WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FINAXA Société Anonyme v. Borja Lopez
Case No. D2004-0172
1. The Parties
The Complainant is FINAXA Société Anonyme of Paris, France, represented by Selarl Marchais De Candé of Paris, France.
The Respondent is Borja Lopez of Madrid, Spain.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 8, 2004, by e-mail, hard copy of which was received on March 16, 2004. On the same date, a Request for Registrar Verification was transmitted to the Registrar, which failed to submit a Verification Response. Therefore, the Center made a WHOIS printout on March 17, 2004, which showed that the disputed domain name was registered with eNom Inc., and that Respondent, Borja Lopez, was the current registrant of the disputed domain name, as well as the administrative, technical and billing contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2004. The file shows that delivery of these documents, both by electronic mail and courier, was unsuccessful. The Complainant stated in its Complaint that a copy thereof had been sent by registered letter to the Respondent on March 3, 2004, (Complaint, para. 17, p. 23).
The Panel is satisfied that the Center has complied with its obligations under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" (see e.g. Charles Schwab & Co, Inc. v Polanski, WIPO Case No. D2001-0959).
The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 19, 2004.
The Center appointed the undersigned as the sole panelist in this matter on April 30, 2004. 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, and rendered its decision within the time-limit granted.
4. Factual Background
The Complainant has numerous registered trademarks all over the world containing the word AXA, (Annex 5 to the Complaint) as follows :
- The French trademark AXA N°1 270 658 registered on January 10, 1984, and duly renewed in classes 35, 36 and 42, inter alia , for "insurance";
- The French trademark AXA N°1 282 650 registered on August 7, 1984, and duly renewed, in classes 12, 14, 16, 18, 25, 28, 34, 35, 36 and 39, inter alia, namely for "business services for assisting the management of industrial and commercial enterprises, business advisory and consultancy services, business information services, insurance";
- The French trademark AXA ASSURANCE N° 1 282 654 registered on August 7, 1984, and duly renewed, in classes 12, 14, 16, 18, 25, 28, 34, 35, 36, 39;
- The Colombian trademark AXA N° 164 730 registered on January 21, 1994, in class 36 for "insurances and financial services";
- The Brazilian trademark AXA N° 823 542 734 registered on January 31, 2001, in class 38 for "telecommunications";
- The Chilean trademarks AXA N°262 822 registered on December 29, 1993, in class 36 for "insurance";
- The international trademark AXA N°490 030 registered on December 5, 1984, in classes 35, 36 and 39, inter alia, namely for "advertising agency services, financial and insurance services," designating Algeria, Austria, Bosnia-Herzegovina, Croatia, Egypt, Spain, Hungary, Italy, Morocco, Monaco, Portugal, North Korea, Rumania, Russia, Saint Martin, Slovakia, Slovenia, Sudan, Ukraine, Viet-Nam, Yugoslavia, Benelux, Switzerland, Liechtenstein;
- The international trademark AXA ASSURANCE N° 552 023 registered on March 20, 1990, in classes 35 and 36;
- The English trademark AXA INSURANCE N° 1 456 415 registered on February 22, 1991, in classes 16 and 36;
- The Australian trademarks AXA N°602 874 and N°704 070 registered on May 24, 1993, and duly renewed in classes 35, 36 and 38, namely, inter alia, for "advertising services, business services for assisting the management of industrial and commercial enterprises, business advisory and consultancy services, business information services, financial services, namely administration of financial affairs; communication services achieved by way of the Internet, broadcast of otherwise including access codes";
- The Chinese trademark AXA N°774 571 registered on December 28, 1994, in class 36 for "insurance services, financial services";
- The Danish trademark AXA N°VR 01 065 1986, registered on May 2, 1986, in class 36 inter alia for "insurance";
- The USA trademark AXA N°1 679 597 registered on March 17, 1992, in classes 35 and 36 namely for "advertising agency services; namely, the preparation and placement of newspaper, magazine, radio, movie and television advertisements; and business management assistance and consulting services rendered to firms and companies; financial analysis and consulting services";
- The Greek trademark AXA N°115 730 registered on May 17, 1996, in class 36, for "insurance";
- The Hong-Kong trademark AXA N°3473/95 registered on May 28, 1993, in class 36, for "insurance services; administration of financial affairs; financial management and planning services";
