No. 1071008, filed on April 21, 2010The Complainant is Natixis, France, represented by Inlex IP Expertise, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
The disputed domain name <natixiss.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2021. On October 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2021, 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 October 5, 2021, 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 October 8, 2021.
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 October 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2021.
The Center appointed Ian Blackshaw as the sole panelist in this matter on November 8, 2021. 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 Complainant is a French corporate and financial services Company, NATIXIS, which is part of BPCE Group.
The Complainant owns several French, Community and International prior trademarks registered since 2006, composed of the term “Natixis”, notably:
- French Trademark registration NATIXIS No. 3416315, filed on March 14, 2006
- Community Trademark registration NATIXIS No. 5129176, filed on June 12, 2006
- International Trademark registration No. 1071008, filed on April 21, 2010
Evidence of which has been provided to the Panel.
The Complainant also owns the following domain names:
- <natixis.com>, created on February 3, 2005
- <natixis.fr>, created on October 20, 2006
Again, evidence has been provided to the Panel.
The Complainant widely uses the NATIXIS trademarks in connection with its banking and financial services. The Complainant’s services offered under these trademarks are well known in France, the European Union, and internationally.
The disputed domain name was created on September 21, 2021, and resolve to a site featuring pay-per-click (“PPC”) links.
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name wholly incorporates the Complainant’s trademark NATIXIS with the addition of a letter “s”, which characterizes an intentional misspelling. The Complainant’s trademark is clearly recognizable in the disputed domain name. Further the Complainant’s trademark NATIXIS has no meaning and is, therefore, highly distinctive. The disputed domain name differs from the Complainant’s trademark only by the inclusion of an additional letter “s”.
In a similar case, it was held that the domain name <maybellinee.com> was similar to the trademark MAYBELLINE: “the disputed domain name differs from that trademark only by the inclusion of an additional letter ‘e’, which does not prevent the disputed domain name from being confusingly similar to the Complainant’s trademark. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.” See L’Oréal v. See PrivacyGuardian.org/ CvxzvDFS Dfdsafds, WIPO Case No. D2021-1827.
The disputed domain name consists of a common, obvious, or intentional misspelling of the Complainant’s trademark. Thus, the disputed domain name is a classic example of typosquatting.
Furthermore, when searching for “natixiss”, the Internet browser Google automatically suggests amending the search and discloses results for NATIXIS.
Thus, there is a likelihood of confusion between the disputed domain name and the Complainant’s prior trademark rights.
Therefore, the dispute domain name registered by the Respondent should be considered as confusingly similar to the prior rights owned by the Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
Following the disclosure of the Respondent’s identity by the Registrar, the Complainant checked the Respondent’s prior rights, if any, and it appears that the Respondent is not the owner of any NATIXISS trademark.
Also, there is no business or legal relationship between the Complainant and the Respondent. The Complainant has neither authorized nor licensed the Respondent to use its trademarks in any way.Previous UDRP decisions inferred from this lack of license or authorization that the Respondent had no rights or legitimate interests in respect of the disputed domain name. See Crédit Industriel et Commercial S.A. v. CIC Banq, WIPO Case No. D2016-1875.
A simple search on the search engine Google for the words “natixiss Carolina Rodrigues, Fundacion Comercio” does not lead to any pertinent results.
Thus, the Respondent is not commonly known as “natixiss”.
Moreover, the disputed domain name points to a parking page reproducing the Complainant’s trademark NATIXIS and displaying PPC links.
Previous UDRP Panels have constantly found that the use of a domain name to host a parking page comprising PPC links does not represent a bona fide offering. Therefore, the Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.
See, for example, MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC., WIPO Case No. D2006-0550; and Equifax Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-2375: “use of the disputed domain name to direct Internet users to a directory page containing PPC links does not amount to a bona fide offering of goods and services because the Respondent is using the confusing similarity between the disputed domain name and the Complainant’s I2VERIFY mark in order to attract Internet users to its website.”
Considering that the disputed domain name incorporates the Complainant’s trademark, there is a risk of affiliation with the Complainant. In particular, and as demonstrated below, the disputed domain name has been registered in bad faith to mislead the consumer.
For all the above-mentioned reasons, it should be concluded that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
The disputed domain name is registered with the aim of taking advantage of the reputation of the Complainant’s well-known trademark NATIXIS.
