The Complainant is AXA SA of Paris, France, represented by Selarl de Candé – Blanchard, France.
The Respondent is DmarketingKing of Brooklyn, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2012. On June 21, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On the same date, GoD, LLC 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 June 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2012. The Center notified the Respondent’s default on July 20, 2012, however the Respondent sent an email communication on July 21, 2012. On July 31, 2012, the Center informed the Parties that it would commence the Panel appointment process. On the same date, the parties exchanged email communications. On August 8, 2012, the Respondent sent an email communication to the Center.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on August 8, 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
In the absence of a Response the Panel refers to the factual background set out in the Complaint which it accepts as true.
The Complainant, the AXA Group, has a long-standing history with roots going back to the 18th Century. After a succession of mergers, acquisitions and name changes involving some of the biggest insurance companies around the World, the trade name AXA was introduced in 1985. Since 1988, AXA has traded on the Paris Stock Exchange and in 1996 it listed on the New York Stock Exchange. Nowadays AXA SA is the holding company of the AXA Group.
The AXA Group is famous for its numerous activities in three major lines of business: Property and Casualty Insurance, Life Insurance and Savings, and Asset Management, for both to individuals and to business companies.
The Group employs 216,000 people worldwide. AXA is a World leader in insurance, savings and asset management serving 96 million customers.
The Group is present in 57 countries and does business in diversified geographic regions and markets across notably Europe, North America and Asia Pacific. The Complainant asserts that the Group nowadays has a worldwide reputation. It relies upon the AXA Group Report 2011 which is annexed at annex 5 to the Complaint to demonstrate that.
In the Complaint, the Complainant sets out a number of trademarks which it aims as follows:
- International Trademark AXA No. 4903030 filed on December 5,1984 in classes 35, 36 and 39 designating Algeria, Austria, Bosnia and Herzegovina, Croatia, Egypt, Spain, Hungary, Italy, Morocco, Monaco, Portugal, Democratic People’s Republic of Korea, Romania, Russian Federation, Slovakia, Slovenia, Sudan, Ukraine, Viet Nam, the former Yugoslav Republic of Macedonia, Benelux, Switzerland and Lichtenstein (see annex 6).
- UK Trademark AXA Insurance No. 1456415 filed on February 22, 1991 in classes 16, 36 and duly renewed (see annex 7).
- Community Trademark AXA No. 373894 filed on August 28, 1996 in classes 35 and 36 (see annex 8)
- US Trademark AXA No. 1670597 registered on March 17, 1992 (see annex 9).
- French Trademark AXA No. 1282650 filed on August 7, 1984 in classes 12, 14, 16, 18, 25, 28, 34, 35, 36 and 39 and duly renewed (see annex 10).
- US Trademark AXA Advisors No. 2546263 filed on May 23, 2000 in class 36 and duly renewed (see annex 11).
- US Trademark AXA Financial No. 2522 filed on May 23, 2000 in class 36 and duly renewed (see annex 12).
- US Trademark AXA Investment Managers No. 2337424 filed on June 25, 1998 in classes 35, 36, 38 and 41 and duly renewed (see annex 13).
The Complainant is also the owner of the following domain names:
- registered on October 24, 1995.
- registered on May 20, 1986.
- registered on July 30, 2001.
- registered on October 31, 2001.
- registered on February 13, 2006.
All of the above trademarks and domain names are registered and widely used by AXA Group notably in connection with classes 35 and 36 of the International Classification i.e. for Insurance Services and Financial Services.
The Center served the present Complaint on Mr. Daniel Kuperhand at DmarketingKing. He responded by email dated July 21, 2012, to the effect that the domain name was no longer accessible. On July 31, 2012, Mr. Kuperhand emailed the Center saying that he was “a little baffled by continuing this process especially since I have adhered to the requests and the domain is no longer in my possession and has been removed shortly after receiving the initial request.” He replied again simply stating: - “I am not in the business of hiring, I am in the business of partnership” and “making money feels good … but making money by making other people money feels better”. It is apparent from this correspondence that Mr. Kuperhand does not appear to object to the relief sought by the Complainant. 5. Parties’ Contentions A. Complainant
1. The Complainant contends that it has registered trademark rights in inter alia the marks AXA, AXA INSURANCE, AXA ADVISORS, AXA FINANCIAL, and AXA INVESTMENT MANAGERS.
