BPCE v Natixis Corp, Natixis

WIPO Case No. D2024-4986

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

BPCE v. Natixis Corp, Natixis

Case No. D2024-4986

1. The Parties

The Complainant is BPCE, France, represented by KALLIOPE Law Firm, Republic of Korea (the).

The Respondent is Natixis Corp, Natixis, France.

2. The Domain Name and Registrar

The disputed domain name <natixisbpce.com> is registered with Amazon Registrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2024. On December 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2024, 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 (On behalf of natixisbpce.com owner, Identity Protection Service) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 6, 2024, 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 December 9, 2024.

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 December 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on January 2, 2025.

The Center appointed Alexandre Nappey as the sole panelist in this matter on January 9, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration

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of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph

7.

4. Factual Background

The Complainant is BPCE, a French joint stock company acting as the central institution responsible for the two banking networks Banques Populaires and Caisses d’Epargne with its head office in Paris.

BPCE, is one of the largest banking groups in France and pursues a full range of banking, financing and insurance activities, working through its two major Banque Populaire and Caisse d’Epargne cooperative banking networks and through its different subsidiaries.

The Complainant is the owner of several BPCE trademarks among which:

- European Union trademark BPCE registered under number 8375875 on January 12, 2010, for

services in class 36, duly renewed and live;

- European Union trademark BPCE registered under number 8375842 on January 12, 2010, for

services in class 36, duly renewed and live;

- French trademark BPCE registered under number 3653852 on May 29, 2009, for services in classes 9, 16, 35, 36, 38, 41 and 45, duly renewed and live;

- International trademark BPCE registered under number 1033662 on December 15, 2009, for services in class 36, duly renewed and live;

BPCE is also the owner of domain names, directly and also via its subsidiary GCE TECHNOLOGIES, among which:

- <bpce.fr> registered in 2008;

- <groupebpce.fr> registered in 2009;

- <groupebpce.com> registered in 2009 and corresponding to an active website, the institutional portal of

BPCE.

The disputed domain name <natixisbpce.com> was registered on September 17, 2024.

The disputed domain name is not active, but MX servers are configured.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is similar to its earlier trademark BPCE, to the point of creating confusion.

Indeed, the disputed domain name contains the well-known Trademarks BPCE in its entirety with the prefix
“natixis” and the extension “.com”. These additional elements do not prevent a finding of confusing similarity.

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On the contrary, the addition of the word “natixis” before “bpce” refers directly to “NATIXIS”, a BPCE subsidiary. Consequently, this clearly emphasizes rather than undermines the connection of the disputed domain name with the Complainant and therefore contributes to enhance the likelihood of confusion.

Then, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant contends that the Respondent has no trademarks or trade names corresponding to the disputed domain name and the Complainant has never authorized the Respondent to register and/or use any domain name incorporating the Trademarks.

The Complainant has not granted any license, nor any authorization to use the Trademarks, included as a domain name.

Third, the Complainant claims that the disputed domain name was registered and is being used in bad faith.

The Complainant contends that BPCE and its subsidiaries are well-known in France and through the world, notably by the financial and banking market consumers.

Consequently, the Complainant contends that, as the Complainant’s Trademarks are well-known, the choice of the disputed domain name does not seem to be a mere coincidence, but on the contrary seems to have been done on purpose to generate a likelihood of confusion with the Complainant and the Trademarks.

The Complainant contends that MX activation allows the Respondent to create email addresses using the disputed domain name for a phishing scheme.

Therefore, the use of the MX registration leads to conclude to the fraudulent intent of the Respondent which constitutes bad faith.

The Complainant contends that the disputed domain name was registered anonymously and that the

Respondent used a false identity and a false address, which demonstrates his bad faith.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the default of the Respondent, the Complainant has the burden of proof to make its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the
Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having considered the Parties’ submissions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following:

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A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”, section 1.7).

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

(See WIPO Overview 3.0, section 1.2.1).

The entirety of the BPCE mark is reproduced within the disputed domain name. Accordingly, the disputed
domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section
1.7.

Although the addition of other terms, here “natixis”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Complainant has shown that its BPCE trademark has been
registered and used for years and is well-known in the financial and banking industry (see BPCE v.
Emmanuel Asamoah, WIPO Case No. D2022-3866 regarding <bpceinvestment.com> “The trademarks are
well-known in France and throughout the world.”) In addition, the additional term “natixis” refers directly to a
BPCE subsidiary, which increases the confusion with the Complainant.

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Thus, the Respondent could not reasonably be unaware of the Complainant’s rights when it registered the disputed domain name, and the Panel cannot conceive any use that the Respondent could make of the disputed domain name that would not interfere with the Complainant’s trademark rights.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Moreover, the Complainant has produced evidence showing that the Respondent had set up MX servers in relation with the disputed domain name, which suggests that the Respondent may use it as an email address, which could further be evidence of bad faith.

The Panel finds that the Complainant has established the third 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 <natixisbpce.com> be transferred to the Complainant.

/Alexandre Nappey/
Alexandre Nappey
Sole Panelist
Date: January 16, 2025