WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Frank Acocella, Axa Commercial Lending
Case No. D2015-1670
1. The Parties
The Complainant is AXA SA of Paris, France, represented by Selarl Candé - Blanchard - Ducamp, France.
The Respondent is Frank Acocella, Axa Commercial Lending of New York, United States of America (the “USA”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <axacommerciallending.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2015. On September 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2015, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2015. On October 20, 2015, the Center received the Respondent’s request for extension to submit his Response. An informal Response was filed with the Center on October 29, 2015.
The Center appointed Dawn Osborne as the sole panelist in this matter on November 17, 2015. 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 is a financial services and insurance company operating under the name AXA since 1985 and has trade mark registrations for AXA for financial services including in the USA where the Respondent is based.
The Domain Name registered in 2015, has been used to offer financial services in competition with the Complainant. The Respondent’s web site and social media sites have been shut down. The Respondent offered to give up the Domain Name for USD 5,600 which he says are out-of-pocket costs spent in relation to the Domain Name.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The AXA Group has a long standing history and its roots go back to the 18th Century. After a succession of mergers the trade name AXA was introduced in 1985. The Complainant is the holding company of the AXA Group. AXA is widely known for insurance savings and asset management. The Complainant owns registered trade marks for AXA for its services including in the USA where the Respondent is based. It also owns several AXA domain names including <axa.com>, <axa.net> and <axa.info>.
The Domain Name reproduces the Complainant’s trade mark AXA which has no particular meaning and, is therefore, highly distinctive. The adjunction of the terms “commercial lending” to the trade mark AXA in the Domain Name does not diminish the confusing similarity of the Domain Name with the Complainant’s trade mark. The distinctive part of the mark is AXA and “commercial lending” is descriptive of the services provided by the Complainant and will lead Internet users to believe the web site attached to the Domain Name is an official site of the Complainant.
The Complainant has never licensed or otherwise permitted the Respondent to use its trade marks or to register any domain name including the Complainant’s trade marks. There is no relationship whatsoever between the parties to the Complainant.
Respondent has not been commonly known by the Domain Name and is not making a fair use of the Domain Name. Offering financial services he must have been aware of the Complainant and its AXA mark.
The web site attached to the Domain Name suggests that this site belongs to Axa Commercial Lending LLC which does not seem to exist.
By using a domain name incorporating the Complainant’s AXA trade marks to offer the same services as the Complainant the Respondent is intentionally seeking to exploit user confusion by diverting Internet users away from the Complainant’s site to the Respondent’s site for the Respondent’s benefit by capitalizing on the fame of the Complainant’s mark. This cannot constitute bona fide use sufficient to legitimise any rights or interests in the Domain Name.
The Complainant’s argument that AXA was based on family initials is not credible as the Respondent’s initials are FA.
The logo chosen by the Respondent has some similarities with AXA’s one which enhances the likelihood of confusion.
The Respondent proposed to sell the Domain Name to the Complainant for USD 5,600. Offering to sell a domain name for valuable consideration in excess of documented out-of-pocket costs directly related to the Domain Name is registration and use in bad faith under the Policy.
The Respondent’s contentions can be summarised as follows:
The Respondent is a start up company and had no intention of creating any confusion with the Complainant, especially since he had never heard of them. The Respondent’s consulting business is completely different to the Complainant’s, no consumer would be misled and no confusion is likely. The Respondent’s logo is not remotely similar. The Respondent is not a direct lender of any financial or insurance product.
The Respondent’s company name was chosen based upon initials of family and a religious name of his son Andrew. The Respondent’s middle name is Xavier.
The Respondent’s company was called AXA Commercial Lending LLC, but upon being contacted by the Complainant’s brand department regarding potential infringement of trade marks it changed the company name. The Respondent’s web site, email and many social web sites were shut down presumably due to the Complainant’s allegation prior to a formal hearing. The Complainant refused to provide the Respondent with a telephone number of whom to contact to discuss this matter.
