WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. Privacy Service Provided by Withheld for Privacy ehf / Franky Banana
Case No. D2021-2632
1. The Parties
The Complainant is Natixis, France, represented by Inlex IP Expertise, France.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / franky banana, Benin.
2. The Domain Name and Registrar
The disputed domain name <natixiskredit-bk.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 August 12, 2021. On August 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 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 August 19, 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 August 23, 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 September 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2021.
The Center appointed Gareth Dickson as the sole panelist in this matter on November 15, 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 corporate and investment bank based in France. It has thousands of employees across 38 countries.
The Complainant has been offering banking services under the NATIXIS trade mark (the “Mark”) since 2006, and is the owner of a number of trade mark registrations for or incorporating the Mark around the world, including:
- French Trade Mark NATIXIS (word) registration number 3416315, filed on March 14, 2006;
- European Union Trade Mark NATIXIS (word) registration number 5129176, filed on June 12, 2006, and registered on June 21, 2007; and
- International Trade Mark NATIXIS (figurative) registration number 1071008 filed on April 21, 2010.
Previous UDRP panels have held that the Mark is well known and have upheld the Complainant’s rights in it.
The disputed domain name was registered on August 6, 2021. It stopped directing Internet users to a website purporting, or at least pretending, to offer banking services at some point after the Complaint was filed and currently does not point to any active website. However, the email servers for the disputed domain name remain active.
5. Parties’ Contentions
The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world. It contends that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark (which is recognisable within the disputed domain name) with the addition after the Mark of the descriptive term “kredit”, being the German word for “loan”, and then a hyphen followed by “bk”, being an abbreviation for the descriptive word “bank”, under the generic Top-Level Domain (“gTLD”) “.com”. It notes that previous UDRP decisions have held that the use of the word “kredite” and the letters “bk” do not prevent a finding of confusing similarity.
The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has being using the disputed domain name to mislead and divert consumers, to offer services similar to those of the Complainant, to collect personal banking data of consumers and to take advantage of the reputation of the Complainant.
The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services. The Complainant notes too that the Respondent has used a privacy service to conceal its identity for as long as possible, and used a false address when registering the disputed domain name.
The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name and therefore registered it and is using it in bad faith. The Mark, according to the Complainant, has no meaning, is highly distinctive and is well known throughout the world and especially in France. It is noted that the website to which the disputed domain name once directed Internet users has been made available in French and it is alleged by the Complainant that the Respondent was targeting French consumers, where the Complainant is particularly well known. The Respondent’s own use of the disputed domain name confirms that the Respondent knew of the Mark and the Complainant’s interest in it when it registered the disputed domain name and that it registered it in bad faith.
Finally, the Complainant argues that the Respondent has used the disputed domain name to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Mark, contrary to the Policy. It contends that the (current) passive holding of the disputed domain name remains a use in bad faith under the Policy. Together, the Complainant submits that the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that: “[I]n cases where a domain name incorporates the entirety of a trade mark, 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.”
Section 1.8 of the WIPO Overview 3.0 further provides that: “Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the disputed domain name incorporates the Mark in its entirety. The addition in the disputed domain name of “kredit-bk” does not prevent a finding of confusing similarity, nor does the addition of the gTLD “.com”.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes 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.
In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark is inherently distinctive and is well known internationally. The Complainant has not given the Respondent permission to use the Mark, in the disputed domain name or otherwise, and there is no evidence that the Respondent has not been commonly known by the disputed domain name.
There is no evidence that the Respondent has acquired any rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it. Furthermore, the addition in the disputed domain name of “kredit-bk”, being a reference to a loan in German language and to an abbreviation of the word “bank” and therefore closely associated with the Complainant's activities under the Mark creates a risk of implied affiliation that cannot constitute fair use. See section 2.5.1 of the WIPO Overview 3.0.
Together, this makes a coincidental adoption of the Mark by the Respondent in the disputed domain name highly unlikely; previous UDRP panels have reached that conclusion and there is no basis for this Panel to reach a different conclusion in this Complaint.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel 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 Panel notes that previous UDRP panels have recognised the distinctive nature of the Complainant’s Mark. The Panel also notes that the disputed domain name was registered years after the Mark was registered and accepts that the disputed domain name was registered by reference to the Mark.
As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name. The Panel’s finding is reinforced given the descriptive nature of the added terms to the Complainant services under the Complainant’s Mark.
The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark.
The disputed domain name is also being used in bad faith since it will lead Internet users to wrongly conclude that the Respondent is connected to the Complainant.
Notwithstanding that the use of the disputed domain name for a website purporting to offer banking services under the Mark has now ceased, the Panel notes that the Respondent has at the very least made preparations to use the disputed domain name to send emails in a manner that will inevitably confuse recipients of such communications as to the genuine origin of them. The Respondent has not sought to explain its registration and use of the disputed domain name, has attempted to conceal its identity, and has not participated in these proceedings. There is also no conceivable use of the disputed domain name by the Respondent that would not be illegitimate and therefore there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified.
Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name 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, <natixiskredit-bk.com>, be transferred to the Complainant.
Date: November 29, 2021