WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION AXA S.A. v. P.A. van der Wees Case No. D2009-0206 1. The Parties
The Complainant is AXA S.A. of Paris, France, represented by Marchais de Candé Selarl of France.
The Respondent is P.A. van der Wees of Veenendaal, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2009. On February 18, 2009, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On February 18, 2009, Tucows Inc. transmitted by email to the Center its verification of 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”), 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 February 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 17, 2009.
The Center appointed Stefan Abel as the sole panelist in this matter on March 26, 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
The Complainant is a French company providing insurances, financial and real estate services. The Complainant promotes its services on websites at different domain names, e.g. , and . The Complainant has registered the domain name in October 1995, the domain name in May 1996 and the domain name in March 2006.
The Complainant is the registered owner of a number of trademarks in different countries consisting of the word AXA, such as, among others, the International trademark No. 490030 AXA, filed for registration on December 5, 1984, designated for various countries in Europe, Africa and Asia, Community trademark No. 373894 AXA filed for registration on August 28, 1996 for insurance and financial services, US trademark No. 1679597 filed for registration on March 17, 1992.
The domain name was registered in July 2001. At present, the domain name does not resolve to an active website but the website is marked as being “reserved” and there is no indication that it has ever been used otherwise. 5. Parties' Contentions A. Complainant
In summary, the Complainant's contentions are as follows:
The Complainant is a large company acting in the field of insurances, financial services and real estate and has a multitude of subsidiaries around the world. Its trade name and trademarks are widely used in the whole world and the Complainant and its subsidiaries enjoy a worldwide reputation.
The disputed domain name is identical with the Complainant's trade name and trademarks AXA.
The Respondent has no rights and legitimate interests in respect of the domain name since the Complainant's use and registration of its AXA trademarks predate registration of the disputed domain name by several years. The Respondent does not have any connection or association with the Complainant and the Respondent's name does not resemble to AXA.
The Respondent has registered the disputed domain name in bad faith to intentionally attract Internet users to its website in order to take benefit of the Complainant's notoriety. As the domain name does not conduct to an active website but only reserves it, the domain name is presently being used in bad faith by the Respondent.
The Complainant requested the disputed domain name be transferred for the Respondent to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy provides for transfer of the domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) (i) to (iii) of the Policy.
- The Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out these circumstances which, in particular but without limitation, shall be evidence of registration and use of the domain name in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it is the registered owner of various AXA trademark registrations. This Panel finds that the domain name is identical to the Complainant's AXA trademarks. It is well established under the Policy that the “info” gTLD extension can be ignored for the purposes of comparison under paragraph 4(a)(i) of the Policy (see Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493) .
The Complainant has therefore established the first element of the test in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its trademarks or to register the disputed domain name.
The disputed domain name does not have any apparent generic or descriptive meaning in Dutch (the language of the Respondent's country and the language of the website presently indicating that it is being reserved).
The term “Axa” is not used as a designation for a person, company, services or products on the website of the disputed domain name.
By producing evidence on these circumstances, the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the domain name. The burden of submitting evidence therefore shifts to the Respondent. The Respondent must then by concrete evidence demonstrate its rights or legitimate interests in that domain name in order to refute the prima facie case. The Respondent has made no such showing.
The Panel finds that the Respondent's default in refuting the prima facie case made by the Complainant is sufficient to establish this element of the Policy. It is an often impossible task for the Complainant to prove a negative that is primarily within the knowledge of the Respondent such as lack of rights or legitimate interests in the domain name. Producing evidence that the Respondent prima facie has no rights or legitimate interests in the domain name must therefore be regarded as sufficient to establish the requirement of paragraph 4(a)(ii) if the Respondent fails to rebut the prima facie case. This finding is consistent with the consensus in previous WIPO decisions (see e.g. Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). C. Registered and Used in Bad Faith
The Complainant has established this element in accordance with paragraph 4(a)(iii), 4(b) of the Policy for the following reasons:
The Panel finds that the disputed domain name has been registered and is being used in bad faith.
(1) The Panel finds that the particular circumstances set forth in paragraph 4(b)(i)-(iv) that shall be evidence of the registration and use of a domain name in bad faith are not present in this case.
