WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. P. L. and One and one Private Registration
Case No. D2010-1801
1. The Parties
The Complainant is AXA SA of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondents are P. L., United States of America (“USA”) and One and one Private Registration of Chesterbrook, Pennsylvania, USA.
2. The Domain Name and Registrar
The disputed domain name <axape.com> (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was originally filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2010, naming One and one Private Registration as the sole Respondent.
The Center transmitted its request for registrar verification to the Registrar on October 26, 2010. The Registrar replied on October 28, 2010, confirming that it was the Registrar of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied, that the expiry date of the Domain Name was July 16, 2011, that the Domain Name was on Registrar Lock, that the registration agreement was in English and that the registrant had submitted to both the jurisdiction at its principal office in Karlsruhe, Germany, and the registrant’s address in Philadelphia, USA. However, the Registrar stated that the registrant was not the Respondent named in the Complaint, but rather its customer, P. L., who had chosen to use its private registration service. The Registrar provided the full contact details held on its WhoIs database in respect of the Domain Name and updated the public WhoIs database in accordance with its terms and conditions. The Center forwarded the registrant information provided by the Registrar to the Complainant by email of November 3, 2010 and invited the Complainant to submit an amendment to the Complaint.
P. L. wrote to the Center on the same date, stating that he had received earlier emails, and that he owned the Domain Name, but had not used it for anything that could harm or misrepresent the Complainant. He said that he was willing to sell the Domain Name to the Complainant if the Complainant required it and expressed the hope that the Center, being a mediation and arbitration organization, could help to resolve the problem. The Center forwarded this email to the Complainant on November 5, 2010, with the observation that the Complainant might wish to consider requesting a suspension of the proceeding to explore a possible settlement.
The Complainant filed an amendment to the Complaint on November 8, 2010, naming P. L. as well as One and one Private Registration as the Respondents, and adding a reference to P. L.’s email to the Center on November 3, 2010, in support of its allegation that the Domain Name was registered and is being used in bad faith.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 10, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 30, 2010. The Respondent, P. L., sent an email to the Center on November 23, 2010, disputing the Complaint. The Center asked him by email of November 24, 2010, whether this was to be regarded as his complete Response. By email of November 25, 2010, the Complainant submitted additional observations. By email of November 26, 2010, the Respondent, P. L., confirmed that his previous email was to be considered his complete Response. However, by a further email of November 26, 2010, he submitted an additional observation apparently with reference to the Complainant’s supplemental filing of the previous day. By email of November 30, 2010, he made further observations in response to the Complainant’s supplemental submission.
The Center appointed Jonathan Turner as the sole panelist in this matter on December 10, 2010. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint as amended complied with applicable formal requirements, was duly notified to the Respondents and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Procedural Rulings
The email of the Respondent, P. L., of November 23, 2010, does not comply with the requirements of the Rules relating to the Response in a number of respects: for example, it does not respond specifically to the statements and allegations in the Complaint as required by paragraph 5(b)(i) of Rules and it does not conclude with a signed certificate as required by paragraph 5(b)(viii) of the Rules. The Panel exercises its discretion to admit this email as the Response, but will take into account the non-compliance with the Rules in considering the weight to be attached to it.
It remains to consider whether to admit the Complainant’s supplemental filing and the Respondent P. L.’s further emails in response to it. Whether supplemental submissions can and should be admitted in proceedings under the UDRP has been considered in many cases. In The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, the panel summarised the position as follows:
“The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”
The present case illustrates the problem identified in the last-quoted paragraph, with the Complainant’s supplemental submission prompting the Respondent, P. L., to make further submissions. However, on the Complainant’s evidence, its supplemental submission addressed new material which it could not have known when it made its primary submission. In these circumstances the Panel has decided to admit the Complainant’s supplemental submission and the Respondent’s comments on it.
5. Factual Background
The Complainant is the holding company of a large group of companies operating in many countries around the world in the fields of property and casualty insurance, life insurance and savings, and asset management. One of the businesses of the Complainant’s group is AXA Private Equity, which supports the development and long-term growth of companies and operates funds through which investors can invest in different parts of its portfolio. The Complainant is quoted on the Paris and New York stock exchanges.
The Complainant owns registered trademarks for the word AXA in numerous countries and a registered trademark in France for AXA PRIVATE EQUITY. The Complainant has also registered the domain names <axa.com>, <axa.fr>, <axa.info> and <axaprivateequity.com>.
The Domain Name was created on July 16, 2009.
6. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its registered trademarks AXA and AXA PRIVATE EQUITY. It considers that the letters “pe” in the Domain Name are descriptive, in that they are an abbreviation of “Private Equity”, and therefore do not avoid confusing similarity.
The Complainant submits that the Respondents do not have any rights or legitimate interests in respect of the Domain Name.
The Complainant further alleges that the Domain Name was registered and is being used in bad faith. The Complainant states in the Complaint that the Domain Name is directed to the website of its AXA Private Equity business and that the Respondents must therefore have been aware of the Complainant and its private equity business. The Complainant also relies on the Respondent P. L.’s email to the Center of November 3, 2010, offering to sell the Domain Name.
In its supplemental submission the Complainant notes that the Domain Name is now directed to parking page, but reiterates that it had previously been directed to the Complainant’s AXA Private Equity website, and adds that the parking website contains links offering insurance services. The Complainant alleges that these are sponsored links generating click-through commissions.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent, P. L., states that he registered the Domain Name for a start-up company on which he is working, called Advanced eXecutive Adult Professional Education. He says that it is a non-profit venture aimed at providing executive education for adults in the small and medium business sector. He attaches a screenshot showing that the Domain Name is pointed to a web page which is under construction. The web page does not appear to say this in words but includes in the banner an image of a computer showing a screen displaying a depiction of a construction worker of the kind often used to indicate a web page under construction.
Mr. L. submits that the Domain Name has no connection with the Complainant or its business. He argues that the mere coincidence that the Domain Name includes the letters “axa” is not a ground to indicate a connection with the Complainant, any more than the Domain Name <asap.com> could be the subject of a valid objection by the software company SAP.
In response to the Complainant’s supplemental submission, the Respondent, P. L., states that he is using a standard “under construction” page provided by the Registrar. He suggests that the presentation of links relating to insurance when the page was accessed by the Complainant’s representative was a result of the Registrar’s customization taking into account basic information collected from the representative. He says that he will ask the Registrar if it is possible to exclude links relating to insurance. He also disputes the Complainant’s allegation that the Domain Name previously resolved to the Complainant’s AXA Private Equity website and submits that this allegation should not be accepted in the absence of official timestamps.
7. Discussion and Findings
The Panel regards Mr. L. as the real Respondent and will refer to him as the Respondent in the following discussion.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is clear that these are cumulative requirements and it is therefore appropriate to consider each of them in turn.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered rights in the marks AXA and AXA PRIVATE EQUITY.
The Panel is also satisfied that the Domain Name is confusingly similar to these marks. “PE” is often used as an abbreviation for Private Equity. The Complainant is very well-known under the mark AXA and it is widely known to have a private equity division. The Panel considers that a substantial number of Internet users would assume that the Domain Name was registered by the Complainant for its group’s private equity business.
The Panel also considers that this case differs from the <asap.com> example put forward by the Respondent, since “asap” is in itself a recognizable abbreviation and that domain name would be most likely to be associated with that abbreviation. By contrast, “axape” does not appear to have any recognizable meaning other than as “AXA PE”, referring to AXA Private Equity.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Respondent’s claim that he intends to use the Domain Name for a start-up company called Advanced eXecutive Adult Professional Education is not substantiated by any evidence and the Panel regards it as implausible. At all events the Panel finds no demonstrable preparations to use the Domain Name for this purpose.
It is clear that the Respondent is not commonly known by the Domain Name. It is also apparent that the Respondent is not currently making any legitimate noncommercial or fair use of the Domain Name. Nor is there any evidence of demonstrable preparations for such use.
On the record the Panel does not find any other basis on which the Respondent could claim any right or legitimate interest in respect of the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel notes that the Respondent had not made any practical use of the Domain Name for any legitimate purpose of his own prior to the Complaint, and that on receipt of the Complaint he immediately offered the Domain Name for sale to the Complainant.
On the record as a whole, the Panel finds circumstances indicating that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the costs of registration. In accordance with paragraph 4(b)(i) of the UDRP, these circumstances constitute evidence that the Domain Name was registered and is being used in bad faith.
This presumption is not displaced by any plausible evidence in the case. In particular, the Panel rejects the Respondent’s claim to have registered the Domain Name for a start-up company called Advanced eXecutive Adult Professional Education, having regard to its inherent implausibility, the absence of any certification of this statement, and the lack of any evidence substantiating it.
The Panel accordingly concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
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, <axape.com>, be transferred to the Complainant.
Date: December 20, 2010