Complainant is Natixis Investment Managers, France, represented by Inlex IP Expertise, France.
Respondent is 王先生 (Wang Xian Sheng), China.
The disputed domain name <naxicap-holding.com> is registered with Hongkong Domain Name Information Management Co., Limited (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2021. On November 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On December 17, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed the request that English be the language of the proceeding on December 17, 2021. Respondent did not comment on the language of the proceeding.
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 in English and Chinese, and the proceedings commenced on December 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 14, 2022.
The Center appointed Yijun Tian as the sole panelist in this matter on January 28, 2022. 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 Investment Managers, is a company incorporated in France. It is a well-known investments company. Powered by the expertise of more than 20 specialized investment managers globally, Complainant delivers proactive solutions that help clients pursue better outcomes in all markets. According to the Complaint, for more than 25 years, it has been supporting small-to-medium-size enterprises (SMEs) and economically targeted investments (ETIs) through majority equity investments in France, Benelux, Germany, and Spain.
The NAXICAP and NAXICAP related marks have been registered in France, such as NAXICAP mark (French trademark registration number 3358577, registered May 12, 2005), and NAXICAP PARTNERS mark (French trademark registration number 3358575, registered May 12, 2005, also) (Annexe 5 to the Complaint). Complainant and/or NAXICAP also registered domain names which contain the NAXICAP trademark. For example, it is also the holder of the domain name <naxicap.com> (registered on May 26, 2005), and the holder of the domain name <naxicap.fr> (registered on May 27, 2005).
Respondent is 王先生 (Wang Xian Sheng), China.
The disputed domain name <naxicap-holding.com> was registered by Respondent on November 4, 2021. The disputed domain name resolved to a website providing online gaming and gambling services in Chinese (Annex 8 to the Complaint). The Panel notes that currently the website at the disputed domain name is inactive.
Complainant contends that the disputed domain name <naxicap-holding.com> is confusingly similar to the NAXICAP trademark. Simply employing the additions of the hyphen “-” and the word “holding” as suffixes with the NAXICAP trademark does not inhibit the finding of confusing similarity.
Complainant contends that Respondent can articulate no rights in the NAXICAP trademarks.
Complainant contends that Respondent registered and used the disputed domain name in bad faith. Respondent is a serial cybersquatter or, at a minimum, frequently acts as an agent for cybersquatters. Respondent is the owner of 66,784 domain names (Annex 12 to the Complaint), which is clear evidence of a pattern of bad faith registrations.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
The language of the Registration Agreement for the disputed domain name <naxicap-holding.com> is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following main reasons:
a) The extension of the disputed domain name “.com” is a supranational character and targets consumers from all over the world and familiar with English Language. Respondent may have an understanding of English as the disputed domain name has been registered using the generic Top-Level Domain (“gTLD”) “.com” instead of the country code Top-Level Domain (“ccTLD”) “.cn” for China;
b) The disputed domain name is in Latin script rather than Chinese characters which indicate that Respondent is able to understand the English language;
c) The disputed domain name includes the English word “holding” which indicate that Respondent is able to understand the English language;
d) English is the business language;
e) Registrar is Hong Kong Domain Name Information Management Co., Limited. English is also the official language of Hong Kong, China. Therefore, Registrar is conversant in English;
f) Registrar’s name ends by “Co., Limited” which means “limited company” in English. This abbreviation is commonly used by English speaking companies to refers to their legal status. Therefore, Registrar is familiar with the English language;
g) Complainant being based in France and Respondent being based in China, English is the fairest neutral language for the proceedings;
h) Complainant is a French Company and it would cause significant expenses and delay if Complainant was required to translate the Complaint and Annexes into Chinese considering that the Complaint together with the Annexes have more than a hundred pages. Neither Complainant nor its legal representative are fluent in Chinese; and
i) The reservation of the disputed domain name <naxicap-holding.com> is a cybersquatting case. Holders of well-known trademarks such as Complainant are very frequently exposed to cybersquatting cases and have therefore to continuously defend their rights against fraudulent domain names reservations. It is important to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:
“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).
