WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION AXA SA, Avanssur - Direct Assurance v. Fundación Partners Case No. D2009-0175 1. The Parties
Complainant is AXA SA, Avanssur - Direct Assurance of Nanterre, France, represented by SELARL Marchais De Candé, France.
Respondent is Fundación Partners of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with DSTR Acquisition VII, LLC d/b/a D (“D”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2009. On February 9, 2009, the Center transmitted by email to D a request for registrar verification in connection with the disputed domain name. On February 9, 2009, D 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2009. The Response was filed with the Center on February 10, 2009.
The Center appointed Michael A. Albert as the sole panelist in this matter on March 17, 2009. 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 the owner of, inter alia, French trademark DIRECT ASSURANCE & logo No. 96,635,403 filed on July 22, 1996, and the international trademark DIRECTE ASSURANCE No. 531,298, registered on November 17, 1988.
Complainant is also the registrant of the domain names registered on November 27, 1997, registered on October 1, 1996, registered on November 3, 1997.
On February 5, 1999, Respondent registered the disputed domain name . The disputed domain name resolves to a page displaying links to websites offering information and services relating to various forms of insurance. 5. Parties' Contentions A. Complainant
Complainant contends that it widely uses the mark DIRECT ASSURANCE in commerce, including for insurance services. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and used the disputed domain name in bad faith. B. Respondent
Respondent argues that the disputed domain name is not confusingly similar to Complainant's DIRECT ASSURANCE mark because the mark as registered requires a telephone logo and the words “direct” and “assurance” are common English words used descriptively.
Respondent contests Complainant's contention that it acted in bad faith. Respondent states that it has not contracted with any advertisement agency nor received any revenue from its ownership of the domain name. Respondent also calls to the Panel's attention the fact that Complainant did not challenge Respondent's registration of the disputed domain name for over ten years. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “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”.
Paragraph 4(a) of the Policy requires that complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Aside from a single letter, the disputed domain name contains the DIRECTE ASSURANCE mark in its entirety. The single letter does not significantly distinguish the disputed domain name from Complainant's mark. See Playboy Enterprises International Inc. v. SAND WebNames - For Sale,WIPO Case No. D2001-0094 (April 3, 2001) (“This is a typical case of ‘typo-squatting' where the infringing name is one letter less than or different from the Complainant's mark. These attempts have been disapproved of by various WIPO Panelists.”). “Direct” is also phonetically similar to “directe”. See eBay Inc. v. SGR Enterprises and Joyce Ayers,WIPO Case No. D2001-0259 (April, 11 2001) (finding that a phonetic similarity may give rise to confusing similarity). For the foregoing reasons, the Panel finds that the disputed domain name is confusingly similar to Complainant's DIRECTE ASSURANCE mark. This Panel needs not and does not reach the question of whether the disputed domain name is also confusingly similar to Complainant's DIRECT ASSURANCE & logo mark. B. Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts, unrebutted, that it has never authorized Respondent to use the mark, nor to register or use the disputed domain name. Complainant also asserts, again unrebutted, that it has no business relationship with Respondent.
It does not appear that Respondent has ever been commonly known by the disputed domain name, nor that Respondent is making a legitimate noncommercial or fair use of the domain name. The Panel finds therefore that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The disputed domain name was registered after Complainant had registered the DIRECTE ASSURANCE mark, and after Complainant had registered the , and domain names.
Respondent denies that it has engaged in any activity whatsoever beyond registering the disputed domain name, and that the registrar made the choice to display sponsored links to Complainant and Complainant's competitors on the website. Given that Respondent has stated that “[t]he domain name [was] registered for the purpose of attracting Internet users to the Respondent's web site”, the Panel does not credit Respondent's claim that it is not involved with the current use of the disputed domain name.
Even if Respondent were not affirmatively involved with the website, a number of panels have held that inaction by a respondent with regard to a domain name can constitute bad faith use when the respondent has registered the domain name in bad faith and the totality of the circumstances leads to the conclusion that a “[r]espondent's passive holding amounts to bad faith”. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (February 18, 2000), (stating that “paragraph 4(b) recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith…. [I]n considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent's behaviour.”). See also Autoshop 2 Di Battaglia Ferruccio C. S.N.C v. Willamette RF Inc.,WIPO Case No. D2004-0250 (June 2, 2004) (collecting cases citing to Telstra).
Respondent registered and parked the disputed domain name, making no legitimate use of the name for over ten years. The only use of the domain name has been to display a website containing advertising and an offer to lease the domain name. Taking into consideration the foregoing and Complainant's international trademark registration and registration of domain names similar to , Respondent was most likely aware of Complainant's mark at the time it registered the disputed domain name. The domain name was therefore registered with an intent to divert Internet users from Complainant's websites and use Complainant's trademark for financial gain. Complainant in this case has shown bad faith registration and use by Respondent. 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 Complainant.
Michael A. Albert
Sole Panelist
Dated: March 31, 2009
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