WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis Wealth Management v. Viljami Ylönen
Case No. D2021-1719
1. The Parties
The Complainant is Natixis Wealth Management, France, represented by Inlex IP Expertise, France.
The Respondent is Viljami Ylönen, Finland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <vega.investments> is registered with Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2021. On June 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 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 June 7, 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 June 8, 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 June 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2021. The Response was filed with the Center on June 29, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on July 9, 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 in this administrative proceeding is a French private banking company named Natixis Wealth Management. The Complainant owns several registered trademarks in the term “Vega” including European Union registered trademarks no. 011865979 for the word mark VEGA INVESTMENT MANAGERS, registered on June 8, 2014 in class 38 and no. 11866167 for the figurative mark VEGA INVESTMENT MANAGERS in a stylized typeface with the first word above the other two words, separated by a line, registered on June 4, 2014 in class 38. The Complainant is also the holder of the domain name <vega-im.com>, registered on November 23, 2012.
On the website at “www.vega-im.com”, which appears to be exclusively in the French language, the Complainant states that VEGA INVESTMENT MANAGERS has become the wealth management expertise center of the second largest banking group in France and notes that it designs tailor-made financial solutions in terms of its three fundamental businesses of Collective Management, Mandate Management and Fund Selection. A search on “www.google.com” produced by the Complainant for “vega investment managers” places the Complainant’s website as the top result and notes the affiliation with the Natixis Group.
The disputed domain name was registered on May 23, 2021. According to a screenshot produced by the Complainant, the disputed domain name previously pointed to a page on “www.dan.com” through which it was offered for sale in the sum of USD 1,995. Said page has since been taken down.
5. Parties’ Contentions
The Complainant contends as follows:
Identical or confusingly similar
The disputed domain name is identical to the Complainant’s VEGA trademark, which has no meaning and is highly distinctive. The addition of the “.investments” extension increases the likelihood of confusion and almost reproduces the VEGA INVESTMENTS MANAGER (sic) trademark. The consumer will believe that the disputed domain is owned by the Complainant.
Rights or legitimate interests
The Respondent is not the owner of any trademark related to “Vega”. There is no business or legal relationship between the Parties and the Complainant has not authorized or licensed the Respondent to use its trademarks in any way. A lack of such a license allows the Panel to infer lack of rights or legitimate interests. An Internet search against the Respondent’s name does not produce pertinent results. It follows that the Respondent is not commonly known as “Vega”. The Respondent also does not use the disputed domain name for a bona fide offering of goods or services. The disputed domain name is not used but points to a website soliciting offers to purchase it for USD 1,995. It is reasonable to assume that the disputed domain name was registered to sell it to the Complainant.
Registered and used in bad faith
The disputed domain name has been registered to take advantage of the reputation of the Complainant, which is well known in France and in several other countries. The Complainant, Natixis, has more than 17,000 employees in 38 countries and is the corporate, investment and financial services arm of France’s second-largest banking player. In 2017, the Complainant ranked as first bookrunner for syndicated real estate finance loans in the EMEA region and was a leader in equity research in France. The Complainant held the first place in impact management in 2015 and was awarded number one account keeper for employee savings in 2015 by the French Association of Financial Management. According to Thomson Reuters Global Project Finance Review, the Complainant was the number one bookrunner for project finance. It follows that the Complainant Natixis enjoys a wide reputation not only in France but around the world. The website at “www.vega-im.com” highlights the affiliation of VEGA INVESTMENTS MANAGERS (sic) to the Natixis Group. It seems unlikely that the Respondent was unaware of the Complainant’s activities and of the existence of the Natixis company at the time that the disputed domain name was registered. The Respondent used a privacy service when registering the disputed domain name. Bad faith may be inferred from the use of such a service if the Panel cannot see why the Respondent should need to protect its identity.
