WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION AXA SA v. H Global Commerce, Inc. Case No. D2009-0274 1. The Parties
The Complainant is AXA SA of Paris, France represented by Selarl Marchais De Candé, Paris, France.
The Respondent is H Global Commerce, Inc. of The Valley, Anguilla, British West Indies, represented by Bruce H. Chapman, Vancouver, British Columbia, Canada. 2. The Domain Name and Registrar
The disputed domain name (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 March 2, 2009. On March 2, 2009, the Center transmitted by e-mail to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On March 2, 2009, Tucows Inc. transmitted by e-mail 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 the Respondent of the Complaint, and the proceedings commenced on March 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2009. The Response was filed with the Center on March 26, 2009.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 8, 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 states that it is “the holding company of the AXA Group, whose main business is in the field of insurances and financial services.” Further, Complainant states that the AXA Group has been traded on the Paris Stock Exchange since 1988 and the New York Stock Exchange since 1996. Complainant also states that the AXA Group “is famous for its numerous activities in services like banking/mortgage, finance, insurance or real estate, proposed both to individuals and to business companies” and that the AXA Group “has numerous subsidiaries in many countries around the world such as in Europe, in America and in Asia, and the Complainant enjoys nowadays a worldwide reputation.” Complainant states that it is the owner of numerous trademark registrations worldwide for the mark “AXA”, including, among others, the following for which it provides copies of certificates of registration: International Reg. No. 490,030, filed on December 5, 1984; Community Trademark No. 373,894, filed on August 28, 1996; and United States Reg. No. 1,679,597, registered on March 17, 1992 (the “AXA Trademark”).
Respondent states that it “was founded in 1978 and was originally engaged in computer systems development and software design.” Further, Respondent states that it became a publicly traded company in 1985 and is traded on the Toronto Stock Exchange. Respondent also states that it, “together with other members of the Span-Hansa Group, provides a suite of services, including corporate formation, registered office location and agency, operations management, directorships, administration, accounting, corporate secretarial, computing and communication services, principally to companies involved in Internet commerce, which enable those companies to be resident in and operate from Anguilla in a ‘location-optimized' tax-efficient manner.”
The Disputed Domain Name was created on November 2, 1997. 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is identical to the AXA Trademark because the only difference between the Disputed Domain Name and the AXA Trademark is the addition of the top-level domain “.net”, which does not change the overall impression engendered.”
- Respondent does not have any rights or legitimate interests in the Disputed Domain Name because “neither the Registrant company name ‘the Span-Hansa Group' nor the Respondent's products and services do not have any obvious resemblance with the term AXA”; and “Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks”.
- Respondent registered and is using the Disputed Domain Names in bad faith because “[i]t is crystal clear that the Respondent has registered its domain name in order to abusively take benefit from the Complainant's notoriety” given that “at the time of registration of the contested domain name, the AXA Group was the number two insurer worldwide with more than 100 000 employees in more than 50 countries, revenues exceeding 300 billion Francs (more than 45 billion Euros) and 3000 billion Francs (more than 450 billion Euros) in assets under management”; “Respondent must have undoubtedly been aware of the risk of deception and confusion that would inevitably follow when registering the disputed domain name since it could give the impression that his website, and thus even the Respondent himself, are somehow endorsed by the Complainant, when in fact they are not”; the Disputed Domain Name is being used in connection with a website for The Span-Hansa Group, which also uses the domain name ; “the Hansa Group offers services that are closely linked to the Complainant's main domains of activity, namely finance and banking”; and “[b]y using the domain name to offer services provided by the Hansa Group, the Respondent is clearly taking unfair advantage of the respectable reputation and global renown of the AXA trademark in order to promote its own services, which are identical to the complainant ones [sic].” B. Respondent
Respondent contends, in relevant part, as follows:
- “Complainant had only used the said trademarks and domain names, if at all, to a very limited extent in connection with class 36 of the international classification, financial services”; the term “AXA” is “widely used throughout the world as the unique three-letter location identifier assigned by the International Air Transport Association (IATA) to Wallblake Airport, the international airport of Anguilla…, a country with a well established reputation throughout the world for the provision of off-shore business and financial services, and says that such knowledge and use has continued at all times since adoption by the Complainant of the term AXA as a mark, and has in fact increased”; and there is not “sufficient likelihood of confusion between the disputed domain name and the mark AXA to warrant granting to the Complainant the relief sought” given that “Respondent has been the registrant of and has continuously used the disputed domain name for over eleven years, during which period either the number of instances of actual confusion that came to the attention of the Complainant… was not sufficient to warrant its taking remedial action or a sufficient number of instances of actual confusion did come to its attention during that period, but it elected not to take any remedial action.”
- “The Respondent denies that its products and services do not have any obvious connection with the term AXA and says to the contrary that its intended audience, being clients and customers for Anguilla-based and/or Anguilla-advantaged services, and those seeking information about such services, already associates the term AXA with Anguilla or is likely to do so”; and “Respondent denies that it requires any permission from the Complainant to use the term AXA in connection with its provision of financial services”.
