The Complainant is AXA S.A. of Paris, France, represented by Selarl Candé - Blanchard - Ducamp, France.
The Respondent is Privacy Protect, LLC (PrivacyP) of Burlington, Massachusetts, United States of America / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd of Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 4, 2017. On September 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 2017 providing the identity of the registrant and the 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 September 7, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 5, 2017.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on October 19, 2017. 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 a multinational insurance company. The origins of the Complainant date back to 1817, the year in which the Complainant was created as a result of a merger of several companies which covered agricultural risks.
The Complainant's group is present in sixty-four countries, has more than one hundred million customers, and more than one hundred and sixty thousand employees.
In 2009 the Complainant's trademark AXA was ranked as the No. 1 Global Insurance Brand.
The Complainant owns the following trademark registrations, among others: Registration No. Trademark Jurisdiction Class (Classes) Application Date
490030
AXA
Austria, Azerbaijan, Bosnia and Herzegovina, Benelux, Belarus, Switzerland, Czech Republic, Germany, Egypt, Algeria, Spain, Croatia, Hungary, Italy, Democratic People's Republic of Korea, Liechtenstein, Morocco, Monaco, Montenegro, Portugal, Romania, Serbia, Russian Federation, Sudan, Slovenia, Slovakia, Tunisia, Ukraine,
Viet Nam, Serbia and Montenegro
36, 39
December 5, 1984
1030368
AXA (stylized)
European Union
35, 36
August 28, 1996
2072157
AXA (stylized)
United States of America
36
August 5, 1994
Additionally, the Complainant owns the following domain names: Domain name Registration date
October 23, 1995
November 1, 1997
July 30, 2001
May 20, 1996
The disputed domain name was registered on October 11, 2004. The disputed domain name does not resolve to an active website. 5. Parties' Contentions A. Complainant
The Complainant argues the following:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
That the disputed domain name reproduces the trademark AXA in its entirety. That the term "axa" does not have a dictionary meaning. That the trademark AXA is highly distinctive.
That the term "seguros", which means "insurance" in Spanish is purely descriptive and that, due to the well-known character of AXA, it does not alter the overall impression produced by the disputed domain name.
That since "seguros" designates the nature of the Complainant's business, the incorporation of said term in the disputed domain name increases the likelihood of confusion. - The Respondent has no rights or legitimate interests in respect of the disputed domain name.
That it is clear that Privacy Protect, LLC is not the real holder of the disputed domain name, because Privacy Protect LLC is a corporation which provides privacy proxy registration services.
That the Complainant has never licensed or otherwise permitted the Respondent to use its trademarks, or to register a domain name incorporating said trademarks.
That the Respondent is not seriously interested in actively using the disputed domain name, because for almost thirteen years the disputed domain name has directed users to a passive site.
That the disputed domain name has been offered for sale, a fact showing that the Respondent is trying to obtain an undue financial profit from the transfer of the disputed domain name. - The domain name was registered and is being used in bad faith.
That the Respondent was aware of the Complainant's trademarks at the time of acquiring the disputed domain name.
That the evidence contained in the case file shows that the trademark AXA is famous, and enjoys worldwide reputation.
That since the disputed domain name consists of the trademark AXA with the addition of the word "seguros", it is clear that at the time of registration of the disputed domain name, the Respondent had the Complainant's trademarks in mind. That the registration of the disputed domain name shows a deliberate attempt of the Respondent to create a likelihood of confusion between the Complainant's marks and services, and the disputed domain name.
That the passive holding to which the disputed domain name has been subject constitutes evidence of bad faith use.
Moreover, the Complainant states that the disputed domain name can be purchased for USD 7,256, which proves an offer to sell the disputed domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants 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 was registered and is being used in bad faith.
As the Respondent has failed to submit a Response to the Complainant's contentions, the Panel may choose to accept as true all (or some) of the Complainant's reasonable allegations (Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar
The Complainant has proven to be the rightful owner of the trademark AXA in different countries. AXA is a famous brand.
The disputed domain name is confusingly similar to the Complainant's trademark AXA, because it entirely incorporates such trademark.
