Natixis v Mary Leon, Hjad

WIPO Case No. D2022-1986

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Natixis v. Mary Leon, Hjad

Case No. D2022-1986

1. The Parties

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

The Respondent is Mary Leon, Hjad, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ce-natixis-financement.com> (the “Domain Name”) is registered with DNC

Holdings, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2022. On June 1, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 2, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on date of June 9, 2022, 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 June 9, 2022.

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 June 10, 2022. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2021.

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The Center appointed Jeremy Speres as the sole panelist in this matter on July 21, 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.

4. Factual Background

The Complainant, trading under its NATIXIS mark, is a French multinational financial services firm specialising in asset and wealth management, corporate and investment banking, insurance and payments. With more than 16,000 employees in 36 countries, the Complainant is part of the BPCE Group, France’s second-largest banking group. The Complainant’s mark has been recognised as well-known by numerous prior UDRP panels.

The Complainant owns many trade mark registrations for its mark in numerous territories, including
International Trade Mark registration no. 1071008 NATIXIS (stylised), designating the United States of
America (the Respondent’s country) in classes 09, 16, 35, 36, 38, registered on April 21, 2010. The
Complainant’s main website is hosted at the domain name <natixis.com>, which was registered on

February 3, 2005.

The Domain Name was registered on May 15, 2022 and does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its NATIXIS mark, that the and used in bad faith given that the Respondent has a history of cybersquatting and, under the doctrine of passive holding, given the repute of the Complainant’s mark, there is no good faith use to which the Domain Name could be put.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Where the trade mark is recognisable within the domain name, the domain name will normally be considered
confusingly similar to the mark (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third
Edition (“WIPO Overview 3.0”) at section 1.7). The Complainant’s well-known and registered mark is wholly
contained within the Domain Name and remains recognisable despite the additional elements. The

Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant’s unrebutted evidence establishes that its mark was registered and well known for many
years prior to registration of the Domain Name. The Domain Name is confusingly similar to the
Complainant’s mark, and the Complainant has certified that the Domain Name is unauthorised by it.

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The Complainant’s mark is invented, reputed and highly specific to the Complainant, has no semantic value which the Respondent might in good faith have sought to adopt, and the remainder of the Domain Name, besides the Complainant’s mark, relates to the Complainant’s industry. Specifically, “ce” is the French acronym for “Comité d’Entreprise” (meaning Works Councils) and “financement” means “funding”. Not only does this indicate that the Domain Name was registered with the Complainant in mind (Bayer Aktiengesellschaft v. H. Monssen, WIPO Case No. D2003-0275), it also means that any use of the Domain Name is likely to take unfair advantage of the Complainant’s mark. As such, there is no conceivable good faith use of the Domain Name that might confer rights or legitimate interests upon the Respondent.

There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy, nor any others which might confer rights or legitimate interests upon the Respondent, pertain. The Complainant has satisfied paragraph 4(a)(ii) of the Policy by virtue of having made out an unrebutted prima facie case (WIPO Overview 3.0 at section 2.1).

C. Registered and Used in Bad Faith

The Complainant presented evidence that the Respondent has registered over 10,000 domain names, including many that contain well-known brands. Additionally, the Panel has independently established that the Respondent has been the unsuccessful respondent in two prior UDRP cases.[1] The aforementioned establishes a pattern of bad faith conduct and this case would appear to be a continuation of that trend. Paragraph 4(b)(ii) of the Policy is thus applicable here.

The Panel has also independently established that the Domain Name is listed for sale on two domain name marketplaces for amounts that are likely, without evidence from the Respondent to the contrary, in excess of the Respondent’s out-of-pocket expenses relating directly to the Domain Name.

The fact that, at the time of lodging the Complaint and drafting of this Decision, the Domain Name did not resolve to any active website does not prevent a finding of bad faith under the doctrine of passive holding. For the reasons identified above, most of the factors that panels typically consider under that doctrine favour

the Complainant (WIPO Overview 3.0 at section 3.3).

The Panel draws adverse inferences from the Respondent’s failure to take part in the present proceeding where an explanation is certainly called for (WIPO Overview 3.0 at section 4.3).

The Complainant has satisfied paragraph 4(a)(iii) of the Policy.

[1] CSXT Intellectual Properties Corporation v. Mary Leon / Hjad, FORUM Claim Number FA2206001998691; and The Charles Machine

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 Domain Name, <ce-natixis-financement.com>, be transferred to the Complainant.

/Jeremy Speres/
Jeremy Speres
Sole Panelist
Date: August 1, 2022

Works, Inc. v. Mary Leon / Hjad, FORUM Claim Number FA2206002001492.