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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Natixis v. Contact Privacy Inc. Customer 0162569438 /Name Redacted

Case No. D2021-3147

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 0162569438, Canada / Name Redacted.1

2. The Domain Name and Registrar

The disputed domain name <natixis-us.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2021. On September 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 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 September 29, 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 October 1, 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 October 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2021.

The Center appointed Alistair Payne as the sole panelist in this matter on November 30, 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 the corporate, investment, and financial services arm of BCPE Group, one the largest French corporations in the banking sector. The Complainant has 17,000 employees in 38 countries and has won various international awards for its services in the financial services industry. It owns various trade mark registrations including a European Union Trade Mark registration for NATIXIS under number 005129176 registered on June 21, 2007 and International registration 1071008 registered on April 21, 2010 and designated in the United States for the NATIXIS logo mark including the word mark NATIXIS. Its domain names at <natixis.com> and <natixis.fr> redirect to its main public facing website.

The disputed domain name was registered on September 13, 2021. The disputed domain name is hosting a parked website enticing visitors to build their own website. In addition, “MX Records” attached to the disputed domain name have been activated.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights for its NATIXIS mark as noted above. It says that the disputed domain name wholly incorporates the Complainant’s trademark NATIXIS and merely adds the geographic identifier “US” and that this does not negate confusing similarity between the disputed domain name and the mark.

The Complainant submits that the Respondent does not own any “natixis-us” trade mark or company of the same name in the United States and that there is no business or legal relationship between the Complainant and the Respondent. The Complainant says that it has neither authorised nor licensed the Respondent to use its trade marks in any way and that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant.

The Complainant notes that the name recorded by the Respondent as the registrant at the time of the registration of the disputed domain name is the name of an employee of the Complainant. It says that the employee is an accountant working for Natixis Investment Managers and has been the victim of identity theft by the Respondent, probably based on information available on her LinkedIn page. It confirms that the employee was unaware of the registration and use of the disputed domain name. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use according to the Complainant and cannot confer upon the Respondent any rights or legitimate interests in the disputed domain name.

According to the Complainant, the NATIXIS mark enjoys a widely held reputation not only in France but also around the world. It notes the size and breadth of the business as set out above and that it has won numerous industry awards. It points out that a Google search for the NATIXIS mark gives 3,810,000 results but that its website appears first. In these circumstances the Complainant submits that it is very unlikely that the Respondent was unaware of the Complainant’s activities and of the existence of the NATIXIS trade marks and domain names at the time of registration of the disputed domain name.

The Complainant submits that the disputed domain name was registered in bad faith with the aim of taking advantage of the reputation of the well-known trade mark NATIXIS of the Complainant. It says that although the disputed domain name does not resolve to a website it is being passively held in bad faith. In this regard it notes that the Respondent employed a privacy service in order to hide its identity and to avoid being notified of a UDRP proceeding and impersonated the identity of an employee of the Complainant as the registrant when registering the disputed domain name as described above. It further asserts that when the Respondent reserved the disputed domain name, it listed a fake address as according to Google Maps there is no “dreamer street” in New York. It notes also that MX Records has been activated for the disputed domain name which it says suggests that the Respondent intended to create the email address “[…]@natixis-us.com” and to pose as an accountant of the Complainant in order to contact the Complainant’s clients or suppliers for the purpose of collecting personal data and/or obtaining fraudulent payments.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns European Union Trade Mark registration for NATIXIS under number 005129176 registered on June 21, 2007. The disputed domain name wholly incorporates the NATIXIS mark with the addition of the geographical abbreviation “-us”. The Panel finds that the disputed domain name is therefore confusingly similar to the Complainant’s registered mark and that the addition of “‑us” does not prevent this finding. As a result, the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent does not own any “natixis-us” trade mark or company of the same name in the United States and that there is no business or legal relationship between the Complainant and the Respondent. The Complainant has also confirmed that it has neither authorised nor licensed the Respondent to use its trade marks in any way. Further, it has said that the very nature of the disputed domain name, incorporating the NATIXIS mark carries a risk of implied affiliation with the Complainant.

The Panel notes the Complainant’s assertion that the name recorded by the Respondent as the registrant at the time of the registration of the disputed domain name is the name of an employee of the Complainant. Certainly, based on the evidence of the relevant employee’s LinkedIn page submitted by the Complainant, it appears that she is indeed an accountant working for Natixis Investment Managers. It is apparent that the true Respondent has sought to masquerade as this employee of the Complainant group without its authority. Such conduct is not consistent with bona fide use of the disputed domain name and there is no indication that the Respondent is otherwise making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

In these circumstances the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which case has not been rebutted by the Respondent. For this reason and also for the reasons set out under Part C below, the Panel finds that the Complaint succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered on September 13, 2021, many years after the registration of the Complainant’s trade marks. The NATIXIS mark has no apparent meaning and is a highly distinctive term that has been used globally, including in the United States (where the Complainant owns the combined word and logo mark noted above), by the Complainant and in relation to a very substantial business that has been repeatedly recognised in its industry and has an obvious online presence. It is therefore highly unlikely that the Respondent registered the disputed domain name without having prior knowledge of the Complainant and its NATIXIS mark and business.

The Complainant has submitted that the disputed domain name was registered in bad faith with the aim of taking advantage of the reputation of the NATIXIS trade mark.

The NATIXIS mark in this case is highly distinctive and very well reputed having been used over a substantial period and in many countries as noted above. The Respondent has failed to respond to the Complaint and it used a privacy service together with an obviously false registrant name and address in an attempt to conceal its identity. Finally, in all of these circumstances it is difficult to conceive of any scenario of plausible good faith use of the disputed domain name in circumstances that it incorporates the Complainant’s highly distinctive and well reputed mark as its key element.

The disputed domain name is hosting a parked website enticing visitors to build their own website. The Panel finds that Internet users would be misled by the disputed domain name into the expectation that they would reach a website operated by the Complainant. Accordingly, the holding and use of the disputed domain name in these circumstances does not prevent a finding of bad faith.

Furthermore, it appears that the Respondent has registered the disputed domain name by fraudulently using the name of an employee of the Complaint together with a false address very likely with a view to using it with a view to commit fraud. The fact that the MX Records function has been activated for the disputed domain is consistent with this thesis, although the Panel notes that to this point there is no evidence of actual fraudulent use for an email address based on the Complainant employee’s name, or otherwise.

Nevertheless, in all of the circumstances the Panel finds that the disputed domain name has been registered and used in bad faith and that the Complainant also succeeds under this element 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 disputed domain name <natixis-us.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: December 11, 2021

1 The Respondent appears to have used the name of an employee of the Complainant when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.

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