In this case the use of a dictionary term, such as "seguros", is not likely to prevent the likelihood of confusion between the disputed domain name and the trademark AXA (see Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253; PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
Moreover, the presence of the generic Top-Level Domain ("gTLD") ".com" in the disputed domain name does not diminish the risk of confusion between the trademark AXA and the disputed domain name. Previous UDRP panels have stated that a gTLD should not be taken into consideration when conducting a confusing similarity analysis, because it has no legal significance (see Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541).
In light of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark AXA.
The first element of the Policy has been met. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Complainant stated that it has not authorized, licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating said trademarks.
According to the Complainant, the Respondent clearly attempted to obtain an illegal profit linked to the sale of the disputed domain name, and the Respondent has no real interest in the disputed domain name since the website to which it resolves has been inactive for more than ten years.
The above arguments establish a prima facie case which shifts the burden of production to the Respondent.
The Respondent did not submit any evidence showing an actual bona fide use, or preparations to use the disputed domain name with a bona fide offering of services, nor did the Respondent demonstrate that it is making a legitimate noncommercial or fair use of the disputed domain name.
In addition, nothing on the record suggests that the Respondent has been commonly known as .
In the Panel's view, the Respondent in this case is not entitled to register a domain name incorporating the company name and trademarks of the Complainant, because this conduct can cause confusion among Internet users and consumers (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113).
There is no evidence on the record that would indicate that the Respondent has any rights to, or legitimate interests in the disputed domain name. The mere registration of a domain name is not sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy (see SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092).
The Respondent failed to submit arguments, and to file evidence showing that it has rights or legitimate interests in the disputed domain name (see Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong,WIPO Case No. D2003-0408).
Previous UDRP panels have determined that in the absence of evidence to the contrary, the passive holding of a domain name cannot constitute a legitimate noncommercial or fair use of the disputed domain name. In this case, the inactivity of the site to which the disputed domain name resolves for more than ten years, along with the Respondent's impossibility to show demonstrable preparations of use in connection with a bona fide offering for goods or services, lead this Panel to consider that the Respondent has no rights to, or legitimate interests in the disputed domain name (see Euromarket Designs, Inc. v. Domain For Sale VMI,WIPO Case No. D2000-1195; Netcentives, Inc. v. B W Brody Company,WIPO Case No. D2000-0672; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483).
The second element of the Policy has been met. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to their website 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 website or location or of a product or service on its website or location.
Considering the evidence filed by the Complainant, this Panel accepts that the trademark AXA is a famous mark. It has been ranked as the No. 1 Global Insurance Brand, and has presence in more than sixty countries, reaching more than one hundred million customers.
Therefore, the Respondent knew or should have known of the existence of said trademark. This Panel agrees with the Complainant in that the presence of the term "seguros" in the disputed domain name shows that the Respondent had the Complainant in mind when registering the disputed domain name. The Respondent provided no reasons to justify the presence of said term (which clearly relates to the Complainant's main activity) along the trademark AXA in the disputed domain name. Since the term "seguros" is translated to English as "insurance" (the main commercial activity of the Complainant), it is likely that the inclusion of said term increases the risk of confusion among Internet users. Internet users are likely to relate said term to the Complainant and its activities.
Previous UDRP panels have held that the use and registration of a domain name which is evidently connected with a famous or well-known trademark, by someone with no connection with said trademark, suggests opportunistic bad faith (see Sanofi-aventis, Aventis Inc. v. Hostmaster, Domain Park Limited,WIPO Case No. D2007-1641).
The evidence filed by the Complainant (which was not rebutted by the Respondent) shows that the disputed domain name can be purchased for more than seven thousand dollars. From this Panel's perspective, this is indicative of the Respondent's intention to acquire the disputed domain name for the purpose of selling it for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name.
The fact that the Respondent has not submitted any Response, implies that the arguments and evidence of the Complainant have not been contested. Thus, the Complainant's accusations of bad faith have stayed intact. (see Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties,WIPO Case No. D2005-1085).
Under the circumstances of the case, there are no factors which could signal any plausible or active use of the disputed domain name that was not unlawful or could not affect the rights of intellectual property of the Complainant. For these reasons, the Panel considers that the registration and passive holding of the disputed domain name fulfill the criteria for determining that it was registered and is being used in bad faith (see Advance Magazine Publihers Inc. and Les Publications Condé Nast S.A. v. ChinaV,WIPO Case No. D2005-0615). 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.
Kiyoshi Tsuru
Sole Panelist
Date: November 2, 2017
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