WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Natixis v. Khodor Dimassi
Case No. D2016-2274
1. The Parties
The Complainant is Natixis of Paris, France, represented by INLEX IP, France.
The Respondent is Khodor Dimassi of Riyadh, Saudi Arabia.
2. The Domain Names and Registrar
The disputed domain names <digitalnatixis.com>, <natixisdigital.com>, <natixiselectronic.com>, and <onlinenatixis.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2016. On November 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 10, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2016.
The Center appointed Nicholas Smith as the sole panelist in this matter on December 12, 2016. 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 financial services company based in France that has traded under its name since 1954.
The Complainant is the owner of a number of trade mark registrations consisting of the word “Natixis” (the “NATIXIS Mark”), which was first registered in France on March 14, 2006 and in the European Union on June 21, 2007 for goods and services in Nice classes 9, 16, 35, 36, and 38. It is also the owner of the domain names <natixis.com> and <natixis.fr>, registered in 2005 and 2006 respectively.
Each of the Domain Names was registered on April 29, 2016. Each of the Domain Names resolve to a standard parking page operated by the Registrar that contains a number of sponsored listings.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s NATIXIS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Name have been registered and are being used in bad faith.
The Complainant is the owner of the NATIXIS Mark, having registered the NATIXIS Mark in France, the European Union and internationally. The Complainant’s reputed services are well-known in France, the European Union and internationally.
Each of the Domain Names consists of the NATIXIS Mark in its entirety and a generic English word, such as “online”, “electronic” and “digital”. Each of the Domain Names is thus confusingly similar to the NATIXIS Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known by the Domain Names, nor does the Respondent have any authorization from the Complainant to register the Domain Names or any domain name corresponding to the NATIXIS Mark. Each of the Domain Names points to a parking page with sponsored links for banking websites, the field of business that the Complainant trades in, which results in the conclusion that the Respondent has no rights or legitimate interests in the Domain Names.
The Domain Names were registered and is being used in bad faith. The NATIXIS Mark is well-known and it is unlikely that the Respondent registered the Domain Names in ignorance of the Complainant. The Respondent redirected the Domain Names to parking pages with sponsored links that advertise banking services, the services offered by the Complainant. This conduct amounts to registration and use of the Domain Names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and each of the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the NATIXIS Mark, having registrations for the NATIXIS Mark as a trade mark in France and as a European Union Trade Mark.
Each of the Domain Names consists of the NATIXIS Mark, with the addition of the descriptive words “online”, “electronic” and “digital”. The Panel finds that the addition of these descriptive terms does not prevent a finding of confusing similarity between the NATIXIS Mark and the Domain Names. An individual viewing any of these Domain Names may be confused into thinking that the Domain Name would refer to a site run by the Complainant. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain names. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain names.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the NATIXIS Mark or a mark similar to the NATIXIS Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate non-commercial use or a bona fide offering of goods and services, indeed there is no evidence that the Domain Names have been used for any purpose as they simply redirect to parking pages operated by the Registrar.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) The Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b))
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the NATIXIS Mark at the time the Respondent registered the Domain Names. “Natixis” is not an ordinary English or French word. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register four separate domain names that reproduce the NATIXIS Mark unless there was an intention to create a likelihood of confusion between the Domain Names and the Complainant and the NATIXIS Mark.
In circumstances where the Domain Names directly incorporate the Complainant’s NATIXIS Mark, the Respondent has offered no explanation for the registration of the Domain Names and the Domain Names have not been used in any active manner, the Panel finds that the Respondent has registered and is passively holding each of the Domain Names in order to prevent the Complainant, being owner of the NATIXIS Mark, from reflecting that mark in a corresponding domain name. As the Respondent has registered four such Domain Names the Panel finds that the Respondent has engaged in a pattern of such conduct. As such Panel finds that the Domain Names have been used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using each of the Domain Names in bad faith under 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 Names <digitalnatixis.com>, <natixisdigital.com>, <natixiselectronic.com>, and <onlinenatixis.com> be transferred to the Complainant.
Date: December 15, 2016