To show reasonableness and avoid unnecessary distraction from the Respondent’s business the Respondent explained to the Complainant that it was early enough for him to change the name of its company. It was only looking to recover its out-of-pocket expenses which to date have exceeded USD 5,600 for things like new marketing campaigns, design services, legal fees, new domain, web site etc. The Respondent was not acting with any bad intention and was simply seeking to resolve the issue. The Complainant is seeking to act in bad faith by destroying the Respondent’s business. The Respondent is still willing to cancel its web site which has been shut down for over two (2) months anyway. However it would like to keep the email address “firstname.lastname@example.org” for at least another eight (8) months to ensure all prior contacts continue to reach it. The Respondent agrees not to give out that email address and/or to advertise its use.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or confusing similarity
The Complainant has trade mark registrations consisting of or containing the AXA word mark around the world including the USA with first use going back to 1985 in the USA. The Domain Name is confusingly similar to the Complainant’s trade mark consisting of the Complainant’s AXA registered trademark and the generic text “commercial lending”, financial services being an area in which the Complainant operates. The distinctive part of the Domain Name is the AXA name. The addition of the non distinctive text “commercial lending” does nothing to prevent the confusing similarity of the Domain Name with the Complainant’s AXA trade mark especially since the Complainant operates in the financial services sector. As such the Panel holds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests of the Respondent
The Respondent has not presented any actual evidence as to the extent or precise nature of its use of the AXA mark or any evidence that it is commonly known by it. It has not explained why the Domain Name contains the words “commercial lending” but it then states in its Response that it is not a direct lender of any financial product. As such there is no evidence the Respondent has used the Domain Name for a bona fide offering of goods and services. The Respondent admits the Domain Name is for business use as suggested by the use of the word “commercial” in the Domain Name and does not appear to be arguing it is making noncommercial fair use of the name. The Respondent’s says his initials are FXA, although he has presented no actual evidence of his middle name “Xavier”. He refers to a son called “Andrew” and a religious name of his son, but does not actually say his son’s initials are “AXA” or produce any evidence of this. Given the lack of evidence of any legitimate or fair use and the evidence of confusing commercial use, as discussed below, the Panel finds that the Respondent has not used or made demonstrable preparations to use the Domain Name for a bona fide use in relation to goods or services or made noncommercial or legitimate fair use of it and holds that the second element of the Policy has been satisfied by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four (4) non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register a domain name equivalent to the Complainant’s trade mark with only generic terms added “commercial lending”, which reflects financial services, the same area in which the Complainant operates. This is particularly so as the Respondent states it is not a direct lender of any financial product. Further, in the opinion of the Panel, the use made of the Domain Name is deceptive. While the Panel notes that the logo used by the Respondent is different to that of the Complainant, it did not appear to be at all clear whether, as far as content is in evidence, the site to which the Domain Name pointed was or was not connected with the Complainant bearing in mind especially the use of the AXA name in conjunction with the suggestion that commercial lending services are being offered by the content of the Domain Name itself. It seems improbable that the Respondent would choose to use “commercial lending” in relation to the “AXA” name and, therefore have some interest in this area of business without being aware of the well-known AXA mark of the Complainant in the area of financial services. As such the Panel finds that the Domain Name has been registered and used in a way likely to confuse people into believing the Domain Name was registered to or connected to the Complainant. In the absence of a proper explanation from the Respondent as to its intentions regarding the use of the Domain Name, considering the well established nature of the Complainant and the suggestion within the meaning of the Domain Name itself that financial services are being offered, the Panel is satisfied that the Complainant has shown on the balance of probability that the Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion that its website or services offered on it are connected to the Complainant. As such the Panel finds that the Domain Name has been registered and used in bad faith satisfying the third limb of the Policy.
The Panel also notes that the Respondent has offered to sell the Domain Name for USD 5,600 citing out-of-pocket costs. While there is no actual evidence of the costs expended, in light of the findings above it is not necessary to make any further finding as to bad faith.
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 <axacommerciallending.com> be transferred to the Complainant.
Date: December 1, 2015