WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. Domain Protection Services, Inc. / Pierre Paul
Case No. D2020-2009
1. The Parties
The Complainant is Natixis, France, represented by Inlex IP Expertise, France.
The Respondent is Domain Protection Services, Inc., United States of America / Pierre Paul, France.
2. The Domain Name and Registrar
The disputed domain name <natixis.space> (“Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2020. On July 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 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. The Center sent an email communication to the Complainant on August 3, 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 August 4, 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 August 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2020.
The Center appointed Vincent Denoyelle as the sole panelist in this matter on September 9, 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
Given that no Response was filed, the following facts are based on the submissions in the Complaint and the Annexes to the Complaint.
The Complainant is a financial services company headquartered in France with global operations. The Complainant is part of BPCE Group.
The Complainant is the owner of a large trade mark portfolio for NATIXIS including in France where the Respondent appears to be based. The Complainant’s NATIXIS trade marks include the following, all of which predate the registration of the Domain Name:
- French trade mark NATIXIS, registration no. 3416315, registered on March 14, 2006; and
- European Union Trade Mark NATIXIS, registration no. 5129176, registered on June 21, 2007.
The Complainant is also the owner of several domain names reflecting its trade mark under several generic Top-Level Domains (“gTLDs”).
The Domain Name was registered on May 28, 2020, and the Domain Name resolves to an inactive website, which currently triggers a security alert “Outbound Spyware - Your request was denied because it may represent a privacy or security breach”.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s NATIXIS trade marks.
The Complainant argues that as at the second level the Domain Name reproduces the Complainant’s entire NATIXIS trade mark and the gTLD “.space” should be disregarded for the purposes of assessing confusing similarity. The Complainant considers the Domain Name to be identical to the NATIXIS trade mark in which the Complainant has rights.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
To support this contention the Complainant explains that further to the disclosure of the name of the underlying Respondent, the Complainant carried out a search to ascertain whether the Respondent held any trade mark rights in the term NATIXIS and the search apparently revealed that the Respondent does not hold any such rights.
The Complainant also states that the Respondent is not an authorised dealer, distributor, or licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of its NATIXIS trade mark.
In addition, the Complainant stresses that in the absence of any use of the website associated with the Domain Name, it cannot be said that the use of the Domain Name could demonstrate a legitimate use of the Domain Name.
The Complainant asserts that the Domain Name was registered and is being used in bad faith.
The Complainant essentially argues that given the notoriety and distinctiveness of the NATIXIS trade mark the Respondent would have been aware of the Complainant’s trade mark at the time of registering the Domain Name.
The Complainant also points to the fact that the Domain Name was registered through a privacy protection service.
The Complainant also states that the passive holding of the Domain Name does not prevent a finding of bad faith in order to take advantage of the reputation of the Complainant.
Thus, the Complainant concludes that the Domain Name should be transferred in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met, namely:
(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.
In the case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
In the absence of a Response from the Respondent whereby the Respondent did not object to any of the contentions from the Complainant, the Panel will base its decision on the basis of the Complaint and supporting Annexes.
A. Identical or Confusingly Similar
In light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in NATIXIS, which is reproduced in its entirety in the Domain Name.
The second point that has to be considered is whether the Domain Name is identical or confusingly similar to the trade mark NATIXIS in which the Complainant has rights.
At the second level, the Domain Name only consists of the term “natixis”. Then there is the addition of the gTLD “.space”. As is generally accepted, the addition of a gTLD such as “.space” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test.
Thus, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the respondent] 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) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark 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 trade mark or service mark at issue.”
Numerous previous panels have found under the UDRP that once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name, the burden of production shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name.
Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Domain Name.
As an example, there is no indication that the Respondent has any rights in respect of the trade mark NATIXIS and the searches carried out by the Complainant confirm this position.
The absence of use or rather the apparently malevolent underlying use of the Domain Name and associated website, as suggested by the security warning triggered when trying to access the website associated with the Domain Name, cannot be considered bona fide, legitimate or fair.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that [the respondent has] registered or acquired [a disputed] 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Given the circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds it extremely likely that the Domain Name was registered in bad faith.
The Domain Name reproduces the exact NATIXIS trade mark of the Complainant and this cannot be a coincidence.
The term “natixis” is according to the Complainant and to the best of the Panel’s knowledge not a descriptive or common term but instead it is a made up term, so the fact that the Respondent decided to register the Domain Name reproducing this term strongly suggests that the Respondent had the Complainant’s trade mark in mind and targeted it specifically.
This is even more likely given (i) the significant renown of the NATIXIS trade mark, as evidenced extensively in the Complaint and as acknowledged by several previous UDRP panels, (ii) the fact that the Respondent is based in France where the Complainant is headquartered and where its renown is probably higher than anywhere else, and (iii) the fact that the Domain Name was registered relatively recently and many years after the registration of many NATIXIS trade marks.
Thus, the Panel finds that the Domain Name was registered in bad faith.
As for use of the Domain Name in bad faith, given the circumstances described in the Complaint, the documentary evidence provided by the Complainant and the brief verification carried out by the Panel of the website associated with the Domain Name, the Panel is satisfied that the Domain Name is used in bad faith.
As described and substantiated in the Complaint, the Domain Name appears to be passively held. However, further to the Panel trying to access the website associated with the Domain Name, accessing the website triggered a security alert indicating “Outbound Spyware”, “Your request was categorized by Blue Coat Web Filter as ‘Malicious Sources/Malnets’.”
Passive use itself would not cure the Respondent’s bad faith given the overall circumstances here, specifically the significant renown of the Complainant’s NATIXIS trade mark, especially in the country where the Respondent is based. Furthermore, it would seem from the security alert that the Domain Name is used for malevolent purposes, constituting a cybersecurity threat hanging over the Complainant’s head. This can only be seen as use of the Domain Name in bad faith.
This is affirmed by the fact that the Respondent chose not to object to the Complainant’s assertions.
This is further supported by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service, which, in these circumstances, is an additional indication of the Respondent’s bad faith and its intent to use the Domain Name in a way which may be abusive or otherwise detrimental to the Complainant and its rights.
Thus. the Panel finds that the Domain Name is being used 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 Domain Name <natixis.space> be transferred to the Complainant.
Date: September 23, 2020