Complainant is Natixis of Pierre Mendès-France, Paris, France, represented by Inlex IP Expertise, France.
Respondent is Ade N/A of Jakarta Barat, Jakarta, Indonesia, self-represented.
The disputed domain name <natixiscoin.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 23, 2018. On February 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2018. The Response was filed with the Center on March 19, 2018.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on March 28, 2018. 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.
Complainant, Natixis, is a French corporation that operates as an international corporate, investment banking and financial services company within the BPCE Group, one of the largest banking groups in France. Complainant was formed in 1954 and currently operates in 38 countries, including within the European Union and Indonesia. Complainant owns and uses the NATIXIS mark in connection with its banking and financial services.
Complainant has submitted a number of trademark registrations for the NATIXIS mark in connection with its financial services, including registrations in (i) France (Registration No. 3416315), which issued to registration on March 14, 2006, and (ii) the European Union Trade Mark (Registration No. 5129176), which issued to registration on June 21, 2007. Complainant also submitted registrations for the NATIXIS mark with a swoosh like design, including (i) an International Registration (Registration No. 1071008), which issued on April 21, 2010 and was extended to multiple countries, and (ii) registrations in Indonesia in Classes 9, 35, 26 and 38 (Registration Nos. IDM000322974, IDM000323848, IDM000322971 and IDM000323848), all of which issued on September 27, 2011. Complainant also owns and uses domain names that incorporate the NATIXIS mark, including <natixis.com> and <natixis.fr>, to provide information about its operations and to promote its Natixis investment banking and financial services.
Respondent is an individual with an address in Indonesia. Respondent registered the disputed domain name on or about December 27, 2017. At the time of the filing of the Complaint, the disputed domain name did not resolve to any active website. The disputed domain name currently resolves to a website that purports to promote sustainable energy.
Complainant asserts that it owns and has used the NATIXIS mark since 1954 in connection with its corporate, investment banking and financial services. Complainant maintains that the NATIXIS mark enjoys a widespread reputation not only in France, but around the world.
Complainant contends that the disputed domain name is confusingly similar to Complainant's NATIXIS mark because it contains the NATIXIS mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the descriptive term "coin" increases the potential risk of confusion because the term, which refers to currency, when used with the NATIXIS mark suggests a relationship with Complainant or a website of Complainant dedicated to currency such as bitcoins.
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain name because Respondent (a) is not in any way affiliated with or authorized by Complainant to use the NATIXIS mark, and (b) has not used the disputed domain name for a legitimate purpose. Complainant contends that Respondent has simply registered and passively held the disputed domain name.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent was likely aware of Complainant's NATIXIS mark, given that the NATIXIS mark is well known and that a web search for NATIXIS would have easily revealed Complainant's rights in NATIXIS. Complainant further asserts that Respondent's bad faith is established by Respondent's passive holding of the disputed domain name.
Respondent rejects all of Complainant's contentions and maintains that it registered the disputed domain name at the request of a colleague by the name of Edward Natixis Coinobin who is an Indonesian individual born in the city of Banjamasin. Respondent asserts that it has obtained a power of attorney from Edward Natixis Coinobin appointing Respondent to act for Mr. Coinobin and to take all legal actions deemed necessary in relation to the disputed domain name.
Respondent maintains that the disputed domain name which is based on the name of Edward Natixis Coinobin was legitimately registered, as it is simply a domain name based on a personal name. Respondent has submitted as evidence what Respondent contends to be an Indonesian identity card for Edward Natixis Coinobin.
Respondent asserts that there is no law that prevents an individual from registering a domain based on a personal name. Respondent also argues that because the disputed domain name was available for registration for well over a decade, and Complainant failed to register the disputed domain name, Complainant cannot now complain about Respondent's registration and use of the disputed domain name. Respondent further contends that the disputed domain name is being used lawfully for a legitimate noncommercial purpose, as it has been used since January 2018 with a website promoting a not for profit campaign in support of sustainable green energy for the environment.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Complainant has provided evidence that it owns and uses the NATIXIS mark, which has been registered and used in the European Union and Indonesia before Respondent registered the disputed domain name.
