was one or more of disrupting the Complainant’s relationship with its actual or potential customers, attempting to attract Internet users for potential gain or persuading the Complainant to buy the disputed domain name from it for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith: paragraph 4(b)(i), (ii) and (iii) of the Policy. See also sections 3.1.4, 3.2.1 of the WIPO Overview 3.0.
For all these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith. This makes it unnecessary for the Panel to deal with the other points made in support of the Complaint.
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 <cib-natixis.com> be transferred to the Complainant.
Date: January 14, 2020