WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Telecom Tech Corp.
Case No. D2008-0764
1. The Parties
Complainant is AXA SA, of France, represented by Selarl Marchais De Candé, France.
Respondent is Telecom Tech Corp., of Panama.
2. The Domain Name and Registrar
The disputed domain name <axasante.com> is registered with Spot Domain LLC dba Domainsite.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2008. On May 16, 2008, the Center transmitted by email to Spot Domain LLC dba Domainsite.com a request for registrar verification in connection with the domain name at issue. On May 16, 2008, Spot Domain LLC dba Domainsite.com transmitted by email to the Center its verification response confirming that 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”), 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 Respondent of the Complaint, and the proceedings commenced on May 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 13, 2008.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on June 24, 2008. 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
Complainant AXA SA is the holding company of the AXA Group, whose main business is in the field of insurance and financial services. The AXA Group has numerous subsidiaries in many countries around the world and Complainant enjoys a worldwide reputation.
Complainant AXA SA is widely known under the trade names AXA and AXA SANTE and is the owner of the following trademark registrations for the trademarks AXA and AXA SANTE:
International trademark AXA No. 490030 filed in December 5, 1984 designating Algeria, Austria, Bosnia, Croatia, Egypt, Spain, Hungary, Italia, Morocco, Monaco, Portugal, Democratic People’s Republic of Korea, Romania, Russian Federation, Saint Martin, Slovakia, Slovenia, Sudan, Ukraine, Viet-Nam, Serbia, Benelux, Switzerland and Liechtenstein;
Community trademark AXA No. 000373894 filed on August 28, 1996;
United States trademark AXA No. 1,679,597 registered on March 17, 1992;
French trademark AXA No. 1,282,650 filed on August 7, 1984;
Danish trademark AXA No. VR 01 065 1986 filed on May 2, 1986;
UK trademark AXA No. 1,272, 911 filed on October 1, 1986;
New Zealand trademark AXA No. 227175 filed on March 5, 1996;
Australian trademark AXA No. 704070 filed on March 8, 1996;
Indonesian trademark AXA No. 319483 filed on December 19, 1994; and;
French trademark AXA SANTE No. 1,547,896 filed on August 23, 1989.
The Complainant is also the owner of the following domain names:
<axa.com> registered on October 24, 1995,
<axa.fr> registered on May 20, 1996,
<axasante.fr> registered on January 18, 2007,
<axa-sante.com> registered on February 8, 2000,
<axa-sante.net> registered on February 8, 2000.
The domain name at issue, namely, <axasante.com> was registered on October 6, 2007.
5. Parties’ Contentions
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
The contested domain name wholly incorporates Complainant’s distinctive trademark AXA, which has no particular meaning and is therefore highly distinctive, and as such creates sufficient similarity to be confusingly similar according to Paragraph 4(a)(i) of the Policy.
The addition of the term “sante”, in second position in front of the dot com, is not sufficient to suppress the likelihood of confusion. The term “sante”, which corresponds to the French word “santé”, is descriptive. It means “health” which in the disputed domain name refers to health services.
Moreover Complainant is the owner of the French trademark registration for AXA SANTE which is entirely reproduced in the disputed domain name.
Therefore, it is established that the domain name <axasante.com> is identical or at least confusingly similar to the trademarks and domain names over which Complainant has rights.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Respondent does not need to use the domain name at issue for its activity as its name is Telecom Tech Corp. and has nothing to do with and is completely different from AXA and AXA SANTE.
Respondent’s website at “www.axasante.com” is a parking web site.
The domain name <axasante.com> is only used by Respondent in order to lead consumers to other web sites offering to sell online various products and/or services to consumers.
Respondent does not use the domain name in dispute in connection with a bona fide offering of goods or services.
Complainant has never licensed nor otherwise permitted Respondent to use its trademarks AXA or AXA SANTE to apply for any domain name incorporating these terms.
There is no relationship between Complainant and Respondent.
Respondent has no right or legitimate interests in the respect of the domain name <axasante.com>.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
Respondent has registered the Domain Name in bad faith which Domain Name corresponds to the trademarks and domain names belonging to Complainant.
