WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis Intertitres v. Super Privacy Service LTD c/o Dynadot / Fredrik Lindgrent
Case No. D2020-1383
1. The Parties
The Complainant is Natixis Intertitres, France, represented by Inlex IP Expertise, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / Fredrik Lindgrent, Sweden.
2. The Domain Name and Registrar
The disputed domain name <intertitres.org> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2020. On June 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. On June 4, 2020, the Center received an email communication from the Respondent. The Center sent an email communication to the Complainant on June 7, 2020 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 June 11, 2020.
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 June 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the commencement of Panel appointment process to the Parties on July 3, 2020.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 8, 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 a French international corporate, investment management, and financial services company headquartered in Paris, a subsidiary of Natixis, “www.natixis.com”, which was formed in 2006 as part of the Groupe BPCE. The Complainant provides meal vouchers and worker’s money vouchers widely used as tax-exempt employee benefits in France and other countries. These may be in a paper or electronic form.
The Complainant holds registered trademarks for INTERTITRES as a word mark, including French Trademark registration number 98757742 (filed November 4, 1998) and International Trademark registration number 681228 (registered August 26, 1997).
According to the Registrar, the Domain Name was registered on April 8, 2020 in the name of a domain privacy service. Following notification of this proceeding, the Registrar identified the underlying registrant as the Respondent Fredrik Lindgrent of Sweden.
The Domain Name has not been associated with an active website. However, the Complainant observes that the Domain Name was configured with MX (mail exchanger) records, allowing it to be used for email addresses.
5. Parties’ Contentions
The Complainant observes that the Domain Name entirely reproduces the Complainant’s registered INTERTITRES trademark. The Complainant contends that the mark is distinctive, because the French word “intertitre” is defined without the terminal “s” that appears in the mark; thus, the Domain Name is likely to be confused with the Complainant’s mark.
The Complainant states that the Respondent has no permission to use the mark and has not published a website associated with the Domain Name. The Respondent has no evident rights or legitimate interests in the Domain Name.
The Complainant argues that the Respondent “knew or should have known” of the Complainant's trademark rights. This argument is based on the facts that the Natixis group “is well-known in France and in several other countries” and the INTERTITRES mark is registered. The Complainant finds it “suspicious” that the Respondent used a domain privacy service and configured the Domain Name for an email server while publishing no website associated with the Domain Name:
“We can also suspect that the Respondent is intentionally attempting to take advantage of the trademarks ‘INTERTITRES’ of the Complainant in order to try to generate profits with email services attached to the domain name confusingly similar to the Complainant’s trademarks. This is obvious since MX records attached to the disputed domain name intertitres.org have been activated while this domain name points to an inactive page.”
“In the light of the above, it is obvious that the Respondent has registered the domain name <intertitres.org> in bad faith for the sole purpose of taking undue advantage of the Complainant’s prior trademark and reputation.”
The Respondent did not reply to the Complainant’s contentions. After receiving the Complaint, the Respondent communicated with the Center by email to express that it did not understand “problems like this” and explained, “I just want to try designing and mapping out the <intertitres.org> domain about information and books”.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(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.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Domain Name incorporates the Complainant’s registered INTERTITRES mark in its entirety. The generic Top-Level Domain (“gTLD”) “.org” “is viewed as a standard registration requirement” and as such is normally disregarded under the first element of the Policy. Id., section 1.11.2.
The Panel concludes, therefore, that the first element of the Complaint has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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 mark at issue.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s mark in the Domain Name. The Respondent has not advanced rights or legitimate interests, and none are evident from a perusal of the record. The Domain Name is identical to the plural form of a French dictionary word, but there is no associated website with relevant generic use or evidence of such planned use on this record, as the Respondent has not submitted a Response with the required certification of accuracy and completeness (see Rules, paragraph 5(c)(viii), offering detailed information, for example, about the Respondent’s preparations to use the Domain Name (see WIPO Overview 3.0, section 2.2).
The Panel concludes that the Complainant prevails on the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”. The Complainant does not cite any of these, because they do not fit the circumstances, but they are not exclusive of other indications of bad faith.
The Complainant argues that the Respondent “knew or should have known” of the Complainant and its registered trademark, arguing that the trademark is distinctive as it is in the plural form of a French word, and that the Respondent suspiciously obscured its identity with a domain privacy registration. Moreover, the Complainant suggests that, while the Respondent established no corresponding website, the Respondent laid the foundation for using the Domain Name opportunistically and perhaps fraudulently for emails that would appear to be associated with the Complainant.
These arguments for bad faith do not withstand scrutiny, even in the absence of a Response.
