WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Natixis v. WhoisGuard Protected, WhoisGuard, Inc. / Victor Blake, Natix

Case No. D2021-0420

1. The Parties

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

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Victor Blake, Natix, Nigeria.

2. The Domain Name and Registrar

The Disputed Domain Name <natixtrade.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2021. On February 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 11, 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 Complainant on February 12, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 15, 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 Respondent of the Complaint, and the proceedings commenced on February 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 12, 2021.

The Center appointed Richard W. Page as the sole panelist in this matter on March 22, 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.

4. Factual Background

Complainant is a French corporation and financial services Company named NATIXIS, which is part of the BPCE Group.

Complainant owns several French, European Union and International prior trademarks registered since 2002 and containing of the term “natixis” and its principal element “natix”:

French Trademark registration NATIXIS No. 3416315, registered on March 14, 2006;

European Union Trademark registration NATIXIS No. 5129176, registered on June 21, 2007;

International Trademark design registration NATIXIS No. 1071008, registered on April 21, 2010 (referred to herein as the “NATIXIS Mark”).

Complainant also owns domain names, <natixis.com>, registered on February 3, 2005, and <natixis.fr>, registered October 20, 2006, which redirect to Complainant’s official website.

The Disputed Domain Name was registered on January 20, 2021. The Disputed Domain Name pointed to a website that looks like a bank website. At the time of this decision, the Disputed Domain Name is inactive.

5. Parties’ Contentions

A. Complainant

Complainant contends that it widely uses the NATIXIS Mark in connection with banking and financial services. Complainant’s designated services under the NATIXIS Mark are well-known in France, the European Union and internationally.

Complainant became aware of the Disputed Domain Name on January 20, 2021. Complainant further contends that the Disputed Domain Name uses the key element or dominant part “natix” in the NATIXIS Mark. Duplication of the entirety of the Disputed Domain Name or of its principal element are sufficient to find confusing similarity. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) Section 1.7: “where at least a dominant feature if the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” See also Adaptive Molecular Tech, Inc, v. Woodward, WIPO Case No. D2000-0006 (February 28, 2000) (finding that a domain name was “undoubtably confusingly similar because it incorporated the “primary, distinctive element of both of Complainant’s trademarks;” Natixis v. Domain eRegistration / ID Shield Service, Domain/ ID Shield Service CO., Limited, WIPO Case No. D2016-2289 (confusing because domain name consists of the dominant part of the NATIXIS Mark.)

Complainant further contends that Respondent has used in same five identical letters placed in the same order and at the same rank as the dominant element of the “natix” within the NATIXIS Mark creates a highly visual similarity “natix” v. “natixis”.

Complainant further contends that the only difference is the absence of the second “i” and the final “s” in the Disputed Domain Name. The element “natix” is shortened version of Complainant’s NATIXIS Mark, making this is a typosquatting case. The mistake is hardly noticeable, even more hardly noticeable because of the inclusion of the word “trade”. The addition of the term “trade” does not add any distinctiveness. Indeed, the term “trade” is generic and directly related to the services offered by Complainant.

Complainant contends that Respondent has violated paragraph 4(a)(i) of the Policy.

Complainant alleges that Respondent is not the owner of any rights in a trademark using the “natix” or “natixis” names. Complainant alleges that Respondent pretends to be a web designer, but the website is not used or designer services. Instead, it is points to a fake website taking over the NATIXIS Mark.

Complainant further alleges that there is no business or legal relationship between Complainant and Respondent. Complainant has neither authorized nor licensed Respondent to use the NATIXIS Mark in any way. Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy.

Complainant asserts that Respondent registered and is using the Disputed Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. The Disputed Domain Name was registered with the aim of taking advantage of the reputation of the well-known NATIXIS Mark by attracting Internet users to Respondent’s website.

Complainant further asserts that the NATIXIS Mark is well-known in France and in several other countries. Complainant has more than 17,000 employees in 38 countries, Natixis is the corporate, investment and financial services arm of PBCE Group, France’s second largest banking player.

Complainant notes that it 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). Natixis is also leader in equity research in France in 2017 (source: Dinansol: Zoom sur la finance solidaire”, 2015 edition based on solidarity-based assets at end -December 2914). The French association of Financial Management (AFG) also awarded Natixis as number one account keeper for employee savings, in 2015 and according to Thomson Reuter Global Project Finance Review, Natixis was number one bookrunner for project finance. Therefore, Natixis enjoys a wide reputation not only in France but also around the world. Given Complainant’s notoriety, it is almost certain that Respondent was aware of Complainant’s NATIXIS Mark and Complainant’s other activities when it registered the Disputed Domain Name.

