Mirova v Bangyi Cai, Mirova

WIPO Case No. D2025-1559

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

MIROVA v. Bangyi Cai, Mirova

Case No. D2025-1559

1. The Parties

The Complainant is Mirova, France, represented by MIIP – MADE IN IP, France.

The Respondent is Bangyi Cai, Mirova, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mirovausa.com> is registered with Squarespace Domains II LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2025. On April 17, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On April 17, 2025, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (REDACTED FOR PRIVACY/ MIROVA) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 22, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on April 23, 2025.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on April 29, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2025. On May 1, 2025, an email communication was received from a third party. The Respondent did not submit any response. Accordingly, the Center notif ied the

Respondent’s default on May 23, 2025.

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The Center appointed Catherine Slater as the sole panelist in this matter on May 29, 2025. The Panel f inds 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 French company operating in the f ield of banking and f inancial services. It owns several trademark registrations for MIROVA, including the following:

- European Union Trademark Registration No. 010787307 for MIROVA, registered on September 10, 2012;

- International Trademark Registration No. 1146522 for MIROVA, registered on August 14, 2012.

The Complainant also operates the following domain names which are owned by its parent company,

Natixis:

- <mirova.com> registered on October 14, 2009;
- <mirova.f r> registered on March 7, 2012.

The disputed domain name was registered on April 5, 2025. At the time of f iling the Complaint and at the date of the Decision, the disputed domain name pointed to a website stating “We’re under construction. Please check back for an update soon.”

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 confusingly similar to its MIROVA trademark because the disputed domain name wholly incorporates that trademark with the addition of a mere geographical term “usa” for the United States of America (“US”). The Complainant further contends that its MIROVA trademark has no meaning and is highly distinctive and that the Complainant has a US subsidiary (Mirova US LLC) which increases the likelihood of confusion.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent does not have any trademark rights in the term “Mirova” or “Mirovausa”, the Respondent is not commonly known as “Mirova” or “Mirova usa”, the Complainant has never authorized nor licensed the Respondent to use its trademarks, the disputed domain name is not used and the Respondent is not engaged in any legitimate noncommercial or fair use of the disputed domain name nor any use in connection with a bona f ide of fering of goods or services.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith because it was registered with the aim of taking advantage of the Complainant’s well-known MIROVA trademark. The Complainant contends that the well-known nature of its trademark and the fact that it is an invented word means that the choice of the disputed domain name was not coincidental and was done for the purpose of creating confusion and to carry out unlawful activities. The Complainant further contends that the non-use of the disputed domain name does not prevent a f inding of bad faith and the fact that Mail Exchange (“MX”) records are activated which means there is a high risk that the disputed domain name will be used for phishing scams. Finally, the Complainant contends that the Respondent has provided false contact information since there is no US company that is registered with the name Mirova (other than those

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af f iliated with the Complainant) through its search on the US company register, the email address is not a

professional address, and the postal address provided is that of an unrelated third party company.

B. Respondent

On May 1, 2025, the Center received an email communication from an email address that is dif ferent f rom the Respondent’s email address as confirmed by the Registrar and was signed off by a party dif ferent f rom the Respondent, claiming that its client’s counsel “is out of town and will be back on next week. She will be responding as soon as she gets back to of f ice.” The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings
A. Identical or Confusingly Similar

It is well accepted that the f irst 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.
WIPO Overview 3.0, section 1.2.1.

The entirety of the 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, “usa”, may bear on assessment of the second and third elements, the Panel f inds the addition of such term does not prevent a f inding 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 f inds the f irst 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 of ten 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 satisf ied 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.

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In particular, although the Respondent’s organization name is “Mirova”, the evidence provided by the Complainant shows that all of the companies registered in the US using the name “Mirova” are affiliated with the Complainant. The Complainant also asserts that the postal address used by the Respondent in registering the disputed domain name belongs to a third party, which has not been rebutted by the Respondent. It is more likely than not that the Respondent has used false information in registering the disputed domain name. Therefore, there is no evidence showing that the Respondent is commonly known by the disputed domain name.

The Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In order to demonstrate that the disputed domain name was registered in bad faith, the Complainant must show that the Respondent knew, or should have known, of its trademark. While the Complainant relies on the fact that its MIROVA trademark is well known, its evidence (which would usually include e.g. business history, the geographical reach of their business, the number of offices and employees, turnover, marketing spend, media and industry recognition and any social media presence) is somewhat lacking in this regard. In any event, taking into account the evidence submitted and the Panel’s own review of the Complainant’s website, the Panel f inds that the Complainant’s trademark is indeed well known, at least in the f inancial services industry. Given that finding and together with the fact that the disputed domain name reproduces the Complainant’s trademark identically (with the addition of a mere geographical term), that the trademark is itself distinctive (being an invented word), that the disputed domain name is also similar to the Complainant’s US subsidiary Mirova US LLC, and that the Respondent has provided no explanation for its selection of the disputed domain name, the Panel infers that the Respondent registered the disputed domain name with the Complainant’s trademark in mind, and with the intention of taking unfair commercial advantage of that trademark.

In view of the well-known and distinctive nature of the Complainant’s trademark and the identical reproduction of the Complainant’s trademark with only the addition of a geographical term where the Complainant’s subsidiary is located, the Panel finds it difficult to conceive of any use that the Respondent could make of the disputed domain name without misrepresenting to Internet users that the disputed domain name is owned or operated by, or otherwise commercially af f iliated with, the Complainant. The Panel therefore infers that the Respondent has maintained the disputed domain name for the purpose of taking possible unfair commercial advantage of the Complainant’s goodwill in its trademark.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a f inding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes (i) the distinctiveness and reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the Respondent’s likely use of false contact details (the allegation of which it has failed to rebut), and (iv) the implausibility of any good faith use to which the disputed domain name may be put considering 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.

The Panel f inds that the Complainant has established the third element of the Policy.

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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 <mirovausa.com> be transferred to the Complainant.

/Catherine Slater/
Catherine Slater
Sole Panelist
Date: June 12, 2025