Natixis v Carles Tubert Turà

WIPO Case No. D2025-0671

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Natixis v. Carles Tubert Turà

Case No. D2025-0671

1. The Parties

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

The Respondent is Carles Tubert Turà, Spain.

2. The Domain Names and Registrar

The disputed domain names <generalinatixis.com> and <natixisgenerali.com> are registered with Sav.com,

LLC (the “Registrar”).

3. Procedural History

The Complaint was f iled with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2025. On February 20, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 21, 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 February 24, 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 February 25, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2025. The Respondent sent email communications to the Center on February 25, and March 17, 2025.

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The Center appointed Luca Barbero as the sole panelist in this matter on March 20, 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 multinational f inancial services f irm specialized in asset and wealth
management, corporate and investment banking, insurance, and payments. It is part of the Groupe BPCE
(“BPCE”), which is the second largest banking group in France.

With more than 16,000 employees in 36 countries, over the years the Complainant has achieved numerous recognitions including: the Latin America MLA of the Year Award on July 13, 2020 as part of the 2019 IJGlobal Awards, which celebrates best-in-class transactions and organizations across the international inf rastructure and energy sectors executed in the past year; the yearly Euromoney Fixed Income Research Survey, which polls more than 1,500 fund managers and investors worldwide, which has ranked the

Complainant number 4 for European Fixed Income Research; and f irst bookrunner for syndicated real- estate f inance loans in the EMEA region in 2017, according to Dealogic (EMEA Real Estate Loans Report, Full-year 2017).

The Complainant is the owner of several trademark registrations for NATIXIS, including the following, as per trademark registration details submitted as Annex 3 to the Complaint:

- European Union trademark registration No. 5129176 for NATIXIS (word mark), filed on June 12, 2006, and

registered on June 21, 2007, in classes 9, 16, 35, 36 and 38;

- International Trademark registration No. 1071008 for NATIXIS (semi-f igurative), registered on April 21,

2010, in classes 9, 16, 35, 36 and 38.

The Complainant is also the owner of numerous domain names, including <natixis.com>, registered on
February 3, 2005, used by the Complainant to promote its services under the trademark NATIXIS.

On January 21, 2025, BPCE and Assicurazioni Generali S.p.A. (“Generali”) announced the signature of a non-binding Memorandum of Understanding to create a joint venture between their respective asset management operations Generali Investments Holding (“GIH”) and Natixis Investment Managers (“Natixis IM”). BPCE (through Natixis IM) and GIH would each own 50% of the combined business with balanced governance and control rights.

The disputed domain names were registered on January 21, 2025, and resolve to Sedo parking pages where the disputed domain names are being of fered for sale.

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 names.

Notably, the Complainant contends that the disputed domain names <natixisgenerali.com> and
<generalinatixis.com> are confusingly similar to the trademark NATIXIS in which the Complainant has rights
as they reproduce the trademark in its entirety with the mere addition of a second trademark GENERALI
(owned by Generali) and the generic Top-Level Doman (“gTLD) “.com”.

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The Complainant further submits that the addition of the trademark GENERALI does not prevent the risk of confusion with the Complainant’s trademark NATIXIS, since the two companies (being f inancial services companies) announced the creation of a joint venture on January 21, 2025.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain names because: i) the Respondent does not own any trademark registration for NATIXIS and/or GENERALI; ii) there is no business or legal relationship between the Complainant and the Respondent and the Respondent has not been authorized nor licensed by the Complainant to use its trademarks in any way; iii) Google searches for “natixisgenerali” and “generalinatixis” do not lead to pertinent results apart f rom results related to the Complainant; and iv) both disputed domain names resolve to identical web pages where the disputed domain names are of fered for sale.

With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent registered and is using the disputed domain names in bad faith since: i) the trademark NATIXIS is well known in France and other countries of the world, as recognized also by prior UDRP panel decisions; ii) the Respondent intentionally registered the disputed domain names in order to create confusion in the public’s mind and carry out unlawful activities; iii) the Respondent registered the disputed domain names with the aim of selling them; iv) the Respondent employed a privacy service in order to hide its identity; v) since MX records are present in the DNS configuration of the disputed domain names, they could be used for phishing and scam through email addresses based on the disputed domain names; and vi) according to a reverse WhoIs search, the Respondent appears to be the owner of numerous other domain names that include famous trademarks, and therefore appears to have engaged in a pattern of cybersquatting behavior.

B. Respondent

In its informal email communication to the Center dated February 25, 2025, the Respondent states that its name and address as indicated by the Registrar to the Center are accurate, but it “did not understand anything about the other things”.

