Westmore · UDRP DecisionNatixis-bpce.com
The Panel ordered transfer of <natixis-bpce.com> to NATIXIS. It found the domain confusingly similar because it incorporated the Complainant's well-known NATIXIS mark together with the BPCE mark, which was held by another company in the same corporate group. The Respondent did not rebut the Complainant's prima facie showing of no rights or legitimate interests. Bad faith was found from the Respondent's presumed awareness of the marks, the combination of two marks associated with the BPCE Group, the absence of any demonstrated good-faith use, and passive holding in circumstances where the Panel could not conceive of a plausible legitimate use.
The timeline behind natixis-bpce.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The decision illustrates passive-holding bad faith where a domain combines two distinctive marks belonging to companies in the same corporate group. The combination supplied additional evidence of deliberate targeting beyond the incorporation of the Complainant's mark alone. It also shows that a panel may scrutinize the requested transfer remedy when a domain includes an additional mark owned by another group company.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION NATIXIS v. Patrick Rocher Case No. D2017-2496 1. The Parties The Complainant is NATIXIS of Paris, France, represented by Inlex IP Expertise, France. The Respondent is Patrick Rocher of Strasbourg, France. 2. The Domain name and Registrar The disputed domain name <natixis-bpce.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2017. On December 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 the Respondent of the Complaint, and the proceedings commenced on December 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2018. The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on January 23, 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. On February 15, 2018, the Panel issued the Administrative Panel Procedural Order No. 1 to the Parties, requesting the Complainant the submission of evidence showing that the owner of the trademark BPCE has consented to the transfer remedy requested by Complainant. The Complainant filed its submission with the Center on the same day, whereas the Respondent did not react to this Administrative Panel Procedural Order No. 1. 4. Factual Background The Complainant is the French corporate and financial services company NATIXIS. It is one of France’s largest banking institutions. It has more than 15,000 employees in 38 countries. It has won various awards for its services and enjoys a wide reputation in France and abroad. The Complainant holds several French, European Union and International rights to the name NATIXIS, notably the following trademarks: - French trademark registration NATIXIS, No. 3416315, registered on March 14, 2006, protected in classes 9, 16, 35, 36 and 38; - European Union trademark registration NATIXIS, No. 5129176, registered on June 21, 2007, protected in classes 9, 16, 35, 36 and 38; - International trademark registration , 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. The Complainant contends that it was incorporated under the company name NATIXIS on July 30, 1954, and that it owns and maintains the following domain names which resolve to its official website: - <natixis.com>, registered on February 3, 2005; - <natixis.fr>, registered on October 20, 2006. The Complainant belongs to the BPCE Group, together with the company BPCE SA, holding the latter several French, European Union and international rights to the name BPCE, notably the following trademarks: - French trademark registration , No. 3658703, registered on June 19, 2009; - European Union trademark registration , No. 8375875, registered on June 19, 2009; - International trademark registration , No.1033662, registered on December 15, 2009. The disputed domain name was registered on March 26, 2017. The disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its NATIXIS trademarks. The disputed domain name is composed of the trademarks NATIXIS and BPCE. The trademark BPCE belongs to BPCE SA, being both the Complainant and BPCE SA part of the BPCE Group. The disputed domain name entirely reproduces the NATIXIS trademark of the Complainant and is associated with the other BPCE trademark. Consequently, there is a likelihood of confusion between the disputed domain name and the Complainant’s prior trademarks rights. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no trademark rights on “natixis”. The Respondent is not commonly known by the disputed domain name, nor does it have a business or legal relationship with the Complainant, nor does the Respondent have any authorization from the Complainant to register the domain name or a domain name corresponding to the NATIXIS trademarks. In addition, the disputed domain name is not used. The Complainant relies on a prior case about the domain name <natixiis.com>. The panel in said case decided that the absence of authorization to use the well-known trademark NATIXIS, the fact that the respondent was not commonly known by the domain name, that the respondent’s name did not include the word “natixiis”, and that the domain name was not used constituted a prima facie case of the respondent having no rights or legitimate interests in the domain names ( Natixis v. Sylvia Postler , WIPO Case No. D2015-0960 ). Finally, the Complainant contends that 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 well-known NATIXIS trademarks. A simple Google search on the word “natixis” leads to 5 million results. Considering the reputation of the well-known NATIXIS trademarks, it is unlikely that the Respondent was unaware of its activities and of its trademark rights on NATIXIS, at the time of the registration. This registration cannot be a coincidence. The disputed domain name is not active and there is no offer of goods or services on any website associated with the disputed domain name. As already decided in many prior UDRP cases concerning well-known trademarks, the passive holding clearly shows the Respondent’s bad faith. The Complainant therefore relies on the decision Jupiters Limited v. Aaron Hall , WIPO Case No. D2000−0574, in which the panel found that the reservation of domain names including well-known trademarks demonstrates the respondent’s bad faith. In reply to the Administrative Panel Procedural Order No. 1, the Complainant provided the decisions of two previous UDRP cases, Natixis v. Domain Admin, Privacy Protect, LLC / Marc Hugon , WIPO Case No. D2017-1971 ; and Natixis v. Mistoul Juliette , WIPO Case No. D2017-2058 . In said cases, the UDRP panels ordered the transfer to NATIXIS of domain names consisting of the NATIXIS trademark and another trademark held by the BPCE group. 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 registered well-known NATIXIS trademark rights. The Panel is aware of the existence of the BPCE trademarks. The disputed domain name is composed of the Complainant’s NATIXIS trademark, followed by a dash and by the BPCE trademark. Indeed, these terms are both highly distinctive and the BPCE trademark is registered in the name of BPCE SA, which also belongs to the BPCE Group. 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 Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to 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, he did not provide any evidence or allege any circumstance to establish that he has rights or legitimate interests in the disputed domain name. The Respondent has not been licensed or authorized to use the NATIXIS trademarks or to register the disputed domain name. The Respondent did not make a fair or noncommercial use of the disputed domain name. The disputed 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 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.” Given the well-known character of the NATIXIS trademarks and the fact that the Respondent is domiciled in France, the Panel finds that the Respondent could not ignore the Complainant’s rights in the NATIXIS trademarks when he registered the disputed domain name. The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name. The Panel finds that the disputed domain name was registered in bad faith with the Complainant in mind, to disrupt the Complainant’s activities. In this regard, the Panel finds that the addition to the disputed domain name of the BPCE trademarks, held by a company which belongs to the same group as Complainant, evidences the Respondent’s bad faith. With reference to the use of the disputed domain name, the Panel finds that the passive holding of the disputed domain name, incorporating the well-known NATIXIS trademark and 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 financial activity is regulated in order to protect customers. Any registered domain name enables the registrant to create e-mail addresses. In the present case, the disputed domain name might be used for creating e-mail addresses and notably for spamming or phishing purposes, to obtain banking and personal data from the Complainant’s customers and to misuse these data. Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law. For all the above reasons, the Panel is of the opinion that the Respondent’s passive holding of 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, <natixis-bpce.com>, be transferred to the Complainant. Marie-Emmanuelle Haas Sole Panelist Date: March 5, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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