The Complainant is AXA SA of Paris, France, represented by Selarl Candé - Blanchard - Ducamp, France.
The Respondent is Whois Agent, Domain Protection Services, Inc. of Denver, Colorado, United States of America (“USA”) / Syed Hussain, Domain Management MIC of Closter, New Jersey, USA. 2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2018. On June 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2018, 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 June 13, 2018 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 June 15, 2018.
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 June 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2018.
The Center appointed George R. F. Souter as the sole panelist in this matter on July 16, 2018. 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 French insurance company, tracing its roots to the 18th century. It currently trades in 62 countries, and employs over 160,000 people. The Panel has been supplied with details of extensive trademark protection of the Complainant’s AXA mark, including International Registration No. 490030, registered on December 5, 1984, and European Union Trademark Registration No. 373894, registered on July 29, 1998.
On March 5, 2018, the Complainant announced its intention to take over another insurance company called XL Group.
The disputed domain name was registered on March 4, 2018. At the time of filing of the Complaint, the disputed domain name did not resolve to an active webpage. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its AXA trademark, containing the trademark in its entirety, with the mere addition of the letters “xl” and the word “group”.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Respondent has never received permission from the Complainant to use its AXA mark, and, to the best of the Complainant’s knowledge, the Respondent is not generally known by the disputed domain name. The Respondent is not using the disputed domain name for a bona fide offering of goods or services, nor for any legitimate noncommercial or fair use.
The Complainant alleges that the disputed domain disputed domain name was registered in bad faith, and is being used in bad faith in connection with passive holding of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well-established in prior decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.org”, and “.net”) may be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view, and considers the “.com” gTLD indicator to be irrelevant in the present case. The disputed domain name incorporates the Complainant’s trademark AXA in its entirety, together with the additional element “xlgroup”. As noted by prior UDRP panels, the addition of such other terms does not prevent a finding of confusing similarity under the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The Complainant has supplied details of its announcement of March 5, 2018 to take over XL Group. This would, of course, have been the subject of some speculation in business circles prior to the announcement. The Panel can find no convincing explanation for the registration of the disputed domain name the day before the announcement other than it was an opportunistic attempt by the Respondent to profit from what would have been a natural domain name for the Complainant to need to use after its takeover of XL Group. In the Panel’s opinion, users accessing any website operated under the disputed domain name would be likely to believe that they were accessing a website either owned or approved by the Complainant, and would, consequently, be confused. In the circumstance of the present case, in which the Panel believes that the Respondent has made an opportunistic attempt to profit from an imminent announcement as to the expansion of the Complainant’s business, to the obvious detriment to the Complainant’s right to use a domain name natural to its business, the Panel finds that the disputed domain name was registered in bad faith.
In connection with use of the disputed domain name in bad faith, the question of whether passive holding of a disputed domain name can constitute use in bad faith was considered in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, where it was found that it could be in appropriate circumstances. The circumstances of the present case, in which the Complainant would suffer automatic damage if the disputed domain name were used in connection with a website, render it appropriate, in the Panel’s opinion, for the Panel to find that the disputed domain name is being used in bad faith, and the Panel so finds. 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.
George R. F. Souter
Sole Panelist
Date: July 30, 2018
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