WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AXA SA v. Ruth Perez

Case No. D2014-1619

1. The Parties

The Complainant is AXA SA of Paris, France, represented by Selarl Candé Blanchard Ducamp Avocats, France.

The Respondent is Ruth Perez of Glenwood, Georgia, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <axatube.net> is registered with EvoPlus Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2014. On September 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 24, 2014.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2014.

The Center appointed Andrea Dawson as the sole panelist in this matter on November 19, 2014. 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, AXA S.A, is a worldwide leader in insurance, savings and asset management, serving over 96 million customers. The Complainant’s major line of business is property and casualty insurance, life insurance and savings and asset management.

The Complainant is present in over 61 countries, including countries found in Europe, Asia and North America.

The Complainant is the owner of the trademark AXA and a number of domain names such as <axa.com>, <axa.net> and <axa.info>.

The disputed domain name <axatube.net> was registered on August 29, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant states that the dominant part of the disputed domain name comprises the term “axa”, identical to the registered trademark AXA, registered by the Complainant as trademarks and domain names in numerous countries all over the world. In addition to the trademark AXA, the disputed domain name also comprises the suffix “tube”. The Complainant further adds that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes.

The Complainant indicates that the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said trademark. The Complainant further states that the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the AXA trademark preceded the registration of the disputed domain name for years. The Complainant finally contends that the Respondent is not commonly known by the name “axa”, in any way affiliated with the Complainant, nor authorized or licensed to use the AXA trademark, or to seek registration of any domain name incorporating said trademark.

Finally, the Complainant alleges that it is unlikely that the Respondent was unaware of the existence of the Complainant’s trademark when it registered the disputed domain name. In light of the reputation of the Complainant’s AXA trademark, the Respondent’s imitation of the said trademark clearly proves that the Respondent was aware of the existence of the Complainant’s trademark, especially since the term “axa” has no meaning in any language.

The Complainant additionally states that the Respondent is using the disputed domain name to offer links to dating pornographic websites and to derive pay-per-click revenue.

Consequently, in view of the above-mentioned circumstances, it is established that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests that the Panel order the transfer of the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:

(i) The disputed 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 disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has been able to demonstrate that it has rights to the trademark AXA.

The disputed domain name consists of the term “axa”, with the addition of the generic term “tube”. As indicated by the Complainant, previous UDRP panels have found that the mere addition of a generic term to a trademark is not sufficient to eliminate the confusing similarity with the mentioned trademark.

For the above-cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.

However, many prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name the burden of proof shifts to the respondent to demonstrate that it does have rights or legitimate interests in the domain name, in the absence of which the panel is entitled to rely on the complainant’s prima facie case that the respondent lacks such rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; see also Dow Jones & Company and Dow Jones LP v. The Hephzibah Intro-Net Project Limited, WIPO Case No. D2000-0704)

The present Panel agrees that the Complainant needs only to make out a prima facie case and finds that it has met that standard. The Panel will consider the arguments of the Complainant that the Respondent did not have any registered trademark or service mark corresponding to the disputed domain name. That the Respondent is not commonly known by the name “axa”, is in any way affiliated with the Complainant, nor authorized or licensed to use the AXA trademark, nor authorized to seek registration of any domain name incorporating said trademark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but intentionally misleadingly consumers to its website for commercial gain.

Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.

The Panel considers that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant’s rights in the Complainant’s trademarks and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademarks at the time of the registration of the disputed domain name.

As mentioned by the Complainant, it is unlikely that the Respondent was unaware of Complainant when it registered the disputed domain name, since the Complainant owns numerous trademarks that are well- known throughout the world; therefore, in the Panel’s assessment, it is impossible to conclude that the Respondent did not have this trademark in mind when registering the disputed domain name.

In addition to the above, the Panel accepts the arguments of the Complainant that the disputed domain name was registered and used in bad faith as the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website.

The Respondent uses the disputed domain name to direct Internet users to a webpage displaying links to “AXA annuity”, “AXA insurance” and “property records”, in addition to other mentions not related to insurance services. Furthermore, the links redirect Internet users to pornographic websites. These pay-per-click links are likely to generate revenues. Therefore, the Panel is of the opinion that the Respondent is taking undue advantage of the Complainant’s trademark to generate profits.

For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith; consequently, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 <axatube.net> be transferred to the Complainant.

Andrea Dawson
Sole Panelist
Date: December 2, 2014