- The Complainant did not provide evidence that the Respondent has in any form offered the disputed domain name to the Complainant as required in paragraph 4(b)(i);
- Paragraph 4(b)(ii) does not apply as the Complainant did not provide any information about other domain names registered or used by the Respondent, so that the Panel can not conclude that the Respondent has engaged in a pattern of conduct. The Panel does not believe that the registration of one single domain name rises to the level of a pattern of conduct (see Home Interiors & Gifts, Inc. v. Home Interiors,WIPO Case No. D2000-0010);
- The Panel has not been provided with any information of the Respondent's business activities so that there is no evidence for the domain name being used for the purpose of disrupting the business “of a competitor” as stipulated in paragraph 4(b)(iii);
- There is no evidence for the Respondent attempting to attract Internet users for commercial gain, so paragraph 4(b)(iv) does not apply.
However, paragraph 4(b) of the Policy only provides examples for evidence of registration and use in bad faith. It clearly stipulates that the circumstances listed under 4(b) of the Policy shall be evidence “in particular but without the limitation”. Therefore, just because the Respondent's conduct does not fall within the particular circumstances set out in paragraph 4(b) it does not mean that the domain name at issue has not been registered and used in bad faith (see Home Interiors & Gifts, Inc. v. Home Interiors,WIPO Case No. D2000-0010). Even if none of the particular circumstances set out in paragraph 4(b) apply, it has to be taken into consideration that these circumstances listed are non-exhaustive (see, among others, Autoshop 2 Di Battaglia Ferrucio C. S.N.C. v. Willamette RF Inc., WIPO Case No. D2004-0250). The Panel therefore finds that the totality of circumstances can amount to a registration and use in bad faith, even if the examples listed in paragraph 4(b) are not met.
(2) The Panel finds that the following circumstances in their totality amount to a registration in bad faith:
It is not conceivable to the Panel that the Respondent could have registered the disputed domain name without having the Complainant's widely known AXA trademark in mind. The Respondent's awareness that the disputed domain name will be considered as a reference to the Complainant and its trademarks is obvious considering that no rights or legitimate interests in using the domain name are apparent and considering that the Complainant registered its trademarks years before the registration of the disputed domain name. The Complainant also registered its corresponding domain names years before the registration of the disputed domain name and had been using for years intensively the term “AXA” as designation for its services.
In view of the identity of the disputed domain name and the Complainant's intensively used trademark, the Respondent must have also been aware that Internet users would be lead to believe that the website would be owned, controlled, established or somehow associated with the Complainant so that confusion as to the source, affiliation or endorsement of the website would occur. Further, the Panel finds that the Respondent, when registering the domain name, was aware that the registration of the disputed domain name would prevent the Complainant from reflecting the mark under the “.info” domain.
(3) The Panel also finds that the domain name is being used in bad faith.
The website corresponding to the disputed domain name presently does not contain any content but only marks the domain name as “reserved”. The passive holding of a domain name as such cannot be considered as a use in bad faith in every case (Autoshop 2 Di Battaglia Ferrucio C. S.N.C. v. Willamette RF Inc., WIPO Case No. D2004-0250). However, inactivity may be construed as positive action and amounts to use in bad faith if further relevant circumstances are present (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Grupo Financiero Inbursa S.A de C.V. v. Alejandro Delgado-Ayala,WIPO Case No. D2001-0172; Ladbroke Group Plc v. Sonomona International LDC, WIPO Case No. D2002-0131). In the present case the following circumstances are evidence for the passive use amounting to a use in bad faith:
(i) The disputed domain name has not been actively used for almost eight years after the domain name registration in July 2001 (see Inbursa,WIPO Case No. D2001-0172);
(ii) In view of the identity of the disputed domain name with the Complainant's trademark, Internet users are likely to be lead to believe that the website would be owned, controlled, established by or somehow be associated with the Complainant (see Ladbroke,WIPO Case No. D2002-0131). The permanence of the domain name registration and the existence of a website without any relevant content may then lead Internet users to further believe that the Complainant is not able to maintain an active website (see Inbursa,WIPO Case No. D2001-0172). Further, the passive holding of the domain name prevents the Complainant from reflecting its identical mark under the “.info.” top level domain.
(iii) In the absence of any circumstances indicating that the Respondent has legitimate interests in using the domain name and considering that the Respondent must presently be aware of the Complainant's intensively used and widely known trademark, the Panel finds that the Respondent is holding the domain name in bad faith.
For these above listed circumstances the Panel concludes that the passive holding of the domain name which is subject to this proceeding, amounts to a use of the disputed domain name in bad faith by the Respondent.
In view of this Panel, the Complainant has therefore given sufficient evidence to satisfy the third element in paragraph 4 (a) of the Policy. 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.
Stefan Abel
Sole Panelist
Dated: April 6, 2008
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