In particular, it should be noted that:
1. The trademarks NATIXIS are well known in France and in several other countries.
There are a number of prior UDRP decisions recognizing the notoriety of the Complainant NATIXIS and its trademarks.
It is worth pointing out that a Google search for the mark NATIXIS gives 3,290,000 results. However, the Complainant’s website appears first.
With more than 17,000 employees in 38 countries, Natixis is the corporate, investment, and financial services arm of BPCE Group, France’s second-largest banking player.
The Complainant ranks first bookrunner for syndicated real-estate finance loans in the EMEA region in 2017, according to Dealogic (EMEA Real Estate Loans Report, Full-year 2017). The Complainant is also leader in equity research in France in 2017 (source: Thomson Reuters Analyst Awards 2017) and at the first place in impact management (source: Finansol “Zoom sur la finance solidaire”, 2015 edition based on solidarity-based assets at end-December 2014). The French Association of Financial Management (AFG) also awarded the Complainant as number one account keeper for employee savings, in 2015 and according to Thomson Reuters Global Project Finance Review, The Complainant was also number one bookrunner for project finance. Evidence has been provided to the Panel.
Thus, the Complainant enjoys a wide reputation not only in France but also around the world.
Considering the above, it seems unlikely that the Respondent was unaware of the Complainant’s activities and of the existence of the NATIXIS trademarks and domain names at the time the domain name was registered.
2. When registering the disputed domain name, the Respondent employed a privacy service in order to hide its identity and to avoid being notified of a UDRP proceeding. This is an inference of bad faith, recognized for instance in GVC Holdings plc / ElectraWorks Limited v. Registration Private, Domains By Proxy, LLC / Adnan Atakan Alta, WIPO Case No. D2016-2563: “the Respondent used a privacy service when creating the disputed domain names. Although privacy services might be legitimate in certain circumstances, it is for the Panel difficult to see in the present case why the Respondent should need to protect its identity except to make it difficult for the Complainant to protect its trademark rights. The Panel rather believes that the choice of the disputed domain names (which fully incorporate the Complainant’s trademark), the content as well as the design of the Respondent’s corresponding websites rather indicate that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant.”
Moreover, the Respondent is a “systematic cybersquatter” engaged in a series of domain name registrations that infringe trademarks of third parties. For example, SportPursuit Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-2315; The Chemours Company, LLC v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-1659; Klarna Bank AB v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-1586; Government Employees Insurance Company v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-1411; Sodexo v. Carolina Rodrigues, WIPO Case No. D2021-1408; and Sodexo v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-1393.
A search for prior UDRP decisions identified approximately 200 cases involving the Respondent where a transfer was ordered. It is clear evidence of a pattern of bad faith registrations on the part of the Respondent.
3. Also, the disputed domain name is used in bad faith.
The disputed domain name has been registered with the aim of taking advantage of the Complainant’s well-known trademark NATIXIS.
Indeed, the disputed domain name points to a parking page.
It is obvious that the disputed domain name has been registered for commercial purposes to mislead the consumer and, in all likelihood, for diverting the Complainant’s consumers. The Respondent takes advantage of the well-known trademark NATIXIS to earn money with clicks. Indeed, the disputed domain name directs to a parking page including PPC links.
Ruling on a similar case, the Panel stated that “The Respondent’s misuse of the Disputed Domain Name in relation to pay-per-click advertising is clear evidence of bad faith, because it creates a likelihood of confusion as to the relationship between the Complainant and the Respondent, as well as to the source, sponsorship, or endorsement of the advertised links. As stated in L’Oreal, Biotherm, Lancome Parfums et Beaute & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, ‘such exploitation of the reputation of trademarks to obtain clickthrough commissions from the diversion of internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions [....]’.” See International Business Machines Corporation v. Stephen Thorpe, Vrtx Agency, WIPO Case No. D2021-0194.
In addition, a finding of bad faith use can be made, inter alia, where the respondent “knew or should have known” of complainant's trademark rights, and nevertheless used a domain name incorporating a mark, in which he had no rights or legitimate interests. See Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484.
Last but not least, MX Records attached to the disputed domain name, which wholly incorporates the Complainant’s trademark, have been activated while the disputed domain name points to a parking page.
Therefore, there is a high risk that the disputed domain name be used for phishing or email scams. In particular, given the field of activity of the Complainant, namely banking and financial services, the fraudulent collection of personal data, such as banking information, through a phishing campaign may be very detrimental to the Complainant’s clients.
