WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Natixis v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2021-1483

1. The Parties

The Complainant is Natixis, France, represented by Inlex IP Expertise, France.

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Name and Registrar

The disputed domain name <natiixis.com> (the “Domain Name”) is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2021. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. By email dated May 12, 2021, the Registrar transmitted to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 May 26, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was June 15, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on June 17, 2021.

The Center appointed D. Brian King as the sole panelist in this matter on July 8, 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

A. The Parties

The Complainant is Natixis, a financial services and investment management company based in Paris, France. The Complainant is part of the French BPCE Group, which is the country’s second-largest banking group. The Complainant has registered and used marks corresponding to the Natixis name since 2006. According to the Complaint, the Complainant employs over 17,000 people in 38 counties, and it has won numerous awards for its services (Annex 8 to the Complaint).

The Respondent has not provided the Panel with any information on its history or activities.

B. The Mark

The Complainant owns French, European Union and international trademarks for the name NATIXIS. An illustrative list of these registered marks follows (Annex 3 to the Complaint):

The Complainant also owns and uses numerous domain names incorporating the NATIXIS mark. These include <natixis.com>, registered on February 3, 2005, and <natixis.fr>, registered on October 20, 2006 (Annex 4 to the Complaint).

C. The Domain Name

The Domain Name was registered on March 5, 2021 (Annex 1 to the Complaint). The Complaint contains evidence that when attempting to access the website associated with the Domain Name (the “Website”), the Complainant was prevented from doing so by its antivirus software (Complaint, page 10). The Domain Name’s email servers have been activated, allowing emails to be sent from “[…]@natiixis.com” accounts (Complaint, page 11).

5. Parties’ Contentions

A. Complainant

The Complainant first contends that the Domain Name is confusingly similar to its registered NATIXIS trademark. That mark is distinctive, the Complainant says, because it has no meaning other than to identify the Complainant’s business. The Complainant proceeds to note that the Domain Name entirely incorporates the NATIXIS mark, with the addition of the letter “i”. This misspelling of the mark is said to constitute typosquatting, which previous UDRP panels have found can satisfy the confusingly similar requirement. The Complainant argues that the additional letter does not prevent a finding of confusing similarity here, given that the dominant part of the Domain Name remains the NATIXIS mark. The Complainant further notes that when conducting an Internet search for the term “natiixis,” the Google search engine automatically amends the search to show results for “natixis” instead.

The Complainant next argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. To demonstrate this, the Complainant represents that it has no business relationship with the Respondent and has not authorized the Respondent to use the NATIXIS mark in any way.

Finally, the Complainant argues that the Domain Name was registered and is being used in bad faith. The Complainant first points out that its brand is well known both in Europe and globally (Annex 8 to the Complaint), and that previous UDRP decisions have recognized its notoriety (Annex 6 to the Complaint). In these circumstances, the Complainant says, it is very unlikely that the Respondent was unaware of the Complainant’s rights in the NATIXIS mark when registering the Domain Name, giving rise to the inference that it was registered in bad faith. The Complainant proceeds to identify a number of other circumstances based upon which it contends that bad faith registration and use can be inferred, including that: (i) the Respondent used a privacy service to conceal its identity; (ii) an Internet search for the Website conducted by the Complainant was blocked by its antivirus software, suggesting that the Website contains malware; and (iii) the Respondent has configured the Domain Name to send emails, which, particularly given the nature of the Complainant’s business, suggests that the Respondent intends to use, or has used, the Domain Name in connection with a phishing scam.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:

(i) the Domain Name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights;

(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.

Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.

Paragraph 4(b) of the Policy sets out illustrative circumstances that may demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above.

A. Identical or Confusingly Similar

The Domain Name entirely incorporates the Complainant’s NATIXIS trademark. The only differences are that the first “i” is doubled and the “.com” generic Top-Level Domain (“gTLD”) has been added. It is well established that the addition of the gTLD does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. The Panel further finds that the obvious misspelling of the Complainant’s mark (through the doubling of the “i”) constitutes typosquatting, which supports the finding of confusing similarity. See WIPO Overview 3.0, section 1.9. Even without this finding, the addition of the letter “i” would not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8.

Accordingly, the Panel finds that the Complaint succeeds as to the first element of the Policy.

B. Rights or Legitimate Interests

Many prior UDRP panels have found that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a)(ii) of the Policy (see, e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205). Once a prima facie showing is made, the burden of production shifts to the respondent to demonstrate that it possesses rights or legitimate interests in respect of the disputed domain name.

The present Panel agrees that the Complainant need only make out a prima facie case and finds that it has met that standard here. In the absence of any contrary evidence, the Panel accepts the Complainant’s representation that the Respondent has no connection to the Complainant and has not received permission to use the Complainant’s NATIXIS mark. The Panel also finds no indication that the Respondent is commonly known by a name corresponding to the Domain Name.

In these circumstances, the Complainant has made out a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Name. The Respondent has failed to provide any contrary evidence, despite having had the opportunity to do so. The Panel accordingly finds that the Complaint succeeds as to the second element of the test under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element of the test under paragraph 4(a) of the Policy requires proof that the Domain Name has been registered and is being used in bad faith. The Panel finds that to be sufficiently established here.

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark (as is the case here) by an unaffiliated entity can by itself create a presumption of bad faith. Further, the Complaint contains evidence from which a strong inference arises that the Website is being used to distribute malware (Complaint, page 10). Per se illegitimate activity such as the dissemination of malware constitutes sufficient proof of bad faith registration and use. See WIPO Overview 3.0, section 3.1.4.

In addition, even if no use was being made of the Domain Name, the Complaint would still succeed under the passive holding doctrine. The Complainant has demonstrated to the Panel’s satisfaction that the factors commonly viewed as establishing impermissible passive holding of a domain name are present here. Specifically, these are: the distinctiveness of the Complainant’s trademark; the Respondent’s failure to provide any evidence of actual or contemplated good faith use; the Respondent’s concealment of its identity; and, in light of the distinctiveness and notoriety of the NATIXIS mark, the implausibility of any good faith use to which the Domain Name could be put. See WIPO Overview 3.0, section 3.3.

On these grounds, the Panel finds that the Complaint likewise succeeds as to the third element of paragraph 4(a) of the Policy.

7. Decision

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, <natiixis.com>, be transferred to the Complainant.

D. Brian King
Sole Panelist
Date: July 22, 2021