The Complainant is AXA SA of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is Value Domain of Osaka-shi, Osaka-fu, Japan.
The disputed domain name <axainc.net> is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2009. On July 29, 2009, the Center transmitted by email to eNom, Inc a request for registrar verification in connection with the disputed domain name. On July 29, 2009, eNom, Inc 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 August 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 25, 2009.
The Center appointed Haig Oghigian as the sole panelist in this matter on September 7, 2009. 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.
As there is no submission from the Respondent, the facts are taken from the Complaint and generally are accepted as true.
The Complainant, AXA SA, is the holding company of AXA Group, whose main business is in the field of banking/mortage, finance, insurance or real estate, targeted at both individuals and businesses. The AXA Group has numerous subsidiaries in many countries around the world such as in Europe, America and Asia, and the Complainant enjoys a worldwide reputation.
The Complainant is the owner of the following trademarks among others:
- International trademark AXA n°490 030 filed in December 5, 1984 in classes 35, 36 and 39, duly renewed and designating, among others, Algeria, Austria, Bosnia, Croatia, Egypt, Spain, Hungary, Italy, Morocco, Monaco, Portugal, Democratic People's of Korea, Romania, Russian Federation, Saint-Martin, Slovakia, Slovenia, Sudan, Ukraine, Vietnam, Benelux, Switzerland and Liechtenstein.
- Community trademark AXA n°373 894 filed on August 28, 1996 in classes 35 and 36 and duly renewed.
- United States trademark AXAn°1 679 597 registered on March 17, 1992 in classes 35 and 36 and duly renewed.
- French trademark AXA n°1 282 650 filed on august 7, 1984 in classes 12, 14, 16, 18, 25, 28, 34, 35, 36 and 39 and duly renewed.
- Danish trademark AXA n° VR 01 065 1986, filed on May 2, 1986 in class 36 duly renewed.
- United Kingdom trademark AXA n°1 272 911, filed on October 1st, 1986 in class 36 duly renewed.
- New Zealander trademark AXA n°227175, filed on March 5, 1996 in class 36 duly renewed.
- Australian trademark AXA n°704 070, filed on March 8, 1996 in classes 35, 36 and 38, duly renewed.
- Indonesian trademark AXA n°319 483, filed on December 19, 1994 in class 36, duly renewed.
- Indonesian trademark AXA n°319 900, filed on December 23, 1994 in class 35, duly renewed.
- Singaporean trademark AXA n°1445/91, filed on March 1, 1991 in class 36, duly renewed.
The Respondent registered the domain name <axainc.net> on January 15, 2009.
The Complainant requests that the domain name <axainc.net> be transferred from the Respondent to the Complainant.
The Complainant contends that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
With regards to element (i) of paragraph 4(a) of the Policy, the Complainant contends that the disputed domain name reproduces the Complainant's trademarks AXA in its entirety and since adding the term “inc” to the Complainant's trademarks is not sufficient to suppress the likelihood, the disputed domain name is confusingly similar to the Complainant's trademark.
With regards to element (ii) of paragraph 4(a) of the Policy, the Complainant contends that the absence of any permission by the Complainant to use the trademarks and lack of reason in the use of domain name at stake proves that the Respondent has no rights or legitimate interest in respect of the disputed domain name.
With regards to element (iii) of paragraph 4(b) of the Policy, the Complainant contends that since the Respondent was aware of the Complainant's rights and was aware that the registration of the disputed domain name would give the impression that the Respondent's website and the Respondent itself were somehow endorsed by the Complainant, when in fact they were not, the domain name was registered in bad faith. In addition, the Complainant contends that since the disputed domain name leads to a web site concerning automobile insurance which is a competing business of the Complainant, the domain name was used in bad faith.
The Respondent did not reply to the Complainant's contentions.
Pursuant to paragraph 4(a), the Complainant must prove that each of the following three elements are present if the Complainant is to prevail:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) 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.
The Respondent has registered the domain name <axainc.com>. Since the domain name wholly incorporates the Complainant's trademark, the word “inc” shall not be considered as to have suppressed the likelihood of confusion between the disputed domain name and the Complainant's trademarks AXA. Therefore the Panel is satisfied that the disputed domain name is confusingly similar to the trademarks AXA and the Complainant has proven paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances can be:
- demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
- legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
The Panel notes that the Complainant bears the “general burden of proof” under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests. See, Neusiedler Aktiengesellschaft v. Vinayak Kulkarni, WIPO Case No. D2000-1769, and Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704.
Since it is difficult to prove a negative (i.e., that the respondent lacks any rights or legitimate interests in the mark) - especially where the respondent, rather than the complainant, would be best placed to have specific knowledge of such rights or interests - and since paragraph 4(c) describes how a respondent can demonstrate rights and legitimate interests, a complainant's burden of proof on this element is light (See, De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). Hence, the complainant must make at least a prima facie showing that the respondent has no rights or legitimate interests in the mark. After, the complainant has met its initial burden of proof, if the respondent fails to submit a response the complainant will be deemed to have satisfied Paragraph 4(a)(ii) of the Policy.
In this case the Panel finds that the Complainant has indeed made a prima facie showing that the Respondent does not have rights or legitimate interests in the domain name within the meaning of Paragraph 4(a) of the Policy.
This finding is based on the following, non-disputed, circumstances brought forward by the Complainant.
- the Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the domain name <axainc.net> or any other domain name.
- It can be assumed that the Complainant's trade and service mark are known, as the Complainant has businesses all over the world.
- There is no indication in the file that the Respondent is known under the disputed domain name.
In addition, in Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299, the learned panelist found that:
“The right to express one's views is not the same as the right to use another's name to identify one's self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one's self as the New York Times or Time Magazine [b]y using Complainant's mark, Respondent diverts Internet traffic to its own site, thereby potentially depriving Complainant of visits by Internet users”.
In the current case, the disputed domain name is used to provide information concerning the different types of insurance services provided by AXA SA and there are no commercial contents. Neither is there any evidence that the Respondent intends to use this site to tarnish the images of AXA SA. However, the website linked to the disputed domain name contains no information concerning the author, and is likely to give the impression that the website is created by the Complainant. Consequently, the website is potentially depriving the Complainant of visits by Internet users.
Given these circumstances the Panel finds that Paragraph 4(a)(ii) of the Policy has been satisfied.
As mentioned above, the Respondent's use of the disputed domain name creates a likelihood of confusion with the Complainant's trademarks.
Further, the fact that a cease and desist letter sent to the Respondent by the Complainant on June 3, 2009 was ignored shall be taken into account when deciding this element. As it has been pointed out in The Hongkong and Shangai Banking Corporation Limited –v- Bill Lynn, WIPO Case No. D2001-0915, that “the Respondent's failure to express any denial or explanation despite the various opportunities offered to him reinforces the inference of bad faith registration and bad faith use”, this shall be considered in the Panel's decision.
For the reasons above, the Panel is of the opinion that the Complainant has established on the balance of probabilities that the Respondent has registered and is using the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <axainc.net> be transferred to the Complainant.
Dated: September 22, 2009