With Complainant's rights in the NATIXIS mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain ".org") is identical or confusingly similar with Complainant's mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant's NATIXIS mark as it incorporates the NATIXIS mark in its entirety at the head of the disputed domain name. The addition of the word "coin" does not distinguish the disputed domain name from Complainant's NATIXIS mark and in fact reinforces the confusion by suggesting that the disputed domain name is related to Complainant and/or a coin offering by Complainant. See, e.g.,Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004‑0488. Given that the threshold for satisfying the first element is low, the fact that the disputed domain name fully includes the NATIXIS mark is sufficient to meet the threshold. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the NATIXIS mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Here, Respondent claims that it has a legitimate interest in the disputed domain name because Respondent registered the disputed domain name on behalf of an individual by the name of Edward Natixis Coinobin. Respondent supports that contention by submitting a purported Indonesian identity card for Mr. Coinobin along with a power of attorney appointing Respondent as Mr. Coinobin's legal representative regarding the disputed domain name. The Panel has reviewed the alleged Indonesian identity card and notes that it does not contain any of the graphic elements that are typically displayed on such identity cards, known in Indonesia as Kartu Tanda Penduduk or KTP. Indeed, Respondent has not provided a copy of the backside of the alleged identity card for Mr. Coinobin, which is telling as the backside of KTP cards typically contain a number of graphic elements. The Panel thus has some reservations about the authenticity of the alleged identity card.
But putting aside the question of whether the alleged identity card is genuine, even if there is, in fact, an individual by the name of Edward Natixis Coinobin, the issue is whether the registration of only a part of Mr. Coinobin's name for the disputed domain name is legitimate. Here, the disputed domain correlates to only the middle name of Edward Natixis Coinobin and a shortened version of the last name to the term "coin." Respondent has provided no evidence that Mr. Coinobin is commonly known as or referred to as simply "Coin," "Mr. Coin" or "Natixis Coin." Thus, the disputed domain name does not, in fact, reflect the actual name of Edward Natixis Coinobin, but actually appears to be a combination of the NATIXIS mark with the word "coin." As Complainant has provided evidence to establish its rights in the NATIXIS mark, including rights in Indonesia where Respondent is based, its appears more likely than not that Respondent's claim to have registered the disputed domain name to reflect the name of Edward Natixis Coinobin is pretextual and not legitimate.
In addition, while Respondent claims that the disputed domain name has been used for the legitimate not for profit purpose of promoting sustainable energy, it is not altogether clear when this alleged use occurs. Respondent maintains that the disputed domain name was used with a website promoting sustainable energy starting on January 9, 2018, while Complainant maintains that there has been no use of the disputed domain name with an active website prior to February 23, 2018 when the Complaint was filed. The Panel has reviewed the evidence submitted by the Parties and has questions regarding the timing of when a website appeared at the disputed domain name. Respondent has provided no evidence showing a website at the disputed domain name on January 9, 2018 or any time prior to February 23, 2018. The evidence submitted only shows that Respondent may have opened some sort of site builder account with an entity called Indowebsite on January 9, 2018, not that there was an actual website at the disputed domain name at that time. Thus, while there is currently a website at the disputed domain name that refers to sustainable energy, it appears, from the evidence available to the Panel, more likely than not that such website was placed at the disputed domain name after the Complaint was filed in this proceeding. As such, the Panel does not consider Respondent's current website as supporting a claim of a legitimate interest in the disputed domain name.
In sum, given that Complainant has established with sufficient evidence that it owns rights in the NATIXIS mark, and given Respondent's above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
In the present case, Respondent has registered the disputed domain name that fully incorporates Complainant's NATIXIS mark with the word "coin". In view of the fact that Complainant operates in 38 countries, including Indonesia, and is a known provider of investment banking and financial services, the disputed domain name is likely to be viewed by consumers as linked to Complainant and/or to a website concerning a currency offering by Complainant. Moreover, and as discussed above, given that Respondent's claim to have registered the disputed domain name on behalf of an individual by the name of Edward Natixis Coinobin appears to be pretextual, and that Respondent's current use of the disputed domain name with a website with references to sustainable energy likewise appears to be pretextual, the Panel concludes that based on the evidence presented it is more likely than not that Respondent opportunistically registered and used the disputed domain name in bad faith and for Respondent's own profit.
Accordingly, the Panel finds that the Complainant succeeds under this element of the Policy.
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 <natixiscoin.com> be transferred to the Complainant.
Georges Nahitchevansky
Sole Panelist
Date: April 11, 2018