WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Natixis v. Viho Ameble

Case No. D2019-2800

1. The Parties

The Complainant is Natixis, France, represented by Inlex IP Expertise, France.

The Respondent is Viho Ameble, France.

2. The Domain Name and Registrar

The disputed domain name <fr-natixis.com> is registered with Register.IT SPA (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2019. On November 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 2019, 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 November 25, 2019, 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 November 29, 2019.

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 December 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2019. The Respondent was given additional time till January 1, 2019, since the Center was unable to send the Written Notice to the fax address. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2020.

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on January 9, 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.

4. Factual Background

The Complainant is a French corporate and financial services company which is part of BPCE Group.

The Complainant employs more than 17,000 people over 38 countries, and is considered as France’s second-largest bank.

The Complainant is the owner of many trademarks consisting or including the word “natixis”, such as:

- The word French trademark NATIXIS No. 3416315, registered on March 14, 2006, in classes 9, 16, 35, 36, and 38, and renewed on May 13, 2016;
- The word European Union trademark NATIXIS No. 5129176, registered on June 12, 2006, in classes 9, 16, 35, 36, and 38, and renewed on June 12, 2016;
- The semi-figurative International trademark NATIXIS No. 1071008, registered on April 21, 2010, in classes 9, 16, 35, 36, and 38.

The Complainant operates the website “www.natixis.com”, to which the domain name <natixis.fr> redirects.

These domain names <natixis.com> and <natixis.fr> are registered in the name of the Complainant:

- <natixis.com> registered on February 3, 2005, and renewed;
- <natixis.fr> registered on October 20, 2006, and renewed.

The disputed domain name was registered on October 28, 2019. The name of the registrant was not initially disclosed on the WhoIs database.

The disputed domain name resolves to an inactive webpage. Complainant alleges that a fraudulent email address attached to the disputed domain name has been created and used with the name of Natixis’s CEO. The Complainant contends that this email address was created and used in order to fraudulently obtain payments.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark registrations of the Complainant, since the disputed domain name reproduces the NATIXIS trademarks on which the Complainant has rights.

The Complainant explains that this similarity is not affected by the adjunction of the geographical term “fr” followed by a hyphen, which remains highly descriptive of the country “France” where the Complainant has its main office. This adjunction suggests to Internet users that the disputed domain name is related to the Complainant’s business in France.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the name “natixis”. According to the information issued from the trademark database TMVIEW, no trademark FR-NATIXIS or FR-NATIXIS.COM exists. Therefore, it considers that the Respondent has no trademark rights in respect of the name NATIXIS.

The Complainant also submits that the Respondent is not affiliated with the Complainant nor authorized or licensed by the Complainant to use its NATIXIS trademarks.

It contends that the Respondent does not use properly the disputed domain name since it resolves to an inactive webpage.

On the bad faith issue, the Complainant contends that the disputed domain name was registered in bad faith to take advantage of the reputation of the NATIXIS trademarks, which are well-known in France and throughout the world.

Therefore, it seems unlikely that the Respondent was unaware of the Complainant’s activities and of the existence of its trademarks and domain names at the time the registrations were made.

The Complainant contends that the disputed domain name does not resolve to a website, but is used for fraudulent email purposes with the name of its CEO. It means that the Respondent can use email addresses “[…]@fr-natixis.com”, incorporating its well-known NATIXIS trademark for commercial emailing, spamming, or phishing, to the detriment of the Complainant.

It is therefore obvious to the Complainant that the Respondent has made deliberate use of the disputed domain name for obtaining fraudulent payments, what constitutes a bad faith use.

It requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has submitted evidence of its prior registered NATIXIS trademarks which are protected in France and in other countries.

The Complainant’s NATIXIS trademarks are well-known in France and internationally for banking and financial services.

The disputed domain name entirely incorporates the Complainant’s NATIXIS well-known trademark.

The adjunction of the two letters ISO code 3166-1 “fr”, identify France and does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks.

The generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement, and may be disregarded when determining identity or confusing similarity under the first element.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s NATIXIS trademark.

The condition of paragraph 4(a)(i) of the Policy has therefore been satisfied.

B. Rights or Legitimate Interests

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 disputed domain name.

The Respondent is not known under the disputed domain name and has not been licensed or authorized to use the well-known NATIXIS trademark or to register the disputed domain name.

The disputed domain name resolves to an inactive webpage.

The Complainant asserts that the disputed domain name was used to create email addresses incorporating its well-known name of NATIXIS “[…]@fr-natixis.com” and explains that an email address composed with the name of its CEO was created and used, for phishing purposes.

It does not produce any evidence of this assertion.

According to paragraph 10(a) of the Rules: “The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules”.

On this basis, the Panel is allowed to conduct its own searches, in order, for example, to check the status of the disputed domain name. In this case, the Panel wanted to check if a webmail server is configured.

These searches revealed that, indeed, there is a webmail server, which enables to create email addresses incorporating the well-known NATIXIS trademark.

Banking services are strictly regulated. Such practices are clearly very dangerous for the banks and for their customers and are illegitimate.

Therefore, this use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

Given the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name, which incorporates the NATIXIS well-known trademark, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights.

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 disputed domain name, which the Respondent has not rebutted.

The condition of paragraph 4(a)(ii) of the Policy has therefore been satisfied.

C. Registered and Used in Bad Faith

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. It provides that:

“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 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 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 your website or other on-line 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.”

The Respondent is domiciled in Paris, France.

Given the well-known character of NATIXIS trademark in France and internationally, the Panel finds that the Respondent, who is domiciled in France, could not ignore the Complainant’s rights in these trademarks when it registered the disputed domain name.

Furthermore, the entire reproduction of the Complainant’s well-known NATIXIS trademark in the disputed domain name proves that the Respondent targeted the Complainant when it registered the disputed domain name.

In addition, the Panel notes the adjunction of the two letters ISO code 3166-1 “fr”, identifying France, to the disputed domain name. It is obvious that the goal here is to let the Internet users believe that the disputed domain name is related to France where the Complainant has its headquarters.

Therefore, the Panel finds that the disputed domain name was registered in bad faith.

The Complainant alleges that the disputed domain name was used to create and use an email address incorporating the name of its CEO, without producing any evidence thereof.

Such email addresses are often used notably for spamming or phishing purposes, to obtain banking and personal data from the Complainant’s customers and to misuse these data.

The Panel takes into consideration, as above explained, that banking services are strictly regulated, to protect professionals as well as their customers. Therefore, it cannot be tolerated that an individual registers without any authorization, and potentially uses a domain name incorporating a trademark protected for banking services.

As here above explained, the Panel checked the status of the disputed domain name and ascertained that a webmail server is configured.

The existing MX servers enables the Respondent to use the disputed domain name for creating and using email addresses composed with the well-known NATIXIS trademark.

It is not possible to conceive of any plausible actual or contemplated active use of the domain name and of email addresses “[…]@fr-natixis.com” by the Respondent that would not be illegitimate.

It constitutes bad faith use in the meaning of paragraph 4(b)(iv) of the Policy.

For all the above reasons, the Panel is of the opinion that the disputed domain name satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name was registered and is being used in bad faith by the Respondent.

7. Decision

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 <fr-natixis.com> be transferred to the Complainant.

Marie-Emmanuelle Haas
Sole Panelist
Date: January 22, 2020