The Complainant is NATIXIS, France, represented by Inlex IP Expertise, France.
The Respondent is maye kui, Personal, Japan.
The disputed domain name <natixi.tokyo> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned names and Numbers (ICANN) on October 24, 1999 (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on September 28, 2013 and in effect as of July 31, 2015 (“the Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“the Supplemental Rules”) of the WIPO Arbitration and Mediation Center (“the Center”) in effect as of July 31, 2015.
The Complaint was filed in English with the Center on February 18, 2020. On February 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2020, 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 March 2, 2020 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 in English on March 3, 2020.
On March 2, 2020, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On March 3, 2020, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy UDRP, the Rules, and the Supplemental Rules.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent, in English and Japanese, of the Complaint, and the proceedings commenced on March 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2020. Electronic and courier deliveries failed. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2020.
The Center appointed Haig Oghigian as the sole panelist in this matter on April 20, 2020. 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.
The Panel notes that the Complainant has requested that English be the language of proceeding in this matter. In accordance with paragraph 11 of the Rules, based on the case file, and in the absence of any comments from the Respondent in this matter, the Panel decides that English be the language of proceeding, and will submit the decision in English.
The administrative Panel finds the following as uncontested facts:
- The Complainant is a “French international corporate, investment management and financial services Company NATIXIS” (first registered on July 30, 1954) and an “arm of the BPCE Group, France’s second-largest banking player”. As a result, the Complainant is known both in France and worldwide.
- The Complainant is the owner of several trademarks containing the term “natixis” (word) across the globe, for example:
- European Union trademark number 5129176, registered on June 12, 2006; and
- International trademark number 1071008, registered on April 21, 2010, designating, inter alia, Japan, where the Respondent resides.
- The Complainant owns many domain names including the word “natixis” alone or combined with other elements, such as:
- <natixis.com> registered on February 3, 2005, duly renewed; and
- <natixis.fr> registered on October 20, 2006, duly renewed.
- The Complainant uses these trademarks in association with the banking and financial services through its official website at “www.natixis.com” and the Complainant’s reputed services proposed under the trademarks NATIXIS are notorious in France, European Union and internationally. Numerous UDRP Panels have previously recognized the notoriety of NATIXIS Group (see, e.g., Natixis v. Marcel Brient, WIPO Case No. D2019-0053; Natixis v. Whoisguard Protected, Whois Guard, Inc. / Jacques Ralph, WIPO Case No. D2019-0048; Natixis v. Satheesh Mani, Sri Angala Parameshwari Enterprise, WIPO Case No. D2018-0726; Natixis v. Contact Privacy Inc. Customer 0150420537 / Arnaud Melis, WIPO Case No. D2018-0725; Natixis v. Registration Private, Domains By Proxy, LLC / Chuon Sophear, WIPO Case No. D2018-0691).
- The Respondent registered the disputed domain name <natixi.tokyo> on January 31, 2020. The disputed domain name does not have any active website.
The Complainant claims the Respondent’s use of the disputed domain name <natixi.tokyo> constitutes a classic case of typosquatting because the disputed domain name is confusingly similar to its own trademark NATIXIS and ownership rights, as it contains nearly identical letters and has no particular meaning. It further claims the Respondent has no rights or legitimate interests in the disputed domain name. It argues that the use of the disputed domain name by the Respondent is in bad faith for the sole purpose of “taking undue advantage of the well-known trademark NATIXIS”, and, therefore, requests the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the transfer of the disputed name may be ordered if the Complainant demonstrates three elements:
(A) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) The Respondent has no rights or legitimate interests in respect of the domain name; and
(C) The domain name has been registered and is being used in bad faith.
The disputed domain name <natixi.tokyo> incorporates the Complainant’s NATIXIS trademark almost in its entirety. It differs from the Complainant’s trademark merely by one letter: letter “s” is removed. A previous UDRP panel has already recognized confusing similarity in a case concerning the domain name <sheraton.tokyo>, holding that “the addition of the Top-Level Domain suffix ‘.tokyo’ does not detract from confusing similarity between the Complainant’s trademark and the disputed domain names, given the geographic and thus, descriptive, nature of such Top-Level Domain suffix” (see Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International IP, LLC v. Domain Administrator, Beyond the Dot Ltd / Houghton Richards Case, WIPO Case No. D2015-0231).
Under the principles set forth in section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this Panel determines that the disputed domain name is confusingly similar to the Complainant’s NATIXIS trademark.
The Complainant indicates that the disputed domain name does not correspond to the name of the Respondent, nor to any trademark registered in its name. Furthermore, there is “no business or legal relationship” between the Parties. The Complainant has also never “authorized nor licensed the Respondent” to use the Complainant’s trademarks. The absence of such authorization has been viewed as an impediment to a legitimate use claim (see LEGO Juris A/S v. Domain Park Ltd., David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138; L’Oreal and Laboratoire Garnier et Compagnie v. Mitesh Soma, WIPO Case No. D2011-0860). Not only that, in a similar case concerning the domain name <natixiis.com>, the UDRP panel found a prima facie case of the respondent’s lack of rights or legitimate interests when the complainant had not previously authorized the respondent’s use of its well-known trademark, when the respondent was not commonly known by the disputed domain name, its name did not include the word “natixiis”, and the domain name did not resolve to an active website (see Natixis v. Sylvia Postler Case, WIPO Case No. D2015-0960). Lastly, no actual evidence of any fair or noncommercial or bona fide use of the disputed domain name exists.
Noting the nature of the disputed domain name, the uniqueness of the Complainant’s name, and the fact that the disputed domain name does not have any active website, it negatively reflects on the Respondent’s conduct. The Respondent has not responded to provide any evidence of legitimate use. Accordingly, based on the available record and Policy, paragraph 4(a)(ii), the Panel finds that the Complainant has made out a prima facie case, which has not been rebutted by the Respondent, and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Complainant has established itself, in France and globally, as a reputable financial services provider and finds it difficult to believe that the Respondent was unaware of the Complainant’s activities and the existence of the trademarks and domain names “NATIXIS, and just happened to register a confusingly similar disputed domain name <natixi.tokyo>. In particular, this conclusion is justified in light of:
(i) the nature of the disputed domain name;
(ii) the uniqueness of the NATIXIS trademark;
(iii) the fact that the disputed domain name is inactive and “there is no real and substantial offer of goods and/or services on the website associated with the disputed domain name”;
(iv) the Respondent’s registration of the disputed domain name using a privacy shield, which previous panels have held to be indicative of bad faith (see Balfour Beatty plc v. Domains By Proxy, LLC / Karam Police, WIPO Case No. D2018-1150).
Therefore, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
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.tokyo> be transferred to the Complainant.
Haig Oghigian
Sole Panelist
Date: May 11, 2020