The Complainant is Natixis of Paris, France, represented by Inlex IP Expertise, France.
The Respondent is Contact Privacy Inc. Customer 0150420537 of Toronto, Ontario, Canada / Arnaud Melis of Paris, France.
The disputed domain name <natixis-passcyberplus.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2018. On April 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 6, 2018, 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 April 6, 2018.
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 April 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2018. The Center received an informal email communication from the “Technical Contact” listed in the WhoIs on April 7, 2018. The Respondent did not submit a formal response. Accordingly, on April 30, 2018, the Center notified the Parties that the Center would proceed to the appointment of a Panel.
The Center appointed Emmanuelle Ragot as the sole panelist in this matter on May 11, 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.
The Complainant is a French corporate and financial services company, Natixis, formed in 1954. It is the corporate, investment, insurance and financial services arm of Groupe BPCE, one of France’s largest banking institutions. It employs more than 17,000 persons in various countries. It enjoys a wide reputation in France and abroad and has won various awards for its services.
The Complainant trades under the name “Natixis” and holds several French, European Union (“EU”) and International rights to the name Natixis, notably the following:
- French trademark registration NATIXIS, no. 3416315, registered on March 14, 2006, in classes 9, 16, 35, 36 and 38;
- EU trademark registration NATIXIS, no. 005129176, registered on June 21, 2007, protected in classes 9, 16, 35, 36 and 38; and
- International trademark complex registration NATIXIS, no. 1071008, registered on April 21, 2010, protected in classes 9, 16, 35, 36 and 38.
The Complainant uses its NATIXIS trademarks in connection with banking and financial services and also owns and maintains the following domain names which resolves to its official website:
-<natixis.com>, since February 3, 2005; and
-<natixis.fr>, since October 20, 2006.
The Domain Name was registered on January 18, 2018.
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s NATIXIS trademark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The 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 Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
The Panel is satisfied that the Complainant has established that it has rights to the NATIXIS trademark.
The threshold test for confusing similarity involves the comparison between the trademark and the domain name itself to determine whether the domain name is confusingly similar to the trademark. The trademark would generally be recognizable within the domain name. In this case the Domain Name contains the NATIXIS trademark in its entirety placed in a leading position with the terms “pass” and “cyberplus”, the latter of which (i.e., CYBERPLUS) is a registered trademark in which BPCE has rights. The sign CYBERPLUS is a registered trademark owned by BPCE:
- French trademark registration CYBERPLUS no. 95575762 filed on June 14, 1995; and
- International trademark registration CYBERPLUS no. 647939 filed on December 13, 1995.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.
The Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the Domain Name.
The Respondent has not been licensed or authorized to use the NATIXIS trademarks or to register the Domain Name.
The Respondent did not make a fair or noncommercial use of the Domain Name. The Domain Name does not resolve to an active website.
In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the Domain Name, which the Respondent has not rebutted. The condition of paragraph 4(a)(ii) of the Policy has therefore been satisfied.
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name:
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purposes 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 website or location or of a product or service on the respondent’s website or location.
Given the widely-known character of the Complainant’s NATIXIS trademarks and the fact that the Respondent is domiciled in France, the Panel finds that the Respondent would have been aware of the Complainant’s rights in the NATIXIS trademarks when it registered the Domain Name.
The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the Domain Name.
The Panel finds that the Domain Name was registered in bad faith to disrupt the Complainant’s activities.
With reference to the use of the Domain Name, the Panel finds that the passive holding of the Domain Name, incorporating the widely-known NATIXIS trademark as well as CYBERPLUS trademark and the descriptive term “pass” without any obvious actual or contemplated good faith use, does not prevent a finding that the Domain Name is being used in bad faith.
The Domain Name is used in bad faith even if not active by taking advantage and capitalizing on the Complainant’s fame and reputation with the intent to cause confusion on the part of Internet users.
Considering the above circumstances, the Panel considers that the Respondent’s passive holding of the Domain Name satisfies the requirement of paragraph 4(a)(iii) that the Domain Name “was registered and is being used in bad faith” by the Respondent.
Accordingly, the Complainant has satisfied the third element of UDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <natixis-passcyberplus.com>, be transferred to the Complainant.
Emmanuelle Ragot
Sole Panelist
Date: June 4, 2018