The Complainant is AXA SA of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is Michael A Watters of Wisconsin, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2012. On February 24, 2012, the Center transmitted by email to R a request for registrar verification in connection with the Domain Name. On the same date, R transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 6, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 9, 2012.
The Center verified that the Complaint together with the amendment to 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 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2012. An individual called Candace Radtke, ostensibly on behalf of the Respondent, transmitted to the Center two email communications on March 15 and 16, 2012. On April 2, 2012, the Center informed the Parties of the Commencement of the Panel Appointment Process. Two further email communications were received from Candace Radtke and from the named Respondent on April 5, 2012.
The Center appointed Nicholas Smith as the sole panelist in this matter on April 5, 2012. 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 the holding company of the AXA Group, one of the world’s largest insurance corporations, specializing in property and casualty insurance, life insurance and savings and asset management.
Since 1985 the Complainant has promoted itself and its insurance and asset management products under the trade mark AXA (the “AXA Mark”). The Complainant has registered the AXA Mark in numerous countries throughout the world since 1984. In 1992 the Complainant registered the AXA Mark as a trade mark in the United States, where the named Respondent is based.
The Domain Name was created on January 13, 2012. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant’s AXA Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the AXA Mark. It holds several registrations for the AXA Mark around the world. The AXA Mark is used by the Complainant for its insurance and financial service products. The Complainant has also registered a number of domain names that incorporate the AXA Mark, including , , , , and .
The Complainant operates in 57 countries and employs 216,000 people. It currently provides its services to 96 million customers.
The Domain Name consists of the AXA Mark in its entirety with the addition of the generic term “group”. There are numerous UDRP panel decisions that find that the addition of a generic term such as “group” to a trade mark does not change a finding of confusing similarity. Particular reference is made to Finaxa v. Billy Oglesby,WIPO Case No. D2004-0165, in which the panel found the domain name confusingly similar to the AXA Mark.
The Respondent is not commonly known by the Domain Name nor has it conducted a legitimate business under the Domain Name. The Complainant has not authorized or licensed the Respondent to use the AXA Mark. Given the Respondent’s use of the Domain Name in the absence of any permission from the Complainant to use the AXA Mark, the Respondent has no rights or legitimate interests in the Domain Name.
Given the reputation of the Complainant’s well-known AXA Mark, it is inconceivable that the Respondent registered the Domain Name unaware of the Complainant’s rights. The Domain Name revolves to a website which appears to be a model website or template website, but one that makes reference to the “AXA Insurance Company”. The fact that the website to which the Domain Name revolves makes a reference to the Complainant’s business leads to the conclusion that the Domain Name was registered with regard to the Complainant and is being used in bad faith by the Respondent. B. Respondent
The Center received three email communications from Candace Radtke, ostensibly on behalf of the named Respondent, and one email communication from the named Respondent. These communications were received on March 15, March 16 and April 5, 2012. Each of these communications strongly denied that the Respondent owned the Domain Name and stated that the named Respondent had no connection to the Domain Name. 6. Discussion and Findings
In this proceeding a representative of the named Respondent has written to the Center, strongly denying that the named Respondent is the owner of the Domain Name or has any connection with the Domain Name. A similar situation arose in Banca Intesa S.p.A. v. Hilary Ammann,WIPO Case No. D2006-0496 in which apparently the person in control of the disputed domain name illegally used Ms. Ammann’s name and address to register the domain name .
While it is possible that the Domain Name was registered by a third party using Mr. Watters’ identity without his knowledge or authorization, the Rules state that the respondent in a UDRP proceeding is the holder of the domain name registration (against which a complaint is filed). In this proceeding, the holder of the Domain Name, according to the information transmitted by R on February 24, 2012 is Michael A Watters and therefore, pursuant to the Rules and the Policy, he is the proper Respondent in the proceeding. The Panel acknowledges that Mr. Watters may have been the victim of some form of scam or identity theft and may not be in control of the Domain Name, but makes no factual finding in that respect. A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the AXA Mark, having registrations for AXA as a trade mark throughout the world, including in the United States, where the Respondent is based.
Past UDRP decisions have found that a domain name that consists of a complainant’s mark and a generic term is confusingly similar to the complainant’s trade mark. In particular Finaxa v. Billy Oglesby,WIPO Case No. D2004-0165 found that there was confusing similarity between the trade mark AXA and the domain name . As the generic top-level domain may be discounted when considering confusing similarity, this is an identical situation to the present case, which involves the Domain Name .
The Domain Name consists of the AXA Mark and the suffix “group”. This suffix “group” does not operate to distinguish the Domain Name from the AXA Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s AXA Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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.” (Policy, paragraph 4(c))”.
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the AXA Mark or a mark similar to the AXA Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather, the named Respondent and his representative, in their communications, denied having any connection to the Domain Name whatsoever.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The named Respondent has not suggested otherwise. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
The Panel finds that the entity that registered the Domain Name, be it the named Respondent or an unknown third party who has used the named Respondent’s identity without his permission, knew of the existence of the Complainant at the time the Domain Name was registered. The AXA Mark is known world-wide being connected to one of the world’s largest insurance companies. The Domain Name resolves to a website that, at the time of the Complaint, displayed the AXA Mark with reference to “Insurance” which is the Complainant’s business. The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own is registration in bad faith.
The website that the Domain Name resolves to, other than making reference to the Complainant, is essentially inactive. However, there is no obvious reason for the Respondent to register a domain name incorporating the AXA Mark and create a template website featuring the phrase “AXA Insurance Company” unless there is an intention to create a likelihood of confusion between the Domain Name and the Complainant’s AXA Mark. Furthermore it appears that the entity in control of the Domain Name has illegally used Mr. Watters’ name and address to register the Domain Name. A deliberate concealment of identity and contact information may in itself indicate bad faith. See TTT Moneycorp Limited. v. Diverse Communications,WIPO Case No. D2001-0725. The Panel also considers the communications from the named Respondent and his representative who suggest that the registration of the Domain Name is a “scam” as further evidence of bad faith.
For the reasons set out above, the Panel also finds that the Respondent has used the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Nicholas Smith
Sole Panelist
Dated: April 8, 2012
Full & Egal Universal Law Academy