Respondent’s knowledge is reinforced by Complainant’s reputation in the field of health care.
Before registering the disputed domain name, Respondent must have been aware of the existence of the services offered and sold by Complainant under the marks AXA and AXA SANTE.
Respondent must have been particularly aware of the existence of the website entitled “Axa Sante” devoted to preventive health care.
This website is managed by the association Axa Sante, belonging to the AXA Group, whose main activity is to provide information regarding preventive health care.
More generally, Complainant has its activity in the field of insurance and exercises an important part of it in the medical insurance.
On its website, Complainant also proposes a program entitled “coaching santé”. (Rules, paragraph 3). relating to nicotine withdrawal cure, nutritional advice or vaccines.
The content of Respondent’s website is in relation with medical insurance and with services for preventive health like nicotine withdrawal cure.
The domain name <axasante.com> was registered in bad faith, with the purpose to make reference to Complainant’s activity.
The Domain Name is also used by Respondent in bad faith.
Respondent did not reply to Complainant’s contentions.
Because Respondent is in default, the Panel may draw negative inferences from Respondent’s default (Rules, paragraph 14(b)). However, the Rules also require that the complainant support its assertions with actual evidence in order to succeed in a UDRP proceeding.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. (Policy, paragraph 4(a).)
A. Identical or Confusingly Similar
Complainant owns a French registration for AXA SANTE trademark. Therefore, Complainant has trademark rights in the mark AXA SANTE.
In addition, Complainant owns numerous trademark registrations for the mark AXA. The contested domain name wholly incorporates Complainant’s distinctive trademark AXA plus the descriptive term “sante” which means “health” in French. In this respect, case law holds that confusing similarity is established when a domain name wholly incorporates a complainant’s trademark in its entirety despite the addition of other words (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
Decisions of the WIPO panelists have constantly held that, “the addition of descriptive terms does not have such an influence upon the overall impression that it would exclude the likelihood of confusion between the domain name and the Complainant’s trademarks” (Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624).
Therefore, this Panel finds that the domain name <axasante.com> is identical or confusingly similar to the trademarks in which Complainant has rights in violation of the Policy, paragraph 4(a)(i); and Rules paragraphs 3(b)(viii) and (b)(ix)(1).
B. Rights or Legitimate Interests
In order for Respondent to demonstrate rights or legitimate interests in the Domain Names, it must show
(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 a legitimate non-commercial 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.
With respect to 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
With respect to 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the domain name. Complainant has never licensed nor otherwise permitted Respondent to use its trademarks AXA or AXA SANTE to apply for any domain name incorporating these terms. There is no relationship between the AXA Group and Respondent.
With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate non-commercial or fair use of the domain name. At the time the UDRP complaint was filed, the website at “www.axasante.com” was a parked page that contains links to insurance products and health services that can be said to be in competition with Complainant’s services.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Transfer; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, Transfer. The Panel finds that the circumstances enumerated above establish a prima facie showing that Respondent has no rights or legitimate interests in the domain name at issue. Respondent has not rebutted Complainant’s contentions.
The Panel accordingly finds for Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
Complainant has used its AXA and AXA SANTE trademarks in connection with its financial, insurance and health services continuously for a period long prior to the October 6, 2007 registration date of the disputed <axasante.com> domain name. In addition, Complainant’s trademark registrations for AXA and one registration for AXA SANTE predate the registration of the disputed domain name.1 In view of the above, it is not plausible that Respondent registered the domain name at issue without knowledge of Complainant’s AXA and AXA SANTE trademarks.
The Panel also finds that Respondent’s use of the domain name in conjunction with a web site that links to other competing insurance products evidence of bad faith use and registration. Specifically, Respondent’s conduct is covered by Policy, paragraph 4(b)(iv): “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Panel accordingly finds for Complainant under the third element of the Policy.
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 <axasante.com> be transferred to Complainant.
Lawrence K. Nodine
Dated: July 15, 2008
1 French trademark registration AXA No.1,282,650 filed on August 7, 1984 and French trademark registration AXA SANTE No. 1, 547, 896 filed on August 23, 1989.