The disputed domain name has been registered with the aim of taking advantage of the reputation of the VEGA INVESTMENT MANAGERS trademark and the Natixis Group. The Respondent registered the disputed domain name on May 23, 2021 and has already offered it for sale in the sum of USD 1,995. A recent decision under the Policy has found bad faith in a similar case of proximity between the date of registration and the offer for sale. The Respondent registered the disputed domain name in bad faith for the purpose of selling, renting or transferring it to the Complainant or the Complainant’s competitors.
The Respondent contends as follows:
Identical or confusingly similar
The terms of the Complaint vary as to what the Complainant and its advisers think is its trademark. This is VEGA INVESTMENT MANAGERS only. The disputed domain name is not identical or confusingly similar thereto. The phrase in the disputed domain name conveys the meaning of an entity owning investments while the Complainant’s mark signifies portfolio management and financial advisory services. The Complainant’s argument is moot regarding the Respondent’s deliberate intention to reproduce the Complainant’s mark in the disputed domain name because the first part of the mark is VEGA INVESTMENT, not VEGA INVESTMENTS as incorrectly stated by the Complainant. The Respondent did not select the disputed domain name to mislead consumers.
Rights or legitimate interests
“Vega” is an internationally recognized word among many others that originate in Latin or Greek and are widely used as parts of brand names throughout the world. The WIPO Global Brand Database returns 4,306 results for the term as a brand or part thereof. The Respondent searched on said database before registering the disputed domain name for the phrase “vega investments” among others and no results were returned for live marks. Similarly, “vega AND investments” returns no results. The disputed domain name was unregistered and available for anyone to register for some seven years from the launch of the “.investments” extension to the date of registration by the Respondent.
The Respondent registered the disputed domain name without awareness of the Complainant or its marks in part due to the fact that the Respondent’s company engaged in small-time investment activity and the disputed domain name was a re-branding candidate for said company. The disputed domain name was quickly disregarded because the Respondent could not acquire the “.com” equivalent, namely <vegainvestments.com> and was listed at a non-predatory or exploitative, below average, price for an aftermarket domain name. This reflected the Respondent’s time in searching for a suitable and available domain name without trademark issues.
Registered and used in bad faith
The Respondent would never engage in any unlawful activity, including deliberately infringing or taking advantage of any intellectual property rights of any entity.
It is not true that the Respondent registered the disputed domain name to take advantage of the Complainant. The Respondent had never heard of the Complainant or its parent company prior to the filing of the Complaint. The Complainant may be large in the financial services sector but no-one outside that industry knows anything about that industry or its participants. It is unreasonable to assume that the Respondent, residing in Finland, would, or should, have knowledge of a French wholesale bank. It is even more unreasonable to assume that the Respondent would have knowledge of the Complainant’s VEGA INVESTMENT MANAGERS subsidiary which is geared primarily towards French clients. The corresponding website is only in French. A “www.bloomberg.com” profile states that the subsidiary serves customers in France.
When conducting a Google search for the phrase “vega investments” without quotes the Complainant’s website only features at page two of the results. If the same search is conducted with quotes, the Complainant’s website does not appear at all. This is evidence that the disputed domain name has nothing to do with the Complainant’s trademark.
The Respondent has not employed a privacy service. This is a default setting at the Registrar and is true for most registrars after the advent of the European Union General Data Protection Regulation. Such services are proxies masking the WhoIs and do not prevent email communication with the registrant. It is irrational to represent a registrant’s decision not to opt out of a default setting in compliance with a legal framework as a sign of bad faith. The Complainant’s argument on this topic is moot.
Despite apparently owning it, the Complainant does not forward the domain name <vegainvestmentmanagers.com> to their website. Under those circumstances, it is far-fetched to suggest that the Respondent would think that the Complainant would be interested in owning even more domains for which they have no use.
