WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. Jacky LORENZ
Case No. D2021-1541
1. The Parties
The Complainant is Natixis, France, represented by Inlex IP Expertise, France.
The Respondent is Jacky LORENZ, Israel.
2. The Domain Name and Registrar
The disputed domain name <natixis-solutions.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 May 18, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 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 May 21, 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 May 21, 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 May 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2021.
The Center appointed Peter Burgstaller as the sole panelist in this matter on June 21, 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 leading French corporate and investment bank, part of the BPCE Group, that is known internationally. It holds numerous trademark registrations for NATIXIS around the world, registered from 2006 onwards, e.g., French Trademark registration NATIXIS No. 3416315, filed and registered on March 14, 2006; European Union Trade Mark registration NATIXIS FACTOR No. 5589874, filed on December 28, 2006 and registered on December 10, 2007; European Union Trade Mark registration NATIXIS No. 5129176, filed on June 12, 2006 and registered on June 21, 2007; International Trademark registration NATIXIS No. 1071008, registered on April 21, 2010.
In addition, the Complainant and affiliates own, inter alia, the domain names <natixis.com>, registered February 3, 2005, and <natixis.fr>, registered October 20, 2006 (Annex 4 to the Complaint).
The disputed domain name was registered on April 6, 2021 (Annex 1 to the Complaint).
The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its NATIXIS trademark.
The disputed domain is used to direct to the Registrar’s parking page including pay-per-click links which refer to the business of the Complainant and its competitors.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s trademark, because it incorporates in its entirety the NATIXIS trademark and simply adds the word “solutions” together with a hyphen and the generic Top-Level Domain (“gTLD”) “.com”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name – the Complainant has not licensed or otherwise permitted the Respondent to use its trademark NATIXIS.
The Respondent has moreover registered and used the disputed domain name in bad faith. The Respondent knew or must have known of the Complainant’s trademark NATIXIS when it registered the disputed domain name and used it to direct Internet users to the Registrar’s parking page, which includes pay-per-click links targeting the industry of the Complainant and its competitors. Finally, the disputed domain name has already been used for phishing and scams by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) the disputed 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 with respect to 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 Complainant submitted evidence, which incontestably and conclusively establishes rights in the trademark NATIXIS.
The disputed domain name is confusingly similar to the Complainant’s registered trademark NATIXIS since it entirely contains this distinctive mark and only adds the descriptive word “solutions” together with a hyphen.
It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Finally, it has also long been held that gTLDs are generally disregarded when evaluating the confusing similarity of a disputed domain name.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0). Here, 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.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s mark in its entirety together with the descriptive term “solutions”, taking advantage of the Complainant’s mark to attract Internet users to the Respondent’s website for profit, can not be considered fair as these falsely suggest an affiliation with the Complainant that does not exist (see section 2.5 of the WIPO Overview 3.0).
Noting the above, and in the absence of any Response or allegations from the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
(i) The Complainant is the owner of the distinctive registered trademark NATIXIS, and has registered and used such trademark in many jurisdictions around the world, long before the registration of the disputed domain name. Moreover, the Complainant registered and is using the domain names <natixis.com> and <natixis.fr> to address its main website.
It is inconceivable for this Panel that the Respondent registered or has used the disputed domain name without knowledge of the Complainant’s rights, which leads to the necessary inference of bad faith. This finding is supported by the fact that the disputed domain name incorporates the Complainant’s trademark NATIXIS entirely together with terms which are merely descriptive. In fact, the use of the term “solutions” in connection with the mark NATIXIS rather strengthen the impression that the disputed domain name is in some way connected to the Complainant or the Complainant’s services, and at least the Respondent may be seen to free ride on the reputation of the Complainant and its name and mark NATIXIS.
Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent.
(ii) The disputed domain name is also being used in bad faith since it resolved to a parking page including pay-per-click links targeting the business of the Complainant and its competitors; in fact, the parking page displays pay-per-click links related to investment, funds, and private business financing.
Panels have found that the use of a domain name to resolve to a parked page comprising pay-per-click links does not represent a bona fide use of a domain name where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users; this is the case in the present case.
Therefore, the Panel is convinced that the Respondent registered and used the disputed domain name to take unfair advantage of the reputation of the Complainant’s trademark NATIXIS, and in so doing to disrupt the Complainant’s business and to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
On the basis of these facts and findings, it is for the Panel incontestable that the disputed domain name was registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.
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 <natixis-solutions.com> be transferred to the Complainant.
Date: July 5, 2021