In its second email communication to the Center dated March 17 2025, the Respondent denies the
Complainant’s bad faith allegations and contends that it bought the disputed domain names “to do statistics”.

The Respondent states that the two words “natixis” and “generali” have meanings in the Greek and Italian dictionaries (“fusion” and “general”, respectively) and that, therefore, the Complainant does not have the right to take the two disputed domain names away f rom it.

The Respondent also asserts that, since the disputed domain names have good statistics, it intends to remove them from Sedo.com to create its own websites, but it is unable to do so because the disputed domain names are locked in view of the ongoing proceedings.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i)        that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii)      that the disputed domain names have been registered and are being used in bad faith.

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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 names. 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. Indeed, the Complainant has provided evidence of ownership of valid trademark registrations for NATIXIS.

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

The addition of the third-party mark GENERALI is insufficient to avoid a finding of confusing similarity to the
Complainant’s mark under the f irst element. WIPO Overview, section 1.12.

The applicable TLD in a domain name, such as the gTLD “.com”, is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview, section 1.11.

Therefore, 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 names. The Respondent has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent f rom the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.

Moreover, there is no element f rom which the Panel could infer that the Respondent has rights in the disputed domain names, or that the Respondent might be commonly known by the disputed domain names.

The Panel also finds that the Respondent’s use of the disputed domain names does not amount to a bona f ide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

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Indeed, the disputed domain names resolve to parking pages where the disputed domain names are being of fered for sale and the Respondent stated that it registered them “to do statistics”. In addition, notwithstanding its allegation that the Complainant cannot invoke rights on the disputed domain names since they encompass the terms “natixis” and “generali” which correspond to the dictionary words “fusion” and “general” in Greek and Italian, the Respondent has not provided any evidence of use, or preparations to use, the disputed domain names in connection with the dictionary meaning which the Respondent relies upon.

As stated in section 2.10.1 of the WIPO Overview 3.0, “In order to f ind rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade of f third-party trademark rights”.

Moreover, the disputed domain names are a combination of the registered and well-known trademarks of renowned companies that, as shown by the Complainant, announced the creation of a joint venture on the same day the disputed domain names were registered. In view of the foregoing, the Panel finds, on balance of probabilities, that, under the circumstances, the Respondent does not have any rights or legitimate interests in the disputed domain names.

Therefore, the Panel f inds the second element of the Policy has also 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, in view of the Complainant’s prior registration and use of the trademark NATIXIS in connection with the Complainant’s financial and insurance services, promoted online via the Complainant’s website “ and considering the well-known character of the mark in its sector, the Panel f inds that the Respondent knew or should have known the Complainant’s trademark at the time of

registration of the disputed domain names. As indicated in section 3.2.2 of the WIPO Overview 3.0, “Noting
the near instantaneous and global reach of the Internet and search engines, and particularly in
circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a
respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers),
panels have been prepared to infer that the respondent knew, or have found that the respondent should
have known, that its registration would be identical or confusingly similar to a complainant’s mark”.

Moreover, the circumstance that the disputed domain names, which combine the trademarks NATIXIS and GENERALI, were registered on January 21, 2025, which is the same day as the announcement of the joint venture between the Complainant and Generali, suggests that the Respondent was actually aware of the trademarks and registered the disputed domain names to target such companies and the respective marks.

In view of the redirection of the disputed domain names to Sedo.com web pages where the disputed domain names are being of fered for sale, and considering the Respondent admitted it registered the disputed domain names “to do statistics”, i.e. to generate traf f ic, the Panel f inds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the websites to which the disputed domain names resolve, by creating a likelihood of confusion with the Complainant’s trademark as to the source,

sponsorship, af f iliation or endorsement of the websites according to paragraph 4(b)(iv) of the Policy.

Considering the composition of the disputed domain names and the fact that they are of fered for sale, the Panel f inds that, on balance of probabilities, the Respondent also registered the disputed domain names for the purpose of selling them to the Complainant and/or to Generali, which are the owners of the

corresponding trademarks, and notes that such circumstance further supports the conclusion that the
Respondent acted in bad faith.

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Therefore, the Panel f inds that the Complainant has established the third element of the Policy as well.

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 names <generalinatixis.com> and <natixisgenerali.com> be transferred to the Complainant.

The transfer of the disputed domain names is ordered without prejudice to any rights of the third party
Generali in the disputed domain name.

/Luca Barbero/ Luca Barbero Sole Panelist Date: April 3, 2025