To establish bad faith in the registration of the Domain Name, it is fundamental that the Complainant must demonstrate the likelihood that the Respondent, an individual in Sweden, was aware of the INTERTITRES mark and sought to exploit it. The Complainant Natixis is indeed a large financial services group, as the Complainant claims, and its NATIXIS marks are well established, but those names are not included in the Domain Name, which consists solely of the French dictionary word “intertitres”. The Complainant Natixis Intertitres, the Natixis subsidiary devoted to the meal voucher business, seems to operate primarily in France, and it does not appear to have a website or webpage. The Complainant does not offer any examples of advertising or using the INTERTITRES mark. Thus, this proceeding differs from those, including one involving the Complainant and the domain name <natixiis.com>, in which a respondent registered a domain name similar to a well-known and highly distinctive trademark.
The Complainant points instead to the prevalence of search engine results for “intertitres” linking to articles about the Complainant. The leading results concern fines recently imposed on the company by the French competition authority for price-fixing in the meal voucher industry. These concern the company, not a trademark use of the name; they do not refer to INTERTITRES apart from the full company name. Other results link to Natixis group website and social media pages advertising meal vouchers and other employee benefits. However, the Complainant’s meal vouchers are branded on these sites not with the INTERTITRES mark but with other trademarks, predominantly APETIZ and CHÈQUE DE TABLE. It is not clear from this evidence why it must be concluded that the Respondent was likely aware of INTERTITRES as a trademark, as there is little, if any, evidence that the Complainant itself promotes INTERTITRES as a trademark in France, much less internationally.
The Domain Name is a dictionary word in an international language. The Complainant offers no compelling evidence that the trademark has been widely advertised. There are no other facts corroborating an intent to attack the trademark, such as a website with misleading content or fraudulent emails. In these circumstances, the Panel is unwilling to conclude that the Respondent “knew or should have known” about the Complainant’s trademark or suggest an obligation for domain name registrants to search internationally for potentially relevant trademark registrations in such circumstances. See WIPO Overview 3.0, sections 3.2.2, 3.2.3.
The Respondent registered the Domain Name only recently, in April 2020, so the lack of a developed website associated with the Domain Name is not surprising. The Domain Name has been configured for use with email, which can be a precursor to fraudulent applications, but there is no evidence in the record of such use. It is not unknown, or inappropriate, to use a domain name chiefly for email purposes, or to do so while developing an associated website.
Similarly, the Domain Name was registered through a domain privacy service, as is often the case with individuals and small businesses. However, those contemplating fraudulent use of a domain name are unlikely to identify themselves in correspondence with the Center once a UDRP proceeding is launched, as the Respondent did here.
The Complainant does not explain the origins of its INTERTITRES mark but suggests that it is distinctive because, while “intertitre” is a French word denoting either a subheading (in publications) or caption (in films), it “is generally written without S in the French language.” citing the entry for “intertitre” in the Larousse online dictionary of the French language. This is not for this Panel a convincing argument. Larousse, like other dictionaries, cites the singular form of nouns, and the plural form of most nouns in French is formed by simply adding an “s”. The Panel notes that several online French-English dictionaries cite examples of the word’s use in the plural form as well, with a terminal “s” as in the Complainant’s mark. The Panel also refers to Larousseto note the much more relevant sense of “titres” referring to financial “titles” or monetary instruments, which is exactly the sense in which the Complainant uses the coined term “intertitres” for meal vouchers that have value in many restaurants. The Panel notes that this denotation of “titres” is reflected in the name of the pertinent French industry organization, the Commission Nationale des Titres Restaurant -- of which the Complainant is a member. Notably, the Complainant’s brand displayed on the organization’s website is the well-advertised APETIZ, not INTERTITRES.
The Panel notes as well that third parties use the French word “intertitres” for its dictionary value. As an example, “Intertitres” Facebook. Twitter, and Tumblr pages advertise T-shirts, sweatshirts, and stickers with wry remarks in French and English, “Une phrase pour chaque humeur depuis 2010”(“A sentence for every mood since 2010”). The social media pages link to a website at “www.juniqe.com”, which advertises that these phrases are printed as “[b]lurred white all-caps on a black background: the visual formula of Intertitres is simple yet striking, bringing to mind the titles of a silent film”. Other French and English websites found as a result of searching on the term “intertitres” demonstrate its generic (and plural) use in publishing, referring to headings or subheadings, and in film, referring to captions.
On this record, the Panel considers it improbable that the Respondent selected the Domain Name, a French dictionary word, to exploit a French trademark that the Complainant itself does not promote. The Complainant bears the burden of proof on this point and has not carried it. The Complainant on balance fails on the third element, bad faith.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: July 22, 2020