Complainant argues that the Disputed Domain Name pointed to a website that looks like a bank website. However, when looking carefully at the website, it seems that it is not a genuine website. Furthermore, the website reproduces the NATIXIS Mark with its logo and its slogan “BEYOND BANKING”. The consumer therefore is led to believe that this is the official website of Complainant. This type of fraudulent use strongly indicates that Respondent has deliberately chosen the NATIXIS Mark as the distinctive part of the Disputed Domain Name to misled the consumer and, in all likelihood, for diverting Complainant’s consumers. Respondent takes advantage of the well-known NATIXIS Mark to mislead consumers and to collect personal banking data or to obtain fraudulent payments.

Complainant explains that the website was not long active and Complainant sent a takedown notice to its hosting provider. Currently, <natixtrade.com> points to an inactive webpage. In addition, a finding of bad faith can be made inter alia where Respondent “knew or should have known” of Complainant’s trademark rights, and nevertheless chose the Disputed Domain Name incorporating the principal element of the NATIXIS Mark in which he had no rights or legitimate interests.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See Section 4.3 of the WIPO Overview 3.0.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the NATRXIS Mark which Complainant has rights; and,

ii) that Respondent has no legitimate interests in respect of the Disputed Domain Name; and,

iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that Respondent’s Disputed Domain Name is confusingly similar to the NATIXIS Mark and has violated paragraph 4(a)(I) of the Policy.

Complainant contends that it has numerous registrations of the NATIXIS Mark. Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the NATIXIS Mark. Respondent has not contested these contentions.

Therefore, the Panel finds that Complainant has enforceable rights in the NATIXIS Mark for purposes of the proceeding.

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the NATIXIS Mark pursuant to the Policy paragraph 4(a)(i).

Complainant has shown above that usurping the primary element “natix” is equivalent to use of the entire NATIXIS Mark. Incorporating the entire primary element or the entire NATIXIS Mark into the Disputed Domain Name creates confusing similarity. See Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar.

The addition of a word like “trade” does not prevent the confusing similarity between the Disputed Doman Name and the NATIXIS Mark. Section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Also see Section 1.11.1 of the WIPO Overview 3.0 which instructs that generic Top-Level Domains such as (“.com”) may be disregarded for purposes of assessing confusing similarity.

Therefore, the Panel finds that Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant paragraph 4(a)(ii) of the Policy.

Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, Respondent has the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Complainant alleges that Respondent is not the owner of any rights in a trademark using the “natix” or “natixis” names. Complainant further alleges that Respondent has not been known by the names “natix” or”natixis”. Complainant alleges that the Disputed Domain Name pointed to a website that looks like a bank website. Respondent lists to be a web designer in the Whois records, but the website is not used for designer services. Instead, it points to a fake website taking over the NATIXIS Mark.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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 NATIXIS Mark.

Complainant has made a prima facie showing and Respondent has not contested Complainant’s allegations.

Therefore, the Panel finds that Complainant has satisfied the elements of paragraph 4(a(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have 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 NATIXIS Mark to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent Complainant from reflecting the NATIXIS Mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have 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 NATIXIS Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

Complainant argues that the Disputed Domain Name pointed to a website that looks like a bank website. However, when looking carefully at the website, it seems that it is not a genuine website. Furthermore, the website reproduces the NATIXIS Mark with its logo and its slogan “BEYOND BANKING”. The consumer therefore is led to believe to that this is the official website of Complainant. This type of fraudulent use strongly indicates that Respondent has deliberately chosen the NATIXIS Mark as the distinctive part of the Disputed Domain Name to mislead the consumer and, in all likelihood, for diverting Complainant’s consumers. Respondent takes advantage of the well-known NATIXIS Mark to mislead consumers and to collect personal banking data or to obtain fraudulent payments for its own commercial gain.

Respondent has not contested these allegations.

Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the NATIXIS Mark and used it to attract Internet users to its own website for commercial gain. Therefore, Complainant has established the elements of paragraph 4(b)(iv) and paragraph 4(a)(iii) of the Policy.

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 <natixtrade.com> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: April 15, 2021