WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Domains by Proxy, LLC / Axagroup
Case No. D2012-2523
1. The Parties
The Complainant is AXA SA of Paris, France, represented by Selarl de Candé-Blanchard, France.
The Respondents are Domains by Proxy, LLC of Scottsdale, Arizona, United States of America and Axagroup, Stratford City, London, United Kingdom of Great Britain and Northern Ireland/Paris, France.
2. The Domain Name and Registrar
The disputed domain name <axagroup.biz> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2012. On December 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2012, 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 a Notice of Change of Registrant Information and a Deficiency Notification email communication to the Complainant on January 9, 2013 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 amended Complaint on January 11, 2013.
The Center verified that the Complaint together with the amended 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 January 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2013. An informal Response email communication was received by the Center on January 19, 2013.
On January 21, 2013, the Center sent an email communication to the Parties suggesting a possible settlement of the dispute and required the Complainant to submit its comments until January 24, 2013. On January 25, 2013 and absent any communication from the Complainant, the Center sent an e-mail communication to the Parties confirming the progression of these proceedings without suspension and recalling the deadline to submit a Response. The Respondent did not submit any further Response. On February 5, 2013, the Center sent an email communication to the parties informing that we would proceed to appoint the Panel.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on February 13, 2013. 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
According to the GoDaddy.com WhoIs database, the disputed domain name was registered on September 7, 2012. It was registered via Domains By Proxy, LLC, a privacy shield service provider. After the filing of the Complaint, the Complainant amended it to take the entity disclosed by the Registrar behind the registration into account. The second Respondent is known as Axagroup, localized in the UK and in France.
The disputed domain name <axagroup.biz> currently resolves to a pop up page requesting a username and password. The disputed domain name at one time resolved to an active website with content.
The Complainant AXA SA is a world leader in insurance, savings and assets management. The Group is present in 57 countries around the world and owns numerous trademarks for AXA in various countries.
The AXA trademark is known internationally and the Complainant also owns the AXA GROUP SOLUTIONS and GROUPE AXA trademarks.
5. Parties’ Contentions
First, the Complainant asserts that the disputed domain name <axagroup.biz> is confusingly similar to its world famous trademarks AXA, AXA GROUP SOLUTIONS and GROUPE AXA. The Complainant further argues that the addition of the term “group” is not relevant and does not prevent a finding of confusing similarity.
Second, the Complainant alleges that the Respondent has no right or legitimate interest in the disputed domain name. The Complainant further claims that no license or any authorization has been given to the Respondent to use the well-known trademark AXA in the disputed domain name. It also claims that the inclusion of a well-known trademark in the domain name is evidence that the Respondent has no rights or legitimate interest in <axagroup.biz>.
Third, the Complainant contends that the disputed domain name was registered and is used in bad faith due to the worldwide reputation of the trademark AXA. The Complainant claims that the Respondent could not have ignored the trademark AXA when registering <axagroup.biz>. Furthermore, the Complainant asserts that the Respondent used the disputed domain name in bad faith by creating a likelihood of confusion with the Complainant’s trademark, in order to attract Internet users for commercial gains.
On January 19, 2013, a person named A. Kapoor simply replied that the company Axagroup was registered according to Indian law and that there was no harm caused to the Complainant’s trademark AXA. Mr. Kapoor offered to sell the domain name for USD 10.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The first element under the paragraph 4(a)(i) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Panel finds that the Complainant has clearly established its rights in the registered trademarks AXA GROUP SOLUTIONS, GROUPE AXA and AXA as evidenced by the trademark registrations submitted with the Complaint. Previous UDRP decisions also held that the AXA trademark is well known internationally (Finaxa S.A v. Spiral Matrix, WIPO Case No. D2005-1044; FINAXA v. Managing Trustee/Meridian Global, WIPO Case No. D2004-0509 and AXA SA, AXA BANQUE SA v. Glenn Snapp, WIPO Case No. D2009-0207).
The Panel finds that the disputed domain name <axagroup.biz> is not identical to the Complainant’s AXA, however there is no doubt to the Panel that there is a confusing similarity. The disputed domain name incorporates the mark AXA in its entirety: previous UDRP decisions have held that a domain name is confusingly similar to a trademark when it comprises a well-known mark in its entirety. The Panel also finds that the disputed domain name <axagroup.biz> is confusingly similar to the Complainant’s trademark AXA GROUP SOLUTIONS given that it fully integrates its highly distinctive element “axa” and it is quasi-identical to the Complainant’s trademark GROUPE AXA, the only difference consisting of the English translation of the mark which supposed the suppression of the letter “e” and the inversion of the terms “axa” and “group”.
Furthermore, the Panel finds the addition of the generic term “group” is not sufficient to exclude similarity, especially with a world famous trademark such as AXA (Pepsico Inc. v. Johan De Broyer, WIPO Case No. D2007-1021; L’OREAL v. Lewis Cheng, WIPO Case No. D2008-0437; L’Oreal v. Domain Park Limited, WIPO Case No. D2008-0072). On the contrary, the term “group” increases the impression of confusion as it corresponds to the English translation of the term “groupe” from Complainant’s trademark GROUPE AXA. The disputed domain name is likely to be perceived as part of the corporate portal of the Complainant.
