WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. Tim Parsons
Case No. DAE2019-0007
1. The Parties
Complainant is Natixis, France, represented by Inlex IP Expertise, France.
Respondent is Tim Parsons, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <natixis.ae> is registered with AE Domain Administration (.aeDA) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2019. On December 11, 2019, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On December 12, 2019, .aeDA transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy - UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 23, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2020. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on January 17, 2020.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 23, 2020. 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
Complainant is an international corporate finance and investment management company that is incorporated under the laws of France. Complainant has provided evidence that it is the registered owner of a number of trademarks in different countries relating to the term “Natixis”, including the following with protection, inter alia, for the United States:
- Word / device mark NATIXIS, World Intellectual Property Office (WIPO), registration number: 1071008, registration date: April 21, 2010, status: active.
Moreover, Complainant has evidenced to own since February 3, 2005, the domain name <natixis.com>, which resolves to Complainant’s official website at “www.natixis.com”, used to promote Complainant’s financial business and related products and services.
Respondent, according to the WhoIs information for the disputed domain name, is a resident of the United States who registered the disputed domain name on October 28, 2019. Complainant has demonstrated that at some point before the filing of the Complaint, the disputed domain name resolved to a website at “www.hekinternational.com”, presenting a company “HEK International” that appears to be specialized in financial services. By the time of the rendering of this decision, the disputed domain name resolves to a registrar’s parking page announcing future content under the disputed domain name to come and inviting Internet users to build their own website.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends that it widely uses its NATIXIS trademark in connection with banking and financial services and that the latter is meanwhile well-known in France, the European Union and internationally, as has already been held by many UDRP panels in the past.
Complainant submits that the disputed domain name is identical with Complainant’s NATIXIS trademark. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has neither authorized nor licensed Respondent to use its NATIXIS trademark, and (2) Respondent has no rights, including trademark rights, in respect of the name “Natixis” on its own. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) Complainant’s NATIXIS trademark is well-known and enjoys a wide reputation not only in France, but also around the world and it seems unlikely that Respondent was unaware thereof at the time that the disputed domain name was registered, and (2) redirecting the disputed domain name to a website which presents a company specialized in financial services may induce consumers make believe that there is a link between Complainant and Respondent, which clearly demonstrates that Respondent’s choice of the disputed domain name is not a coincidence, but for taking advantage of Complainant’s NATIXIS trademark’s reputation.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 6(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <natixis.ae> is identical with the NATIXIS trademark in which Complainant has rights.
The disputed domain name incorporates the NATIXIS trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many decisions under the Uniform Domain Name Dispute Resolution Policy 1 and has become a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11) that the applicable Top Level Domain (“TLD”) in a domain name is generally viewed as a standard registration requirement and as such is disregarded under the first element test. Accordingly, the existence of the country-code TLD “.ae” does not dispel the finding of identity arising from the incorporation of Complainant’s NATIXIS trademark as such in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s NATIXIS trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “Natixis” on its own.
Rather, Complainant has demonstrated that at some point before the filing of the Complaint, the disputed domain name resolved to a website at “www.hekinternational.com”, presenting a company “HEK International” that appears to be specialized in financial services. Such making use of the disputed domain name neither qualifies as a bona fide offering of goods or services (as Internet users are directed to competing products under a complainant’s trademark, see WIPO Overview 3.0, section 2.8) nor as using the disputed domain name for a legitimate noncommercial or fair purpose. The fact that by the time of the rendering of this decision, the disputed domain name resolves to a registrar’s parking page, is not in contrast to such finding, as UDRP panels have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has not submitted a Response, it has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered or Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and, in addition thereto, is being used by Respondent in bad faith.
Complainant contends – and Respondent has not objected to this contention – that it widely uses its NATIXIS trademark in connection with banking and financial services and that the latter is meanwhile well-known in France, the European Union and internationally; such claimed reputation of the NATIXIS trademark is reconfirmed by an ordinary Google search with pretty much all top search results exclusively pointing to into the direction of Complaint and its NATIXIS trademark. Against this background, it is indeed rather likely than not that Respondent was fully aware of Complainant and its rights in the NATIXIS trademark when he registered the disputed domain name. Such finding is reinforced by the fact that the website to which the disputed domain name at least temporarily resolved related to financial services of a company “WEK International” which apparently is a direct competitor of Complainant on the financial services market. This fact alone demonstrates that Respondent registered the disputed domain name with Complainant’s NATIXIS trademark in mind.
Moreover, Respondent’s making use of the disputed domain name to resolve to a website at “www.wekinternational.com” offering a variety of financial services of one of Complainant’s direct competitor on the financial market, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsements of this website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Finally and in connection with this finding, it also carries weight in the eyes of the Panel that Respondent obviously provided fault or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of Complaint dated December 23, 2019 could not be delivered. These facts at least throw a light on Respondent’s behavior which supports the Panel’s bad faith finding.
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <natixis.ae> be transferred to Complainant.
Stephanie G. Hartung
Date: February 4, 2020
1 Given the similarities between the UDRP and the .aeDRP, this Panel will refer to the UDRP when appropiate.