- The Indonesian trademark AXA N°319 483 registered on December 19, 1994, in class 36 for "insurance services; financial services";
- The Israeli trademark AXA N°82074 registered on February 21, 1995, and duly renewed in class 36, for "insurance";
- The Norwegian trademark AXA N°127039 registered on November 20, 1986, and duly renewed in classes 35, 36 and 39;
- The New Zealand trademark AXA N°227 175 registered on March 5, 1996, and duly renewed in class 36, for "insurance services, financial services";
- The Philippine trademark AXA N°61002 registered on June 22, 1995, in class 36, for "insurance";
- The English trademark AXA N°1 272 911 registered on October 1, 1986, and duly renewed in class 36, for "insurance services; financial banking services; debt collection services; real estate agency services; real estate property valuation services; real estate property management services";
- The Singaporean trademark AXA N°1445 91 registered on March 1, 1991, and duly renewed in class 36, for "actuarial services, credit agency services, capital investment consulting services, savings bank services, financial valuation of personal property and real estate, financial analysis and consulting services";
- The Thailand trademark AXA N°2231 registered on June 25, 1993, in class 36;
The Complainant is also the owner of numerous trademark registrations in Spain among some others (Annex 6 to the Complaint) :
- Spanish Trademark DIRECT SEGUROS with the logo N° 2 059 362 to 366 registered on November 22, 1996, in classes 36, 37, 38, 39, 42;
- Spanish Trademark HILO DIRECT SEGUROS N° 2 058 125 to 129 registered on November 15, 1996, in classes 36, 37, 38, 39, 42;
- International Trademark DIRECTE ASSURANCE N° 531 298 registered on November 17, 1988, and duly renewed in class 36 in Spain;
- International Trademark DIRECT with the logo N° 581 052 registered on January 24, 1992, in classes 36, 37, 38, 42 in Spain;
The Complainant has also registered numerous domain names containing the word AXA to present the companies of the Group and their services such as:
- for gTLDs (Annex 7 to the Complaint) :
, registered on October 24, 1995; , registered on November 7, 2001; , registered on October 31, 2001; , registered on April 16, 1999; , registered on February 25, 1999; , registered on November 23, 1999; , registered on March 11, 1998;
- and for the ccTLDs (Annexes 8 and 9 to the Complaint):
, registered on November 30, 1999; , registered on June 30, 1999; , registered on February 06, 2000; , registered on February 25, 1999; ; , registered on May 23, 2002; , registered on October 17, 2000; , registered on May 26, 1998; , registered on September 11, 2000; , registered on April 24, 2002; , registered on July 31, 1996; , registered on January 23, 1996; , registered on November 26, 1997; , registered on November 30, 1999; , registered on September 18, 1997; , registered on November 11, 1997; .
5. Parties' Contentions
A. Complainant
The Complainant submits the following :
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The domain name is confusingly similar to the trademarks AXA and DIRECT SEGUROS, as well as the domain names , , , and .
The litigious domain name reproduces entirely the term `axa' which is one of the AXA Group's trademarks, as well as the term `seguros' which means `insurance' in Spanish and is descriptive of the AXA Group's activities.
The term `seguros' is also reproduced in the trademarks registered in the Spanish-speaking countries like DIRECT SEGUROS. The two terms are also reproduced in some others trademarks as AXA-ASSURANCE or AXA-INSURANCE.
The term `axa'has no particular meaning and is distinctive. The term `seguros,' on the contrary, is descriptive of the AXA Group's activities. The overall impression produced by the domain name is dominated by the term `axa.'
As for the trademarks, the attractive term of the litigious domain name is `axa,' which is used in all the AXA Group's domain names.
The Respondent's domain name generates a likelihood of confusion for consumers by letting them think that the AXA Group agreed to the registration of this domain name and is linked to the AXA Group.
Consequently, it is obvious that this domain name is strictly identical or confusingly similar to the trademarks AXA and DIRECT SEGUROS and the different domain names owned and widely used by the Complainant all over the world, and especially in Spanish-speaking countries, as active domain names.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name.
The web site related to the domain name in dispute is specialized in the field of gay video films and is highly pornographic.
