The Complainant is AXA SA of Paris, France, represented by Selarl Candé - Blanchard - Ducamp, France.
The Respondent is Anton V Kirillov of Moscow, the Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2015. On July 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details, and stating that Russian is the language of the Registration Agreement for the disputed domain name. On July 22, 2015, the Center sent a notice to the Parties, requesting that the Complainant provide evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, submit the Complaint translated into Russian, or submit a request for English to be the language of the administrative proceeding. On July 23, 2015, the Complainant requested English to be the language of the proceeding. On July 24, 2015, the Center received two Russian-language informal email communications from the Respondent.
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, in English and in Russian, and the proceeding commenced on July 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2015. The Center indicated to the Respondent that it would accept a Response in English or in Russian. The Respondent did not submit any formal response. Accordingly, on August 18, 2015, the Center notified that Parties of the commencement of the panel appointment process.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on September 11, 2015. 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 registered in France. The AXA trade name was adopted in 1985 and the group currently serves 102 million customers around the world, employing 157,000 people in 56 countries. The Complainant pursues three major lines of business: property and casualty insurance, life insurance and savings, and asset management, proposed both to individuals and to companies.
The Complainant is the owner of, among others, the following trademark registrations:
- International Trademark registration No. 490030 for AXA registered on December 5, 1984 to cover services in classes 35, 36 and 39 (Annex 8 to the Complaint);
- United States of America Trademark registration No. 2072157 for AXA registered on June 17, 1997 to cover services in class 36 (Annex 7 to the Complaint);
- Community Trade Mark registration No. 373894 for AXA registered on July 29, 1998 to cover services in classes 35 and 36 (Annex 9 to the Complaint).
- Community Trade Mark registration No. 008772766 for AXA registered on September 7, 2012 to cover services in classes 36 and 36 (Annex 10 to the Complaint).
- French Trademark AXA No. 1270658 for AXA registered on October 1, 1984 to cover services in classes 35, 36 and 42 (Annex 11 to the Complaint).
In addition, the Complainant has registered domain names reflecting its trademarks including , , and .
The Respondent is Anton V Kirillov of Moscow, Russian Federation.
The disputed domain name was registered on May 8, 2014. The disputed domain name resolves to a “pay-per-click” website. 5. Parties’ Contentions A. Complainant
Firstly, the Complainant contends that is identical with the AXA trademark as the disputed domain name reproduces the trademark in its entirety. In the Complainant’s opinion, the AXA trademark itself has no particular meaning and is therefore highly distinctive. Moreover, the Complainant underlines that AXA is a well-known trademark. According to the Complainant, the generic Top-Level Domain (“gTLD”) suffix “.club” does not serve to distinguish the disputed domain name from the registered trademark but it rather increases the confusing similarity between them since Internet users may easily link the disputed domain name to a customer club related to the Complainant’s business.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. In order to justify the above, the Complainant explains that it never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including the AXA trademark. Furthermore, in the Complainant’s view, the Respondent has not been commonly known by the AXA trademark and is not making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name leads Internet users to a “pay-per-click” website.
Finally, the Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant contends that the Respondent was aware of the AXA trademark at the time that he acquired the disputed domain name since AXA enjoys worldwide recognition in numerous countries, including the Russian Federation – the home country of the Respondent. In the Complainant’s opinion the Respondent chose and registered in bad faith in order to take predatory advantage of the Complainant’s reputation. In addition, the Complainant asserts that the Respondent is also using the disputed domain name in bad faith, which is evidenced by the fact that it directs Internet users to a parking website displaying “pay-per-click” links. This type of activity qualifies, according to the Complainant, as an attempt to attract for commercial gain Internet users to the website displayed at the disputed domain name by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website (paragraph 4(b)(iv) of the Policy). The Complainant underlines that the Respondent’s lack of a bona fide use of the disputed domain name is likely to disrupt its business by preventing it from reflecting the AXA trademark in a corresponding “.club” domain name. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. The Respondent’s informal emails, received prior to the commencement of the proceeding, indicated that the Respondent wished to be communicated with in Russian, and that the Respondent did not use the domain name for monetary gain. 6. Discussion and Findings (i) Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that the Registration Agreement (Annex 3 to the Complaint) is a bilingual agreement, with a Russian and an English version. Furthermore, the Complainant submitted that the UDRP (which applies to the disputed domain name) is in English. Finally, in the Complainant’s view, although the Respondent is Russian, the Respondent is familiar with the English language as the text of the privacy policy of the website at “www.” is in English (Annex 16 to the Complaint).
Taking all the circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules. (ii) Merits of the Case
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the respondent in bad faith.
The requested remedy may only be granted if the above criteria are met. A. Identical or Confusingly Similar
The Complainant holds many valid AXA trademark registrations. The disputed domain name incorporates the Complainant’s AXA mark in its entirety without any other word or letter. As stated by previous UDRP panels, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696).
In the Panel’s opinion, the gTLD suffix “.club” does not serve to distinguish the disputed domain name from the Complainant’s registered trademarks. On the contrary, the addition of the gTLD “.club” may even confuse Internet users who may easily link the disputed domain name to a customer club related to the Complainant’s business.
Therefore, the Panel finds that the disputed domain name is identical to the AXA trademark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (See Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the AXA trademark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has been making a commercial use of the disputed domain name (through a “pay-per-click” scheme).
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
Firstly, the disputed domain name was registered in May 2014 and incorporates the AXA trademark that was registered years before and is commonly known worldwide in the financial and insurance services industries. The worldwide reputation of the Complainant has been recognized in previous UDRP cases (see AXA SA v. Frank Van,WIPO Case No. D2014-0863). In the Panel’s opinion, the notoriety of use of the AXA trademark, together with the fact that it is indeed distinctive since it has no particular meaning, indicates that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name.
Secondly, the Respondent is also using the disputed domain name in bad faith, which was evidenced by the fact that it directs Internet users to a parking website involving a “pay-per-click” system. In this instance, it appears that the sole purpose of the Respondent’s parking website is to attract Internet users to the site, for profit, by creating confusion between the disputed domain name and the Complainant and its trademark (see Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753). Moreover, the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
All of these facts support the inference that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website. The Panel finds that the above constitutes bad faith under paragraph 4(b)(iv) 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 disputed domain name be transferred to the Complainant.
Piotr Nowaczyk
Sole Panelist
Date: September 25, 2015
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