Natixis v Privacy service provided by Withheld for Privacy ehf / Laurent

WIPO Case No. D2022-1881

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Natixis v. Privacy service provided by Withheld for Privacy ehf / Laurent
PALLOMBA

Case No. D2022-1881

1. The Parties

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

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Laurent PALLOMBA,

France.

2. The Domain Name and Registrar

The disputed domain name <natixi-direct.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2022. On May 25, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on May 27, 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 May 31, 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 1, 2022. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2022.

The Center appointed Christophe Caron as the sole panelist in this matter on June 27, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is Natixis, a French multinational financial services firm specialized in asset and wealth management, corporate and investment banking, insurance and payments.

The Complainant owns several trademarks composed of the term NATIXIS, including:

- the French word trademark No. 3416315 NATIXIS, filed on March 14, 2006 and duly registered;

- the European Union word trademark No. 005129176 NATIXIS, registered on June 21, 2007;

- the International semi-figurative trademark No. 1071008, registered on April 21, 2010, reproduced below:

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Moreover, the Complainant indicates that the Respondent used the disputed domain name in connection with a parking page displaying PPC links.

The Complainant then contends that the Respondent is not currently using the disputed domain name in connection with a bona fide offering of goods or services since the disputed domain name does not resolve to an active website or webpage.

Considering these elements, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Registration and Use in Bad Faith

The Complainant contends that regarding its wide reputation not only in France but also around the world, it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademark.

In addition, the Complainant indicates that it is obvious that the disputed domain name has been registered
for commercial purpose in order to mislead the consumer and, in all likelihood, for diverting the
Complainant’s consumers since the disputed domain name pointed to a parking page.

Finally, the Complainant suspects that the Respondent is intentionally attempting to take advantage of the Complainant’s trademark in order to generate profits with email services attached to the disputed domain name which almost reproduces the Complainant’s trademark NATIXIS in full.

On these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the
Policy have been satisfied, namely:

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

(ii)       the 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.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.

The Complainant is the owner of several word trademarks NATIXIS, including trademarks registered in 2006 and 2007.

The disputed domain name <natixi-direct.com> incorporates the Complainant’s NATIXIS trademark almost in its entirety. Indeed, it differs from the Complainant’s trademark by one letter: letter “s” is removed.

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The addition of “.com” in the disputed domain name does not prevent confusing similarity. This is also the
case for the additional term “direct”. See WIPO Overview of WIPO Panel Views on Selected UDRP

Questions, Third Edition (“WIPO Overview 3.0”), sections 1.11 and 1.8.

The Panel therefore finds that the disputed domain name is confusingly similar to the registered trademark

NATIXIS in which the Complainant has rights.

Thus, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

This Panel is satisfied that the Respondent has no relationship with the Complainant and that this latter has not granted any rights of use of its trademark NATIXIS to the Respondent.

Furthermore, the Respondent is not currently using the disputed domain name in connection with a bona fide offering of goods or services since the disputed domain name currently does not resolve to an active website or webpage and previously resolved to a website with PPC links. There is also no evidence on record that the Respondent is commonly known by the disputed domain name.

Hence, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the disputed domain name in bad faith.

WIPO Overview 3.0.

Regarding the reputation of the Complainant and its trademarks NATIXIS, in particular in France, the registration of a domain name that is identical or confusingly similar to a well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the

Then, the Respondent is not currently using the disputed domain name. UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of the WIPO Overview 3.0). The Panel finds so under the circumstances of this case, particularly considering the reputation and distinctiveness of the Complainant’s prior registered trademarks NATIXIS. Moreover, the fact that the disputed domain name used to resolve to a website with PPC links some of which are related to the Complainant’s business supports the finding of bad faith further.

For all these reasons, it appears to this Panel that the disputed domain name <natixi-direct.com> incorporating the term “natixi” which has no meaning, and is confusingly similar to the Complainant’s trademarks NATIXIS has been registered and is being used in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy is also satisfied.

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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 <natixi-direct.com> be transferred to the Complainant.

/Christophe Caron/
Christophe Caron
Sole Panelist
Date: July 11, 2022

The Complainant also owns domain names incorporating its trademark NATIXIS, namely:

- <natixis.com>, registered on February 3, 2005; and

- <natixis.fr>, registered on October 20, 2006.

The disputed domain name <natixi-direct.com> was registered on May 18, 2022. The disputed domain
name currently does not resolve to an active website, and previously resolved to a website with pay-per-click

(“PPC”) links.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions.

Identical or Confusingly Similar

First, the Complainant states that the disputed domain name <natixi-direct.com> should be considered as confusingly similar to its prior rights since the disputed domain name consists of the first six letters of its marks NATIXIS followed by the descriptive word “direct” connected by a hyphen and followed by the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant contends that it is obvious that the element “natixi” will be perceived as the distinctive and dominant element of the disputed domain name as it has no meaning, it is placed in the leading position and the word “direct” is generic.

Rights or Legitimate Interests

The Complainant asserts that it has neither authorized nor licensed the Respondent to use its trademarks in any way.

In addition, the Complainant contends that according to a search on the Global Brand database the
Respondent does not own any trademark including the term “natixi”.