Finally, when it comes to the adjunction of gTLD “.biz”, it is now well established that the generic top-level domain should not be taken into account when evaluating the identity or similarity between the disputed domain name and the Complainant’s trademark (F. Hoffman-La Roche AG v. Steven Pratt, WIPO Case No. D2009-0589 and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., WIPO Case No. D2009-0828).
The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use or demonstrable preparations to use, the contested domain name or name corresponding to disputed domain name in connection with a bona fide offering of goods or services before any notice to them of the dispute, or
(ii) it (as individual, a business, or other organizations) has been commonly known by the disputed domain name, even if it acquired no trademark or service mark rights, or
(iii) it is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert Internet users or to tarnish the trademark or service mark at issue.
Once the Complainant has made a prima facie case that the Respondent lacks legitimate interest or right, the burden shifts to the Respondent to prove its right or legitimate interest in the domain name (F. Hoffman-La Roche AG v. Steven Pratt, Supra and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., Supra).
The Panel believes that no license or authorization of any kind has been given to the Respondent, and that it never had a business relationship with the Complainant.
Considering the Complainant’s AXA trademark’s notoriety and as established in previous UDRP decisions, the Panel considers that any use which the Respondent would make of any domain name incorporating the Complainant’s trademark AXA would violate the exclusive trademark rights which the Complainant has long held in its mark under the circumstances (Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314).
The Panel noticed that a login and password are now required to access the website. But the Complainant showed that the disputed domain name used to direct to a website which reproduced Complainant’s trademarks AXA as well as their colours and designs. It seems that the Respondent tried to lure Internet users and more particularly the Complainant’s customers into thinking that the website was run by the Complainant. This is obviously not in favour of any legitimate interest justifying the registration of the domain name.
Taking all of these elements into consideration, the Respondent is deriving advantage from Internet users’ confusion. The Panel accepts that such behaviour does not provide a right or legitimate interest for the purposes of the Policy, in accordance with previous UDRP panel decisions such as Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258.
Following the filing of the Complaint, the registrar revealed the entity behind the privacy shield service: Axagroup localized in Paris, France. It seems therefore that the name Axagroup as well as the address are false and that these informations constitute usurpation of the Complainant’s identity as it refers to its head office address in France. A person named Mr. Kapoor from Axa Commodity Trades Pvt. Ltd replied to the Complaint. The Panel ignores the identity of this person and its relationship with the Complainant for purpose of its determination. At this stage of the UDRP procedure, the true identity and contact details of the registrant are likely still unknown. This is certainly not in favor of legitimate interest.
In the present case, the Panel finds that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests with respect to the disputed domain name. The Respondent did not explain the right or legitimate interest behind the registration.
Consequently, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which if found shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 Respondent’s web site or location or of a product or service on the web site or location.
It should be noted that the circumstances of bad faith are not limited to the above.
A. Registered in Bad Faith
As it has been held in previous UDRP decisions, the Panel confirms that AXA is a well-known trademark with an international reputation (Finaxa S.A v. Spiral Matrix, WIPO Case No. D2005-1044; Finaxa v. Managing Trustee/Meridian Global, WIPO Case No. D2004-0509 and AXA SA, AXA BANQUE SA v. Glenn Snapp, WIPO Case No. D2009-0207).
Considering the fact the trademark AXA is well known or at least known with 96 million customers in 57 different countries, the Panel believes that the Respondent knew the existence of the Complainant at the time of the registration of the disputed domain name. (See Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955; Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556).
In previous UDRP decisions, panels have considered that in certain circumstances when the Complainant’s trademark is known, such as AXA, the Respondent’s bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088: “Bad faith can be presumed based on the fame of The Complainant’s marks, such that the Respondent was aware or should have been aware of The Complainant’s well-known marks and claims of rights thereto”).
Moreover, a trademark search would have revealed the existence of the Complainant’s prior trademark rights. The Respondents failure to do so is a contributory factor to its bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling, WIPO Case No. D2008-0226).
Finally, the Complainant’s trademark is a fanciful word. The Panel concludes that it is actually likely that the fame of the trademark AXA was the reason that decided the Respondent to register the disputed domain name. Had said mark been unknown, it would have been far less appealing in the Panel’s opinion.
These findings lead the Panel to conclude that the disputed domain name has been registered in bad faith by the Respondent.
In order to meet the requirement of paragraph 4(a)(iii) of the Policy, it is not sufficient to prove that the disputed domain name is registered in bad faith, it is also necessary to prove that the disputed domain name is being used in bad faith.
B. Used in Bad Faith
When the Complaint was filed, the disputed domain name used to direct towards a website which imitated the AXA trademarks as well as their colours and designs and referred to the Complainant’s activities. According to the Complainant, the Respondent went further than just imitating the Complainant’s official websites. Indeed, callers were asked to deposit money when one called the telephone number mentioned on the website. It seems therefore that the website was used to extort money from Internet users and more particularly from the Complainant’s customers. The Respondent has not contested that.
When this decision was drafted by the Panel, the disputed domain named directed towards a page requesting a user name and a password. It is very likely that the Respondent is behind this change. The Panel does not believe that this change is sufficient to consider that the disputed domain name is not used in bad faith. Indeed, on its face, the user name/password pop up still seems to be related to an AXA website.
Therefore, the Panel finds that the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s renowned trademark as to the source, sponsorship, affiliation, or endorsement of its website for fraudulent gain and earning.
For all of these reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.
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 <axagroup.biz> be transferred to the Complainant.
Date: February 27, 2013