WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. WhoisGuard Protected, WhoisGuard, Inc. / Blake Hood, Blakehood
Case No. D2021-0419
1. The Parties
The Complainant is Natixis, France, represented by Inlex IP Expertise, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama, / Blake Hood, Blakehood, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <natix-trade.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 February 11, 2021. On February 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2021, 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 February 16, 2021, 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 February 18, 2021.
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 February 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on April 1, 2021. 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 banking and financial services company with its headquarters in Paris, France. It has over 17,000 employees in 38 countries and is the corporate, investment and financial services arm of BPCE Group, which is one of the largest banking groups in France.
The Complainant’s primary trading style is NATIXIS and it owns many trade marks to protect this trading style. These include, by way of example only, European Union Trade Mark, registration number 005129176, registered on June 21, 2007 in classes 9, 16, 35, 36, and 38. In addition, the Complainant owns and operates the domain names <natixis.com> and <natixis.fr>, which resolve to active websites promoting the Complainant’s services. The Complainant’s websites use a distinctive purple device logo and the strapline “BEYOND BANKING”, positioned adjacent to its NATIXIS mark.
The disputed domain name was registered on January 26, 2021. It initially resolved to a website which contained a login page. This featured, in the top left of the page, the word “NATIXIS” (albeit this word was partially obscured in the screen print provided by the Complainant), adjacent to which was positioned the Complainant’s purple logo. Below that were the words “WEALTH MANAGEMENT” followed by the words “BEYOND BANKING”. The website is no longer active.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical and highly similar to its prior rights. It reproduces the dominant part of its NATIXIS trade mark, omitting only the last two letters. The addition of the word “trade” does not add any distinctiveness to the disputed domain name.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has been unable to find any indications that the Respondent is the owner of a trade mark for NATIX. Moreover, whilst the Respondent purports to offer educational services, the disputed domain name has resolved to a fake banking website. There is no business or legal relationship between the Complainant and the Respondent. The Complainant has not authorized or licensed the Respondent to use its trade marks in any way. Furthermore, the address provided by the Respondent when it registered the disputed domain name does not exist.
The Complainant says finally that the disputed domain name was registered and is being used in bad faith. Its NATIXIS trade mark is well-known in France and in a number of other countries. In view of the Complainant’s repute, it is unlikely that the Respondent was unaware of its activities and its NATIXIS trade mark as at the date of registration of the disputed domain name. When registering the disputed domain name, the Respondent used a privacy service in order to hide its identity. An inference of bad faith can be made in these circumstances. The disputed domain name has also been registered in bad faith in that it resolved to a website which looked like a banking website, using the Complainant’s mark, logo, and slogan. This strongly indicates that the Respondent deliberately chose the disputed domain name in order to mislead consumers and collect personal banking data or obtain fraudulent payments. A finding of bad faith use can be made where a respondent knew or should have known of a complainant’s trade mark rights and nevertheless used a domain name incorporating a mark in which it had no rights or legitimate interests.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 information provided by the Complainant in relation to its trade mark registrations for NATIXIS, including the mark in respect of which full details are provided above, establish its rights in this trade mark.
For the purpose of determining whether the disputed domain name is identical or confusingly similar to its mark, the generic Top-Level Domain (“gTLD”) “.com” is generally disregarded as this is a technical requirement of registration.
The disputed domain name comprises the first five letters of the Complainant’s mark and adds a hyphen and the word “trade”. The fact that the disputed domain name does not include the remainder of the Complainant’s mark, being the letters “i” and “s”, does not prevent it from being found confusingly similar to the Complainant’s mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The letters “natix” comprise a dominant and recognisable feature of the Complainant’s mark. The additional elements of the hyphen and the word “trade” do not prevent a finding of confusing similarity; see section 1.8 of the WIPO Overview 3.0. Furthermore, the content of the website that resolved from the disputed domain name affirms a finding of confusing similarity; see section 1.15 of the WIPO Overview 3.0.
The Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.
The currently inactive status of the disputed domain name self-evidently does not comprise use in connection with a bona fide offering of goods and services. Moreover, there is no evidence that the Respondent has been commonly known by the disputed domain name, nor does its inactive status comprise legitimate noncommercial or fair use, not least when the composition of the disputed domain name is such that Internet users will be prone to assume that it is closely connected with the Complainant. Accordingly, the present status of the disputed domain name does not give the Respondent any rights or legitimate interests in it.
As there is a possibility that the website to which the disputed domain name previously resolved might reappear, the Panel additionally considers whether the Respondent’s website, if reactivated, would amount to a bona fide offering of goods and services. It is not possible to conceive of any innocent explanation for the creation by the Respondent of a login page which masqueraded as a portal into banking and/or related services provided by, or with the authority of, the Complainant; this was evidently an attempt by the Respondent to deceive Internet users and obtain (at least) personal information from them. As explained at section 2.13.1 of the WIPO Overview 3.0 explains that “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.
The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s NATIXIS trade mark is inherently distinctive. The fact that the Respondent used the disputed domain name following registration, to resolve to a login page which contained the Complainant’s mark coupled with its “BEYOND BANKING” strapline and purple device logo, establishes both an awareness by the Respondent of the Complainant’s rights as at the date of registration of the disputed domain name and an intention on its part to take unfair advantage of those rights in some manner. Moreover, the registration by a respondent of a domain name that is identical or confusingly similar to a well-known trade mark will often raise a presumption of a bad faith registration; see, by way of example; Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607.
The fact that the disputed domain name is currently inactive does not preclude a finding of bad faith use under the doctrine of passive holding. As first considered in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”), factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details and (iv) the implausibility of any good faith use to which the domain name may be put.
All of these factors are applicable to the current circumstances. First, the Complainant’s mark is distinctive and well-known. Second, the Respondent has not submitted a response or provided any evidence of good faith use. Third, the Respondent sought to conceal its identity through use of a privacy service. Finally, having regard to the characteristics of the disputed domain name, as outlined above, it is impossible to think of any good faith use to which it could be put. Accordingly, in the circumstances of this case, the inactive status of the disputed domain name comprises bad faith use under the doctrine of passive holding.
Finally, the Panel considers the previous use of the Respondent’s website at the disputed domain name. Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance at paragraph 4(b)(iv) of the Policy, in summary, is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The form and content of the Respondent’s former website would clearly signify to Internet users that it was operated by the Complainant. Such a belief will have been reinforced because of the confusing similarity between the disputed domain name and the Complainant’s NATIXIS trade mark, which accentuates the false impression of a connection with the Complainant’s business and increases the likelihood of confusion to Internet users. Moreover, the Respondent has not made any attempt to justify its conduct or to rebut the Complainant’s assertions. All these factors in combination point to bad faith registration and use of the type envisaged by paragraph 4(b)(iv) of the Policy; see, in similar circumstances, the decision of the panel in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447.
The Panel therefore finds that the disputed domain name was both registered and 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 disputed domain name <natix-trade.com> be transferred to the Complainant.
Date: April 15, 2021