The Panel has taken into consideration the fact that Complainant is a company from France, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name <naxicap-holding.com> includes Latin characters (“naxicap”) and particularly the English word (“holding”), and is registered in the gTLD space comprising of the Latin characters “.com” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese resident and is thus presumably not a native English speaker. However, considering the following, the Panel has decided that English should be the language of the proceeding: (a) the disputed domain name includes Latin characters (“naxicap”) and particularly the English word (“holding”), rather than Chinese script; (b) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has not indicated an objection to Complainant’s request that English be the language of the proceeding; and (c) the Center informed the Parties, in English and Chinese, that it would accept a Response in either English or Chinese. The Panel would have accepted responses in either English or Chinese but none was filed.
Accordingly, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be transferred:
(i) the disputed domain name registered by Respondent 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.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows:
The Panel finds that Complainant has rights in the NAXICAP marks. The disputed domain name <naxicap-holding.com> comprises the NAXICAP mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the suffixes “-” and “holding”, and the gTLD “.com” to the NAXICAP marks. This does not compromise the recognizability of Complainant’s marks within the disputed domain name, nor prevent a finding of confusing similarity between Complainant’s registered trademarks and the disputed domain name (Decathlon v. Zheng Jianmeng, WIPO Case No. D2019-0234).
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Further, in relation to the gTLD suffix, section 1.11.1 of WIPO Overview 3.0 further states: “The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”
The Panel, therefore, holds that Complaint fulfils the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent 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; or
(ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) 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 Complainant’s trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).
The NAXICAP marks have been registered in France since 2005, which precede Respondent’s registration of the disputed domain name (in 2021). According to the Complaint, Naxicap is a well-known investments company. Powered by the expertise of more than 20 specialized investment managers globally, Complainant delivers proactive solutions that help clients pursue better outcomes in all markets, including SMEs and ETIs through majority equity investments in France, Benelux, Germany, and Spain.
Moreover, Respondent is not an authorized dealer of NAXICAP branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the disputed domain name or reasons to justify the choice of the term “naxicap-holding” in the disputed domain name and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the NAXICAP marks or to apply for or use any domain name incorporating the NAXICAP marks.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2021, long after the NAXICAP marks became internationally known. The disputed domain name is identical or confusingly similar to the NAXICAP marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the website resolved to a website with links to online gambling services (Annex 8 to the Complaint). It seems that Respondent is making profits through the Internet traffic attracted to the website under the disputed domain name. (See BKS Bank AG v. Jianwei Guo, WIPO Case No. D2017-1041; BASF SE v. Hong Fu Chen, Chen Hong Fu, WIPO Case No. D2017-2203).
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel, therefore, holds that Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
(a) Registration in Bad Faith
The Panel finds that the NAXICAP marks have a widespread reputation as a well-known investments company. Powered by the expertise of more than 20 specialized investment managers globally, Complainant delivers proactive solutions that help clients pursue better outcomes in all markets, including SMEs and ETIs through majority equity investments in France, Benelux, Germany, and Spain.
As mentioned above, NAXICAP marks and NAXICAP-related marks were registered in France (since 2005). It is not conceivable that Respondent would not have had actual notice of the NAXICAP marks at the time of the registration of the disputed domain name (in 2021). The Panel, therefore, finds that the NAXICAP mark is not one that a trader could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to UDRP previous panel decisions “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, and also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Thus, the Panel concludes that the disputed domain name was registered in bad faith.
(b) Use in Bad Faith
Complainant also has adduced evidence to show that by using the confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location”. To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that such intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
As noted above, the disputed domain name has been used to attract Internet users seeking Complainant’s websites displaying contents of online gambling actives, presumably for the commercial gain of Respondent. Such conduct falls squarely within the language of paragraph 4(b)(iv) of the Policy.
Further, given the lack of response, the Panel cannot envision any other plausible use of the disputed domain name that would not be in bad faith under the present circumstances. Taking into account all the circumstances of this case, the Panel concludes that the current inactive use of the disputed domain name by Respondent is in bad faith also.
In summary, Respondent, by choosing to register and use the disputed domain name, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel, therefore, holds that Complaint fulfils the third condition of paragraph 4(a) of the Policy.
For all 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 <naxicap-holding.com> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: March 1, 2022