- “Respondent admits that it registered the disputed domain name for the purpose of attracting certain Internet users to its web site, but denies, for the reasons set out above, that the name AXA reproduced therein is distinctive and denies, for the reasons set out above, that it did so by creating a likelihood of confusion between the AXA trademarks specified in the Complaint”; “Respondent denies that it registered the disputed domain name in order to abusively take benefit from the Complainant's notoriety and says that the Complainant's allegation that it is crystal clear that it did so is entirely conclusory, baseless and unsubstantiated”; “Respondent denies that it was aware of a risk that deception and confusion would follow when it registered the disputed domain name”; “Respondent denies that it and/or its Span-Hansa Group affiliates offer services that are closely linked to the Complainant's specified domains of activity and says to the contrary that, if and to the extent that the Complainant is engaged in the activities of finance and banking, it is not engaged in providing services in the nature of those provided by the Respondent and its affiliates”; and “no reasonable person attracted to the web site at the disputed domain name could conclude that the Complainant was the source of or in any way sponsored, was affiliated with or endorsed the web site or any service offered thereon.” 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a complainant to prove that the Disputed Domain Name is “identical or confusingly similar to a trademark or service mark in which [it] has rights.”
Based on the information provided by Complainant, including printouts of relevant trademark registrations, the Panel is convinced that Complainant has rights in the AXA Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the AXA Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “axa”), as it is well-established that the top-level domain name (i.e., “.net”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA95491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).
Given that the second-level domain of the Disputed Domain Name, “axa”, is identical to the AXA Trademark, “it is obvious without the need for elaboration that Complainant has proven the first element of the Policy.” Regan Campbell Ward-McCann v. Site Services International,WIPO Case No. D2008-0386. See also Mozilla Foundation, Mozilla Corporation v. Metro Media,WIPO Case No. DME2008-0006.
Respondent's statements as to when and how Complainant has used the AXA Trademark is irrelevant to the first element of the Policy. See, e.g., “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 1.4 (“Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights.”) See also Deutsche Telekom AG v. Oded Zucker,WIPO Case No. D2004-0749 (“in the context of the Policy, it is appropriate to assess whether the Domain Names are confusingly similar to the Complainant's mark on the basis of a comparison between the names and mark, without considering whether the Domain Names are or could be used in a way which avoids or might avoid confusion”).
Accordingly, in light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights, and the Panel is satisfied that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1. Here, it is sufficient in the Panel's judgment to constitute a prima facie showing under paragraph 4(a)(ii), based upon the arguments cited above and the supporting evidence in the Complaint. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
Pursuant to the Policy, paragraph 4(c), the Respondent can demonstrate it has rights or legitimate interests in the Disputed Domain by proving to the Panel's satisfaction based upon it's “evaluation of all evidence presented,” any of the following:
(i) before any notice to you of the dispute, your 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) 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.
Respondent does not specify which, if any, of the above factors applies in this case. Furthermore, Respondent's references to Complainant's delay in filing its Complaint is “interesting but irrelevant” given that “the Policy does not provide any defense of laches.” Segway LLC v. Chris Hoffman,WIPO Case No. D2005-0023.
In any event, Respondent's statements regarding its intentions and the association of the “axa” term with Anguilla are unsupported in the Response by any evidence. Accordingly, the Panel has no evidence – other than self-serving factual conclusion made and signed by Respondent's counsel – on which to evaluate the merits of these statements. In light of this, the Panel cannot conclude that Respondent has carried the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
In this case, Complainant does not allege with specificity which, if any, of the four factors set forth above exists in this case, nor does Complainant cite any precedent under the Policy that Respondent's actions constitute bad faith. Nevertheless, this Panel agrees with previous panels that have decided disputes involving the AXA Trademark that, in light of the widespread recognition of the AXA Trademark, “it is not plausible that Respondent registered the domain name at issue without knowledge of” the AXA Trademark. AXA SA v. Telecom Tech Corp.,WIPO Case No. D2008-0764. Furthermore, as shown in the Complaint, Respondent's website using the Disputed Domain Name contains references to services that are competitive with the services offered by Complainant, including such text as “International Business & Tax Structures”, “Venture Capital & Investment Banking” and “Project Finance”. Such activity falls within the scope of paragraph 4(b)(iv) of the Policy. In the absence of any supporting evidence from Respondent, the Panel finds that “[t]he only conceivable purpose for the Respondent to have registered the disputed domain name was to benefit from the reputation of the Complainant's mark, by misdirecting Internet traffic to the Respondent's… website.” AXA SA v. Whois Privacy Protection Service, Inc., Demand Domains, Inc.,WIPO Case No. D2007-1382.
Therefore, the Panel is convinced that Complainant has proven the third element 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.
Douglas M. Isenberg
Sole Panelist
Dated: April 22, 2009
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