Natixis v Natixis Distribution, Natixis Distribution, LLC

WIPO Case No. D2023-3248

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Natixis v. Natixis Distribution, Natixis Distribution, LLC

Case No. D2023-3248

1. The Parties

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

Respondent is Natixis Distribution, Natixis Distribution, LLC, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <natixishares.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2023. On July 28, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2023, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to Complainant on August 1, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 4, 2023.

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 Respondent of the Complaint, and the proceedings commenced on August 11, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 5, 2023.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on September 15, 2023. 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

Complainant is a French multinational financial services firm specialized in asset & wealth management, corporate & investment banking, insurance and payments, part of the Groupe BPCE, France’s second- largest banking player. Complainant owns and operates websites with several domain names, such as <natixis.com>.

Complainant owns a wide portfolio of trademark registrations internationally containing the word mark

NATIXIS, such as:

International Date of

Registration No.	Trademark	Jurisdiction	Classes	Registration
3416315	NATIXIS	France	9, 16, 35, 36, 38	March 14, 2006
5129176	NATIXIS	European Union	9, 16, 35, 36, 38	June 21, 2007
International	9, 16, 35, 36, 38
1071008	April 21, 2010

The disputed domain name was registered on July 10, 2023, and, according to the evidence submitted by services that are similar to Complainant, and replicating Complainant’s logo.

5. Parties’ Contentions

A. Complainant

Complainant pleads that the disputed domain name is confusingly similar to the registered trademark
NATIXIS, since it fully incorporates Complainant’s trademark NATIXIS.

Complainant affirms that the disputed domain name uses the trademark NATIXIS in its entirety with the addition of the word “shares” – which would not avoid a confusingly similarity between the disputed domain name since merely includes the term “hares” that reads as the term “shares”.

Therefore, according to Complainant, the disputed domain name is confusingly similar with Complainant’s trademark NATIXIS, fulfilling paragraph 4(a)(i) of the Policy and paragraphs 3(b)(viii) and 3(b)(ix)(1) of the Rules.

In addition, Complainant states that Respondent would not have any rights or legitimate interests in respect of the disputed domain name, nor is Respondent commonly known by the disputed domain name. Further, Respondent has not been authorized, or licensed to use Complainant’s trademark NATIXIS as a domain

name nor is Respondent associated with Complainant.

Complainant observes that Respondent would have registered the disputed domain name for the purpose of exploiting Complainant’s rights and well-known reputation of the NATIXIS trademark, using Complainant’s logo on the website according to the Complaint, for which consumers are led to believe that there would be a link between Complainant and Respondent, which would not constitute a bona fide offering of goods and services, nor represent a legitimate noncommercial or fair use of the disputed domain name.

This way, Complainant states that no legitimate use of the disputed domain name could be reasonably claimed by Respondent, thus paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules have been fulfilled.

Finally, Complainant states that (i) Respondent was well aware of the existence of the trademark NATIXIS, and is intentionally diverting customers into the website hosted by the disputed domain name through the confusion caused by the unauthorized use of the trademark NATIXIS on the Internet; and (ii) the website

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which purports from the disputed domain name showcased Complainant’s logo and advertises shares,
similar to investment services, Complainant’s business – which led Complainant to the conclusion that the
disputed domain name would potentially mislead consumers.

Thus, according to Complainant, the requirements for the identification of a bad faith registration and use of the disputed domain name have been fulfilled, pursuant to paragraph 4(b)(iv) of the Policy.

Accordingly, Complainant requests transfer of the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph
4(a) of the Policy have been satisfied, as following:

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

(ii)       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.

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the complaint, in the absence of exceptional circumstances, the panel’s decision shall be based upon the complaint.

A. Identical or Confusingly Similar

Complainant has duly proven that it owns prior trademark rights for NATIXIS, and that the disputed domain
name is constituted by the trademark NATIXIS in its entirety with the sole addition of “hares”. The Panel
understands that the final letter of NATIXIS induces the letters to be read as the term “shares”, related to
Complainant’s business, so it is clear to this Panel the intention of combination of Complainant’s trademark
NATIXIS with the term “shares” by Respondent.

The addition of the term “hares”, that does not prevent a finding of confusing similarity with Complainant’s trademark NATIXIS – since the trademark NATIXIS is fully integrated, and recognizable, in the disputed domain name.

Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark

NATIXIS, and so the requirement of the first element of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “[w]hile 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 often impossible 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

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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. If the respondent fails to come forward with such relevant evidence, the

complainant is deemed to have satisfied the second element.”

In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made out a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s

contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to
demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.

It should be noted that Respondent’s lack of response (in the broader context of the case), according to the above-mentioned guidelines from WIPO Overview 3.0, suggests that Respondent has no rights or legitimate interests in the disputed domain name that it could put forward.

Furthermore, Respondent has not used the disputed domain name in the context of a bona fide that could demonstrate legitimate interests, since the evidence shows that the confusingly similar disputed domain name resolved at the time of filing the Complaint to a website in that at minimum unfairly trades shares on the reputation of Complainant’s mark and logo to allegedly offer competing investment services, and moreover is likely to trick the visitor into believing it would be related to Complainant’s business as seen on Complaint.

The nature of the disputed domain name, including Complainant’s trademark NATIXIS in its entirety with the addition of the misspelling term “hares” for “shares”, relating to Complainant’s activity, carries a risk of Internet confusion. In fact, the term “hares” in the disputed domain name clearly does not refer to the plural of the animal which has the scientific name of Lepus timidus, but rather it is intended to be read together with the last letter (“s”) of the trademark NATIXIS.

Therefore, the Panel finds that the requirement of the second element of paragraph 4(a) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of registration and use of a domain name in bad faith.

Respondent has registered the disputed domain name that fully incorporates Complainant’s well-known trademark NATIXIS, plus – as explained above in 6.A – the addition of the misspelling term “hares” for “shares”, which has a close relation to the investment services provided by Complainant. The Panel finds that it was duly demonstrated that Respondent was aware of Complainant’s rights to the trademark NATIXIS at the time of the registration – as Complainant enjoys a worldwide reputation with the use of the referred trademark and Complainant has included in the Complaint the use of the NATIXIS logo by Respondent on the website in which resolved the disputed domain name.

In addition, the use of the disputed domain name in the present circumstances allows a finding of bad faith registration and use, since Respondent’s website offers shares, similar to investment services, using Complainant’s logo, in an apparent attempt to attract, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant.

Moreover, the evidence indicates that Respondent’s website is not legitimate and that Respondent does not hold any relation with Complainant. In this regard, Complainant provides evidence of aspects of the website, such as Complainant’s logo and advertises shares, and contends that this shows Respondent is engaged in a pattern of bad faith likely aiming commercial gain by confusion of the public.

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Section 3.4 of the WIPO Overview 3.0 establishes that “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.”

The UDRP panel in Twitter, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Support,

WIPO Case No. D2015-1488 came to a similar conclusion:

“The Panel notes that Respondent’s use of the website at the Domain Name which incorporates the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, as per paragraph 4(b)(iv) of the Policy. Furthermore, the Panel accepts Complainant’s undisputed submission that bad faith registration and use of the Domain Name is further indicated by the fact that there is strong suspicion of Respondent using the Domain Name in an elaborate common phishing scam.”

The Panel finds that the circumstances of the present case allows a finding of bad faith in the registration and use of the disputed domain name, considering that (i) Respondent would likely obtain commercial gain by using the trademark NATIXIS in its entirety, and supposedly offering financial services at the disputed domain name – likely in connection to a fraudulent scam at the disputed domain name; (ii) the provision of false and/or misleading information on Respondent’s website as used Complainant’s logo; and (iii) the trademark NATIXIS is well known internationally and Complainant operating an almost identical domain name, such that Respondent most likely knew (or should have known) of its existence, taking advantage of the confusion caused on the public by its use in the disputed domain name.

Moreover, the Panel finds it relevant that Respondent has not provided any evidence of good faith registration or use, or otherwise participated in this dispute. Complainant has put forward serious claims regarding the apparent bad faith use of the disputed domain name that the Panel would expect any legitimate party would seek to refute.

In light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith. Therefore, the requirement of the third element of paragraph 4(a) of the Policy is satisfied.

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 <natixishares.com> be transferred to Complainant.

/Gabriel F. Leonardos/
Gabriel F. Leonardos
Sole Panelist
Date: September 29, 2023