Ruling on a similar case, the Panel already considered that “[i]n the circumstances of this case, the Panel finds that such passive holding amounts to bad faith. Moreover, since the MX records attached to the disputed domain name have been activated, along with the nature of the disputed domain name (being a typo-squatting version of the mark), the Panel deems that there is a high risk that the disputed domain name is likely to be used for phishing activities, especially considering the Complainant’s financial business”. See MIROVA v. Redacted for Privacy / Tod Francis, Francis Trucking Inc, WIPO Case No. D2020-2148.
Also in another similar case, the Panel considered that “The record also shows that an email server has been created by the Respondent. As noted above, the Panel finds that, noting the composition of the Disputed Domain Name, an email originating from an address in the form ‘[username]@natixis-onlineca.com' would likely be understood to have originated with the Complainant. If it is the case that the Respondent is using the Disputed Domain Name as an email address, then such use would comprise a bad-faith exploitation of the Complainant’s reputation in its well-known mark”. See Natixis v. Wallace Moore, ML LLC, WIPO Case No. D2020-2454.It is, therefore, in the public interest to transfer the disputed domain name to the Complainant to avoid that the disputed domain name be used for misleading the consumers.
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, 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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP decisions in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140.
In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.
It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the disputed domain name essentially incorporates the Complainant’s well-known and widely used NATIXIS registered trademark, with a slight misspelling as mentioned above, and this makes the disputed domain name confusingly similar to the Complainant’s well-known and widely used NATIXIS registered trademark.
This conduct constitutes so-called “typosquatting” in that it appears to have been included by the Respondent to cover cases, where persons wishing to connect with the Complainant and its products and services, inadvertently misspell the Complainant’s well-known and widely used NATIXIS Mark. See Decathlon SAS v. Wang Yongwei / Domain Admin, Information Privacy Protection Services Limited, WIPO Case No. D2015-0198; and Wikimedia Foundation, Inc. v. Domains by Proxy, LLC / Management Group, Nanci Nette, WIPO Case No. D2018-1453. See also Philip Morris USA Inc. v. Compsys Domain / Compsys Domain Solutions Private Limited, WIPO Case No. D2017-2395 and the previous UDRP cases cited therein.
Furthermore, the addition of the gTLD “.com” is irrelevant in determining whether the disputed domain name is confusingly similar to the Complainant’s well-known and widely used NATIXIS registered trademark, this being for Internet registration purposes only. See Blue Sky Software Corp. v. Digital Sierra, Inc., WIPO Case No. D2000-0165.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known and widely used NATIXIS registered trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has prior rights in and prior commercial use of the same.
The first element of the Policy, therefore, has been met.
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances, in particular, but without limitation:
- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done so, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
There is no evidence either before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known and widely used NATIXIS registered trademark. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known and widely used NATIXIS registered trademark, which the Panel considers, as asserted above by the Complainant, would appear not to be by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products and services.
Further, the Panel finds that the Respondent is consequentially trading unfairly on the Complainant’s well-known and widely used NATIXIS registered trademark and also the valuable goodwill that the Complainant has established in that trademark through the Complainant’s prior commercial use without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used or undertaken any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [the respondent’s] web site or location or of a product or service on [its] web site or location.”
Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name confusingly similar to the Complainant’s well-known and widely used NATIXIS registered trademark, is trading unfairly on the Complainant’s valuable goodwill established in such trademark.
The incorporation of a typographical variation, namely the addition of an “s”, of the Complainant’s well-known and widely used NATIXIS trademark in the disputed domain name, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its products and services marketed under its well-known and widely used NATIXIS registered trademark.
Also, the effect of such conduct on the part of the Respondent is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided on the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.
Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name by chance; but, as noted above, appears to have been – or, at least, should have been – fully aware of the notoriety of the Complainant and its worldwide business activity, as well as its well-known and widely used NATIXIS registered trademark and its prior commercial use.
Furthermore, the anonymity of the Respondent through the use of a privacy services organization also suggests, in the view of the Panel, bad faith on the part of the Respondent.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent in the circumstances of this case. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account, and for all the above-mentioned reasons, as well as the arguments advanced by the Complainant in its contentions, as set out above, and also based on the previous UDRP cases cited above, the Panel concludes that the Respondent has registered and is using the disputed domain name 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 <natixiss.com> be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Date: November 15, 2021