It is obvious that Borja Lopez does not have any legitimate interest in using the domain name since neither the term `borja' nor the term `lopez' have any similarities with the term `axa-seguros.'
Moreover, the Respondent has no legitimate interest in using the name `AXA' for his business. The term `axa' has no particular meaning and is absolutely not necessary to describe this kind of activity.
The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name incorporating the above-mentioned trademarks. The Respondent has clearly adopted the Complainant's trademark and domain name for his own use, and incorporated them into his domain name without the authorization of the Complainant.
(iii) The domain name was registered and is being used in bad faith.
The Respondent was undoubtedly aware at the time of the registration of the litigious domain name of the existence of the various trademarks and domain name registrations mentioned above.
The Respondent has obviously registered its domain name in order to abusively take benefit from the Complainant's notoriety. Indeed the AXA Group is one of the largest insurance companies and made large acquisitions during the past decade in America, Japan, Australia and Europe (namely, in Spain) and is nowadays well-known in the field of insurance and has acquired a good reputation for financial services (Annexes 2 and 3 to the Complaint).
It is obvious that by using the domain name the Respondent tries to use the reputation of the Complainant to generate more traffic to his web sites although its web site is not in the field of financial services nor in the field of insurance services.
The Respondent has absolutely no reason to use the Complainant's trade name "AXA" for his area of activities, unless he has the intention of taking unfair advantage of the reputation of the Complainant.
Moreover, this use of the litigious domain name is prejudicial to the Complainant because of the consumer's or the Internet user's disappointment at coming across this web site when looking for information about AXA Group.
Another proof of the Respondent's bad faith is clearly demonstrated by the address of the administrative contact on the WHOIS wherein there is no street indicated.
The Complainant concluded, after an examination of the contents of the web site that the litigious domain name is registered and being used in bad faith with the only purpose being to benefit from the reputation of the trademark of the Complainant and to discredit the AXA Group.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Concerning the proceedings, in particular the notification of the Complaint to the Respondent, the Panel considers, from reading the documents available in the file, that the Center has discharged its responsibility, pursuant to Paragraph 2(a) of the Rules, in forwarding the Complaint to the Respondent in the manner prescribed therein.
As regards the merits, it is to be recalled that Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.
In accordance with Paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the trade and service marks AXA and AXA ASSURANCE, AXA INSURANCE and DIRECT SEGUROS with various registrations for such name (see Complainant's Annexes mentioned above), especially in Spain where the Respondent is domiciled.
The Complainant referred in this matter to the case FINAXA Société Anonyme v. James Lee, WIPO Case No. D2002-1098, where it was decided that "the Domain Name reproduces entirely the term AXA, which has no particular meaning and is accordingly distinctive. The term "insurance", on the contrary, is purely descriptive and is not apt to influence significantly the overall impression produced by the Domain Name, which is dominated by the term "axa."
The Panel follows without any hesitation the reasoning followed in the case referred to above: the domain name is confusingly similar to the service marks AXA or AXA & design over which the Complainant has rights as already mentioned above and the term `seguros' which means `insurance' in Spanish cannot alter that conclusion, being itself subject to trademark protection as indicated by the Complainant.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, which, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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, in not responding to the Complaint, has failed to invoke any of the circumstances which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14(b) of the Rules already cited above.
Absent evidence to the contrary, the Complainant has not granted any license or otherwise permitted the Respondent to use such trade and service marks or to apply for any domain name incorporating the said trade and service marks. In addition, the Respondent has not been known under the disputed domain name personally or in relation to his field of commercial activities.
Under those circumstances, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at stake.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or use of the domain name in issue.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant's assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
As pointed out by the Complainant in a conclusive manner, the Respondent was undoubtedly aware at the time of the registration of the litigious domain name of the existence of various trademarks and domain name registrations mentioned above.
Likewise, the use of the disputed domain name to generate traffic for the Respondent's commercial adult site, as described by the Complainant and mentioned above, obviously amounts to bad faith within the meaning of Paragraph 4(b)(iv) of the Policy, if not already within the general meaning Paragraph 4(b) of the Policy when using an incomplete address for registration (see Société Softissimo v. Owner, WIPO Case N°D2001-1105 referred to by the Complainant).
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Christophe Imhoos
Sole Panelist
Dated: May 10, 2004
Full & Egal Universal Law Academy