WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DNCA Finance v. Withheld for Privacy Purposes / Dnca Investment, dncainvestments
Case No. D2021-3648
1. The Parties
The Complainant is DNCA Finance, France, represented by Inlex IP Expertise, France.
The Respondent is Withheld for Privacy Purposes / Dnca Investment, dncainvestments, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dnca-investments.net> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2021. On November 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 5, 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 November 9, 2021.
The Center verified that the Complaint together with 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 November 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2021. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on December 2, 2021.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on December 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
The Complainant is an investment management company founded in 2000 managing wealth for private and institutional investors. The Complainant is an affiliate of Natixis Investment Managers.
The Complainant owns French, EU and International trademarks including “DNCA”, such as EU trademark registration DNCA No. 014511158, French trademark registration DNCA INVESTMENTS No. 4170117 and International trademark registration DNCA INVESTMENTS No. 1273577, all dating back to 2015.
The Complainant also has registered numerous domain names such as <dnca.fr>, <dnca-investments.com> and <dnca-investments.fr>.
The Domain Name was registered on October 17, 2021. At the time of the Complaint and at the time of drafting the Decision, the Domain Name resolved to an error page. The Complainant has documented that the Domain Name resolved to a website that was an exact copy of the Complainant’s official website, with the Complainant’s logo reproduced. The website is no longer active following notification of the Complainant’s claim.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations, and argues that the Domain Name is confusingly similar to the Complainant’s trademarks. The additional element “investments” does not add any distinctiveness from the Complainant’s trademark DNCA. Furthermore, the Domain Name is identical to the Complainant’s trademark DNCA INVESTMENTS.
The Complainant asserts that it has no association with the Respondent and has never authorized or licensed the Respondent to use its trademark. The Respondent listed organization name - Dnca Investment - is not genuine, but rather evidence of bad faith. The same goes for the use of the Domain Name. The Domain Name has been activated and it resolved to an almost exact copy of the Complainant’s official website. This is not bona fide offering of goods or services.
The Complainant argues that this kind of fraudulent use indicates that the Respondent has deliberately chosen the Complainant’s trademarks in the Domain Name to mislead Internet users and collect personal banking data or obtain fraudulent payments. In the view of the Complainant, the choice of the Domain Name cannot be a coincident. It is evident from the nature of the Domain Name that the Respondent has made the Domain Name resolve to a copy of the Complainant’s website. The fact that the Domain Name does no longer resolve to an active website does not prevent a finding of bad faith under the doctrine of passive holding. Finally, the Complainant documents that the Respondent has offered false contact information, and asserts that the email servers of the Domain Name has been activated. The Respondent has also used a privacy service to hide its identity. This further points to bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark DNCA INVESTMENTS. The test for confusing similarity involves a comparison between the trademark and the Domain Name. The Domain Name incorporates the Complainant’s trademark in its entirety and it is different to the trademark by only the hyphen. This does obviously not prevent a finding of confusing similarity between the Domain Name and the trademark.
For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domains, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing the Complainant’s trademark or otherwise make use of the Complainant’s mark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Respondent has not offered any explanation as to the registration of the Domain Name, and therefore not provided any evidence of good-faith use. Under the circumstances of this case, the Panel agrees with the Complainant that the Respondent listed organization name - Dnca Investment - is probably not genuine. The Respondent’s use of the Domain Name is not bona fide, but rather evidence of bad faith, see below.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds it probable that the Respondent was aware of the Complainant when the Respondent registered the Domain Name. The Complainant’s trademarks predate the registration of the Domain Name, and the Respondent’s use of the Domain Name clearly indicates that the Respondent knew of the Complainant when the Respondent registered the Domain Name. Moreover, the Domain Name is identical to the Complainant’s domain names except for the different generic Top-Level Domains.
The fact that the Domain Name no longer resolves to an active website does not prevent a finding of bad faith under the doctrine of passive holding, see WIPO Overview 3.0, section 3.3. The Complainant’s trademark has a degree of distinctiveness, the Domain Name is almost identical to the Complainant’s trademark and the Respondent has not provided any evidence of actual or contemplated good-faith use. Furthermore, the Respondent has initially concealed its identity and probably offered false contact details, and the Panel cannot see any good faith use to which the Domain Name may be put by the Respondent.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of 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 Domain Name <dnca-investments.net> be transferred to the Complainant.
Date: December 13, 2021