The Respondent did not approach the Complainant at any point regarding the disputed domain name. The present Complaint is the Complainant’s first contact with the Respondent. After perusing the Complaint, the Respondent decided to respond due to the discrepancies in the description of the Complainant’s trademark, the representation of accusations or assumptions as facts, and the representation of facts in a way that is favorable to the Complainant and unfavorable to the Respondent. The Respondent has chosen to defend itself against false or misleading accusations. The disputed domain name should not be transferred to the Complainant.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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 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
To make out its case under the first element, the Complainant must first show UDRP-relevant rights in a trademark. Thereafter, the Complainant must demonstrate that the disputed domain name is identical or confusingly similar to such trademark. The comparison is typically carried out on a straightforward side-by-side basis. While the generic Top-Level Domain (“gTLD”), does not require to be taken into consideration in the determination of identity or confusing similarity, it can on occasion be relevant. UDRP panels have recognized that where the applicable gTLD and the second-level portion of the domain name in combination reflect the relevant trademark, in what is often called “spanning the dot” cases, panels may consider the domain name in its entirety for purposes of assessing confusing similarity (see, for example, Timeslice Limited T/A Host My Cloud v. Joshua Helbig, WIPO Case No. D2020-1584).
In the present case, the Panel is satisfied that the Complainant has rights in the trademark VEGA INVESTMENT MANAGERS as described in the factual background section above. Comparing this to the disputed domain name as a whole, it may be seen that the first two words of the Complainant’s mark are reproduced in their entirety, “spanning the dot” as described above, and that the word “manager” is left out, leaving the letter “s” in place. The Panel is satisfied on the basis of this comparison that the disputed domain name is confusingly similar to the Complainant’s trademark as substantial elements of the trademark are sufficiently recognizable.
The Respondent’s arguments relating to the semantic meaning of the mark and the disputed domain name respectively are not relevant to the first element test, which is a relatively low threshold intended to establish that the Complainant has a bona fide basis for the Complaint (see: The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). The comparison is executed objectively without reference to semantics or to any alleged purpose of the Respondent in selecting the disputed domain name. Those aspects of the Respondent’s case may however be relevant to the second or third element assessments under the Policy.
B. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding in connection with registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
To establish the third element under the Policy, the Complainant requires to demonstrate that the disputed domain name has been both registered and used in bad faith by the Respondent. This may be determined on the basis of the non-exclusive circumstances set out in paragraph 4(b) of the Policy or other relevant facts and circumstances. Bad faith registration and use are conjunctive, and both must be found for the Complaint to succeed.
For registration in bad faith to be made out, it is necessary for the Complainant to establish that the Respondent was aware of the Complainant’s VEGA INVESTMENT MANAGERS trademark at the point when the disputed domain name was registered and that the Respondent had the requisite abusive intent to target this. In the present case, the Complainant’s case as to the notoriety of its mark is lacking in substance. It is clear that the Complainant’s banking and financial services group is well known both inside France and beyond but it is not evident that this notoriety extends to its VEGA INVESTMENT MANAGERS mark. The Complainant has produced no evidence of any significance to suggest that the Respondent would have had knowledge of this particular brand and trademark on the balance of probabilities. The brand appears to be focused on a French (and indeed exclusively a francophone) audience and there is no evidence on the present record of its wider reach, if any.
Although the Parties are in different jurisdictions, and the Complainant has not suggested that it conducts any activities in Finland under the relevant mark, that is not necessarily the end of the matter. As the panel noted in Fakir Elektrikli EV Aletleri Diş Ticaret Anonim Şirketi v. Development Services, Telepathy, Inc., WIPO Case No. D2016-0535, “the fact that a respondent is in a different jurisdiction than a complainant is something that some people can consider to be of greater significance than it actually is, particularly if the complainant has a significant online presence”. Here, however, the Complainant’s online presence, at least as far as the VEGA INVESTMENT MANAGERS mark is concerned, does not raise the reasonable inference that the Respondent must have known of it when it registered the disputed domain name. The Complainant’s evidence does not focus particularly on the relevant online presence other than to produce some screenshots of the website at “www.vega-im.com” which largely underline the Respondent’s point that the Complainant is targeting a domestic French audience. On the other hand, the Respondent’s evidence in the form of a Google search provides some support both for its proposition that the Complainant’s online presence was unlikely to have come to its knowledge and also that the term “Vega” (and even in one case “Vega Investments”) is in use by other businesses and does not exclusively denote the Complainant’s subsidiary or necessarily call the Complainant’s trademark to mind.
