WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION AXA SA v. Pontest International Corp. c/o Nicolas Dobry Case No. D2009-1009 1. The Parties
The Complainant is AXA SA of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is Pontest International Corp. c/o Nicolas Dobry of Panama. 2. The Domain Name and Registrar
The disputed domain names , are registered with R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2009. On July 28, 2009, the Center transmitted by email to R a request for registrar verification in connection with the disputed domain names. On July 30, 2009, R 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 the Respondent of the Complaint, and the proceedings commenced on August 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 26, 2009.
The Center appointed Haig Oghigian as the sole panelist in this matter on September 4, 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
As there is no submission from the Respondent, the facts are taken from the Complaint and generally are accepted as true.
The Complainant, AXA SA, is the holding company of AXA Group, whose main business is in the field of banking/mortage, finance, insurance or real estate, targeted at both individuals and businesses. The AXA Group has numerous subsidiaries in many countries around the world such as in Europe, America and Asia, and the Complainant enjoys a worldwide reputation.
The Complainant is the owner of the following trademarks among others:
- International trademark AXA n° 490 030 filed in December 5, 1984 in classes 35, 36 and 39, duly renewed and designating among others Austria, Algeria, Bosnia, Croatia, Egypt, Spain, Hungary, Italy, Morocco, Monaco, Portugal, Democratic People's Republic of Korea, Romania, Russian Federation, Saint-Martin, Slovakia, Slovenia, Sudan, Ukraine, Vietnam, Benelux, Switzerland and Liechtenstein.
- Community trademark AXA n°373 894 filed on August 28, 1996 in classes 35 and 36 and duly renewed.
- United States trademark AXA n°1 679 597 registered on March 17, 1992 in classes 35 and 36 and duly renewed.
- French trademark AXA n°1 282 650 filed on August 7, 1984 in classes 12, 14, 16, 18, 25, 28, 34, 35, 36 and 39 and duly renewed.
- Danish trademark AXA n°VR 01 065 1986, filed on May 2, 1986 in class 36 duly renewed.
- United Kingdom trademark AXA n°1 272 911, filed on October 1st, 1986 in class 36 duly renewed.
- New Zealander trademark AXA n°227175, filed on March 5, 1996 in class 36 duly renewed.
- Australian trademark AXA n°704 070, filed on March 8, 1996 in classes 35, 36 and 38, duly renewed.
- Indonesian trademark AXA n°319 483, filed on December 19, 1994 in class 36, duly renewed.
- Indonesian trademark AXA n°319 900, filed on December 23, 1994 in class 35, duly renewed.
- Singaporean trademark AXA n°1445/91, filed on March 1, 1991 in class 36, duly renewed.
The disputed domain names and were registered on March 4, 2009. 5. Parties' Contentions A. Complainant
The Complainant requests that the disputed domain names and be transferred to the Complainant.
The Complainant contends that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
With regards to element (i) of paragraph 4(a) of the Policy, the Complainant contends that the disputed domain names identically reproduce the Complainant's trademark AXA which as itself has no particular meaning. The addition of the word “investments” is insufficient to avoid a likelihood of confusion between the disputed domain names and and the trademark AXA.
With regards to element (ii) of paragraph 4(a) of the Policy, the Complainant contends that the Respondent does not have any legitimate interest in the disputed domain names since neither the company name “Pontest International Corp.” nor the Respondent's products and services have any resemblance with the term “AXA”. Secondly, the Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name.
With regards to element (iii) of paragraph 4(b) of the Policy, the Complainant contends that it is clear that the Respondent has registered its domain names in order to abusively take benefit from the Complainant's notoriety and it is not conveivable that the Respondent registered the disputed domain names without having the Complainant's widely known AXA trademark in mind. The disputed domain names were therefore registered in bad faith.
Further, the Complainant asserts that the Respondent is deliberately trying to gain unfair benefit of AXA's reputation by using the Complainant's trademarks to divert Internet users to a parking website belonging to Pontest International Corp. with links to commercial websites referring to investment services. Internet users who want to obtain information about AXA's investment activities are diverted to advertising parking websites which propose competing services of the Complainant. Finally, the bad faith of the Respondent is also ascertained by its silence after AXA's cease and desist letter. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a), the Complainant must prove that each of the following three elements are present if the Complaint is to prevail:
(i) The Respondent's domain names are 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 domain names; and
(iii) The domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Respondent has registered the disputed domain names and . Since the domain names wholly incorporate the Complainant's trademark, the word “investments” shall not be considered as to have suppressed the likelihood of confusion between the disputed domain name and the Complainant's trademarks AXA. Therefore the Panel is satisfied that the domain names at issue are confusingly similar to the trademarks AXA and the Complainant has proven paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances can be:
- demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services prior to the dispute;
- an indication that the registrant has been commonly known by the domain names even if it has acquired no trademark rights; or
- legitimate noncommercial or fair use of the domain names without intent to divert consumers or to tarnish the trademark.
In this case the Panel finds that the Complainant has indeed made a prima facie showing that the Respondent does not have rights or legitimate interests in the domain names within the meaning of paragraph 4(a) of the Policy.
This finding is based on the following, non-disputed, circumstances brought forward by the Complainant.
- The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use its trademarks or the disputed domain names and or any other domain name.
- It can be assumed that the Complainant's trade and service marks are well known, as the Complainant has businesses all over the world.
- There is no indication in the file that the Respondent is known under the disputed domain names.
Given these circumstances the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
As mentioned above, the Respondent's use of the disputed domain names creates a likelihood of confusion with the Complainant's trademarks.
Further, the fact that a cease and desist letter sent to the Respondent by the Complainant on June 3, 2009 was ignored shall be taken into account when deciding this element. As it has been pointed out in, The Hongkong and Shangai Banking Corporation Limited v. Bill Lynn,WIPO Case No. D2001-0915, that “the Respondent's failure to express any denial or explanation despite the various opportunities offered to him reinforces the inference of bad faith registration and bad faith use”, this shall be considered in the Panel's decision.
In addition, the Panel is satisfied that the Respondent is using the disputed domain names and to divert Internet traffic to its sites, which promote competing services.
For the reasons above, the Panel is of the opinion that the Complainant has established on the balance of probabilities that the Respondent has registered and is using the disputed domain names in bad faith. 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 disputed domain names and be transferred to the Complainant.
Haig Oghigian
Sole Panelist
Dated: September 22, 2009
Full & Egal Universal Law Academy