2. It contends that the disputed domain name is confusingly similar to its registered trademark rights and that, terms like “advisors”, “financial” and “investments” are commonly and descriptively used in the financial advisory market are descriptive.
3. The Respondent has no rights or legitimate interests in respect of the disputed domain name. For the following reasons:
(a) The name of the Respondent DmarketingKing has no resemblance to the word AXA.
(b) The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including the above mentioned trademarks.
(c) There is no relationship whatsoever between the parties.
4. The domain name was registered and is being used in bad faith. The Respondent must undoubtedly have been aware of the risk of deception in registered and using the domain name.
5. The Respondent has deliberately tried to gain unfair benefit from the Complainant’s reputation by using on its websites such as: “AXA Advisors Financial Investments” and “the brilliance of AXA Investment Management”. B. Respondent
In the absence of a formal response from the Respondent there are no factual or legal contentions. The emails received from Mr. Daniel Kuperhand are not in opposition to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered rights in the trademarks referred to above and in particular in the registered marks AXA, AXA ADVISORS, AXA FINANCIAL and AXA INVESTMENT MANAGERS. It appears to the Panel that the words in the domain name “Advisors”, “Financial” and “Investments” qualify and are descriptive of the predominant part of the domain name which is the word AXA. It follows that the disputed domain name is confusingly similar to the registered trademarks over which the Complainant has rights. The Complainant succeeds in this element. B. Rights on Legitimate Interests
It is apparent that there is no similarity whatsoever between the disputed domain name and the name of the Respondent “DmarketingKing”. Nor is there any evidence that the Complainant licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including the trademarks. It is therefore apparent that there is no relationship whatsoever between the parties. The Panel therefore finds that the Respondent has clearly registered the Complainant’s trademarks for its own use and incorporated them into its domain name without the Complainant’s authorisation. It follows that the Complainant succeeds on this element. C. Registered and Used in Bad Faith
The Complainant asserts that the disputed domain name has been registered for the purpose of attracting Internet users to the Respondent’s website and making unfair benefit of its reputation by reproducing the distinctive name AXA with the addition of the generic and descriptive terms “Advisors”, “Financial” and “Investments”. The Panel also accepts the evidence of the Complainant that the Complainant’s trademarks and in particular the distinctive mark AXA are known worldwide. The Complainant refers to an earlier WIPO Case FINAXA v. Managing Trustee/MeridianGlobal, WIPO Case No. D2004-0509, in which an earlier panel recognised the well-known nature of the AXA marks. The Panel therefore accepts that the Respondent must undoubtedly have been aware of the risk of deception and confusion that would inevitably follow when registering the disputed domain name since it could lead Internet users searching for the official AXA websites to the Respondent’s pages . It follows, and the Panel accepts this, that the disputed domain name was registered in bad faith.
The Complainant also at annex 15 to the Complaint produces evidence of the Respondent’s website from which it is plain that the disputed domain name is used as a referral portal which contains a number of hyperlinks offering various kinds of services relating to the Complainants’ trading activity in the field of insurance and financial services. In the Panel’s view it follows that the Respondent is deliberately trying to gain unfair benefit from the Complainant’s reputation by using on its website links referring to financial investment, financial advice and investment management.
In these circumstances the Panel is entitled to find and does find that the disputed domain name is also being used in bad faith. It follows that the Panel finds for the Complainant in respect of this element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(1) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be cancelled, as requested by the Complainant in paragraph 13 of the Complaint.
Clive Duncan Thorne
Sole Panelist
Dated: August 22, 2012
Full & Egal Universal Law Academy