The Complaint suggests that the Respondent’s knowledge of and intent to target the Complainant’s mark may reasonably be inferred from the fact that the disputed domain name was offered for sale not long after it was registered. The Respondent’s counter to this is simply that it came up with the term “Vega Investments” as one possible rebranded name for its company and then moved on from that idea after registration of the disputed domain name because it had discovered that it could not acquire a corresponding “.com” domain name registration. Having invested in coming up with what it thought was a suitable name, it determined to offer this for sale on the secondary market at a reasonable price reflective of the effort and time involved. The Respondent also points out that the phrase “Vega Investments” does not necessarily denote the Complainant’s mark on a semantic basis as there is a difference between “investments” and “investment managers”.
Without evidence from the Parties on the topic, the Panel is not in a position to assess the reasonableness or otherwise of the price which the Respondent named for the disputed domain name. The Panel can however identify that it is likely to be in excess of the Respondent’s out of pocket costs in registering the disputed domain name and thus can understand how the Complainant’s suspicions were initially aroused. Nevertheless, when coupled with the Respondent’s submissions and evidence that the term “Vega” is in use as a brand or part of a brand in over 4,300 examples (including one example in the Complainant’s Google screenshot of a third party itself named “Vega Investments”), the lack of evidence of the notoriety of the Complainant’s VEGA INVESTMENT MANAGERS mark outside France, and the lack of any evidence of a substantial online presence for said mark, the Panel is not prepared to infer from the mere fact that the disputed domain name was swiftly offered for sale at the given price that, on the balance of probabilities, the Respondent must have had the Complainant in particular in its sights.
The Panel notes the Respondent’s explanation for its selection of the word “vega” as part of the phrase “vega investments”, namely that this is a popular term in widespread use for brands and businesses. Although not mentioned by either of the Parties, it should be noted that the word “Vega” has an astronomical meaning and is found in the dictionary as the name of a star in the constellation Lyra, ultimately deriving from Medieval Latin. This may go some way to explaining its apparent popularity as indicated by the number of results in the WIPO Global Brand Database. In short, while lacking in some supporting detail, such as the identity and activities of its company, the Respondent’s explanation as to how it came by the disputed domain name is not wholly implausible in the specific circumstances of this case, particularly given that there is no evidence before the Panel from which it could reasonably infer that the Respondent more probably than not had any prior knowledge of the Complainant.
The Panel notes the Complainant’s reliance on the case of Arm Limited v. Super Privacy Service LTD c/o Dynadot / Ya Lin, WIPO Case No. D2021-0969 for its proposition regarding the swiftness of the disputed domain name being offered for sale after the date of registration. The time period in that case was some six months, whereas the period in the present case is even shorter and therefore potentially significant. However, the Panel does not consider that any general rule can be derived from the period between registration and the offering of a domain name for sale. Each case requires to be determined on its own facts and, in the present case, the Respondent has provided a plausible explanation for its decision to sell the disputed domain name resulting from its abandonment of a rebranding as “Vega Investments” after it failed to acquire the “.com” variant. Furthermore, considering as a whole the facts and circumstances in Arm from which registration and use in bad faith was inferred, it may be seen that these are different from the matter at hand to a material extent. The complainant in Arm sent a demand letter to the respondent and the latter did not respond to it. The respondent failed to reply to the complainant’s contentions in the administrative proceeding and there was no explanation before the panel for the respondent’s registration of the domain name concerned or subsequently offering it for sale. The panel accepted the complainant’s evidence that the ARM trademark was well known. Finally, the panel found that the domain name concerned had been offered for sale “at a substantial price”, being a price of USD 5,000. Given these material differences in the respective factual backgrounds, the Panel does not consider that it is appropriate to infer registration and use in bad faith in the present case on the same basis as Arm.
In all of the above circumstances, the Panel finds that the Complainant has not established the third element under the Policy and the Complaint fails.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: July 23, 2021