Natixis v Kacey Kling

WIPO Case No. D2022-2766

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Natixis v. Kacey Kling

Case No. D2022-2766

1. The Parties

The Complainant is Natixis, France, represented by Inlex IP Expertise, France.

The Respondent is Kacey Kling, United States of America.

2. The Domain Name and Registrar

The disputed domain name <natixis-cogroup.com> is registered with PDR Ltd. d/b/a

PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2022. connection with the disputed domain name. On July 29, 2022, 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 August 9, 2022. In accordance with the Rules, paragraph 5,
the due date for Response was August 29, 2022. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on August 30, 2022.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on September 6, 2022.
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.

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4. Factual Background

The Complainant is Natixis, a French multinational financial services firm and part of the Groupe BPCE, specialized in asset and wealth management, corporate and investment banking, insurance and payments, with more than 16,000 employees in 36 countries.

The Complainant owns several registrations comprising NATIXIS since 2006, including the following:

- French Trade Mark NATIXIS Registration No. 3416315, registered on March 14, 2006: and

- European Union Trade Mark NATIXIS Registration No. 005129176, registered on June 21, 2007.

In addition, the Complainant is the owner of the domain names <natixis.com>, registered on February 3,

2005, and <natixis.fr>, registered on October 20, 2006, which redirect to the Complainant’s official website.

The disputed domain name was registered on May 31, 2022, and is inactive.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name comprises its trademark NATIXIS, adding the
initials “co” (the acronym for “company”) and the common word “group”, which does not avoid the finding of a
confusingly similarity.

The Complainant alleges that the Respondent has no license or authorization from the Complainant and also no business or legal relationship with the Complainant. Furthermore, the Complainant says that the Respondent is not commonly known by the disputed domain name and that the disputed domain name was registered without any rights or legitimate interests.

In addition, the Complainant argues that due to the reputation of NATIXIS trademark, it is inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s trademark rights.

The Complainant also says and shows evidence that the disputed domain name is not in use.

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

The Complainant, therefore, requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

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

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

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

A. Identical or Confusingly Similar

The evidence presented to the Panel demonstrates that the Complainant is the owner of the trademark registration for NATIXIS in several jurisdictions, as well as the domain names <natixis.com> and <natixis.fr> and that they predate the registration date of the disputed domain name.

The disputed domain name incorporates the Complainant’s trademark NATIXIS in its entirety, with the addition of the word “group” and the initials “co”, which corresponds to the word “company”.

As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is the general view among UDRP panels that the addition of other terms (whether descriptive, geographical, or otherwise) to a trademark in a domain name would not prevent a finding of confusing similarity under the first element of the UDRP. See section 1.8 of the WIPO Overview 3.0.

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark NATIXIS.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute, the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy. Rather, the construction of the disputed domain name itself is such to carry a risk of implied affiliation with the Complainant, which cannot constitute fair use. See section 2.5.1 of the WIPO Overview 3.0.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark NATIXIS is registered by the Complainant in different countries and has been used since a long time. Also, the Complainant registered the domain names <natixis.com> and <natixis.fr> many years before the registration of the disputed domain name.

The disputed domain name totally incorporates the Complainant’s trademark NATIXIS and also the disputed domain name. The Panel finds that, the registration of the disputed domain name was not by

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coincidence and may generate confusion for customer, since it actually makes it appear that the disputed
domain name belongs to the Complainant.

While the disputed domain name may not resolve to an active website, its passive holding does not prevent a finding of bad faith considering the totality of circumstances. See section 3.3 of the WIPO Overview 3.0. The Complainant’s mark is reputed in its segment. Thus, a domain name that comprises such mark may be already suggestive of the Respondent’s bad faith.

Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. According to the previous UDRP panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “[t]he failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.

Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the with the Complainant.

The Panel finds that the Respondent’s attempt of taking undue advantage of the Complainant’s trademarks as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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, <natixis-cogroup.com>, be transferred to the Complainant.

/Mario Soerensen Garcia/
Mario Soerensen Garcia
Sole Panelist
Date: September 20, 2022