WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Whois Privacy Protection Service, Inc. / Ugurcan Bulut, axathemes
Case No. D2016-1483
1. The Parties
The Complainant is AXA SA of Paris, France, represented by Selarl Candé Blanchard Ducamp Avocats, France.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America (“United States”) / Ugurcan Bulut, axathemes of Bucharest, Romania.
2. The Domain Name and Registrar
The disputed domain name <axathemes.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2016. On July 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2016, 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 an email communication to the Complainant on July 27, 2016 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 amendment to the Complaint on July 28, 2016.
The Center verified that the Complaint together with the amendment to the Complaint (hereinafter referred both together as 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 August 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2016.
On August 18 and 22, 2016, the Respondent sent emails to the Center. In the second email the Respondent indicated a willingness to transfer the disputed domain name. Taking into account the Respondent’s emails the Center sent an email to the Parties inviting the Complainant to request a suspension of the proceeding to implement a settlement agreement between the Parties. The Complainant requested by email the suspension of the proceeding on August 22, 2016. The Center notified to the Parties the suspension of the proceeding on August 22, 2016. The Complainant requested by email the reinstitution of the proceeding on October 24, 2016. The Center notified the Parties of the reinstitution of the proceeding on October 26, 2016 and informed the Respondent that the new due date for the Response was November 11, 2016. Accordingly, the Center notified the Parties that it will proceed to Panel Appointment process on November 16, 2016.
The Center appointed David J.A. Cairns as the sole panelist in this matter on November 24, 2016. 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 an insurance company. The AXA Group focuses on three major lines of businesses: property and casualty insurance, life insurance and savings and asset management. It has a long-standing history that goes back to 1817, and it is traded in the Paris Stock Exchange and listed in the New York Stock Exchange. The AXA Group is present in 64 countries worldwide.
The Complainant is the registered owner of AXA and AXATHEMA trademarks. These registrations include the European Union trademark no. 008772766 for the word mark AXA first registered on September 7, 2012, and the United States trademark no. 2072157 for the stylized word mark AXA, first registered on June 17, 1997. The Complainant is also the registered owner of the French trademark no. 3672099 for a design mark consisting of the prominent words AXA THEMA with AXA appearing in white stylized lettering inside a motif consisting of a blue square with a diagonal red line. THEMA appears in blue capital lettering. Beneath there is a red line, and a blue and red subscript that reads “réinventons / le conseil patrimonial”, as follows:
The Complainant also holds several domain name registrations, such as <axa.com>, registered on October 23, 1995 and <axa.fr>, registered on May 20, 1996, and the French subsidiary AXA FRANCE is the registered owner of the domain name <axathema.fr>, registered on July 19, 2011.
During April 2016, the Complainant and the Respondent exchanged a series of emails regarding the disputed domain name. The Complainant asserted its trademark rights and required that all use of the disputed domain named be discontinued and steps taken for its transfer to the Complainant. The Respondent answered on April 1, 2016.
On April 14, after the Complainant had made a final demand for the transfer of the disputed domain name, the Respondent referred to its earlier email and continued:
“I am saying again: I don’t see anything neither wrong nor illegal in here. How can you know that it refers AXA THEMES, maybe it’s AXAT HEMES or AXATH EMES.
I don’t think that you have any right to enforce people who have domain that includes AXA in it. Even if you have, you can pay me $50.000 as a transfer fee. Although you should have thought and bought all the domain names include AXA in the first place if you really care about your trademark rather than enforcing people afterwards.”
The Panel entered the disputed domain name in his web browser on December 5, 2016 and found no webpage associated with the disputed domain name.
5. Parties’ Contentions
The Complainant states that AXA is a widely known trademark and world leader in insurance, service and asset management. It cites a UDRP Decision in which the panel recognized its worldwide reputation (AXA SA v. Frank Van, WIPO Case No. D2014-0863).
The Complainant states that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. It states that AXA itself is a highly distinctive word and has no particular meaning. The Complainant states that the addition of the term “themes” does not diminish the confusing similarity of the disputed domain name with the Complainant’s AXA trademark. It states that domain names that consist of a trademark and a generic term have previously been held to be confusingly similar to a trademark. The Complainant asserts that the disputed domain name is also very similar to the Complainant’s trademark AXA THEMA and its domain name <axathema.fr>.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the fact that the Respondent was willing to sell the disputed domain name to the Complainant demonstrates that it does not have any rights or legitimate interests in the disputed domain name.
The Complainant asserts that it has never authorized the Respondent to use its trademarks or register a domain name and therefore there is no legal relationship between them that entitles the Respondent to use or register the disputed domain name.
The Complainant states that the Respondent’s interest in the disputed domain name cannot be taken seriously as it does not lead Internet users to an active web page. The Complainant states that passive holding of a domain name is not a legitimate noncommercial or fair use, and that the Respondent is making an illegitimate and commercial use of the disputed domain name.
The Complainant states that the disputed domain name has been registered and is being used in bad faith. It avers that the Respondent must have known of the existence of the AXA trademark as it is internationally famous, including in Romania, the home country of the Respondent.
The Complainant states that the similarity of the disputed domain name with the Complainant’s AXA and AXA THEMA trademarks means that the Respondent had these trademarks in mind when it registered the disputed domain name. It asserts that the Respondent chose the disputed domain name in bad faith in order to take advantage of the Complainant’s worldwide reputation.
The Complainant states that the Respondent’s passive holding of the disputed domain name constitutes bad faith. It also alleges that the Respondent is acting in in bad faith because the Complainant’s trademark is widely known and has a strong reputation, and after the Complainant sent a cease-and-desist letter and the Respondent offered to sell the disputed domain name to the Complainant for EUR 5,715 or USD 50,000.
Finally, the Complainant states that it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, and that the Respondent’s use of the disputed domain name is likely to disrupt the business of the Complainant.
The Complainant submitted in evidence a screen capture of a landing page associated with the disputed domain name showing a black cover. In the center-left part of the page there is a blue and red logo of the letter “A” in blue and red colours and a subscript of “axathemes”. Below the logo, three words (from left to right: “themeforest”, “dribble” and “contact”) are displayed in white and circled by a white line. The Complainant asserts these words are links to other web pages. The Complainant has submitted in evidence a screen capture of what it claims to be the landing page of the link contained in one of the words. The landing page offers website templates for sale.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not submit a formal response but made statements regarding his position in his emails of August 18 and August 22, 2016. The Respondent’s email of August 18, 2016 included the following statements:
“What do you want from me people? I already removed all the files from that domain and it’s empty. What else do you want me to do???”
“I can give you so many examples that are using AXA word in their domain names. What have you done for them so far? They are still out there. And what’s the logic behind forcing me to do things on behalf of trademark infringement? I have done nothing wrong! AXA insurance is a whole different thing, Axathemes is another. It's just an unofficial name (like a nickname) for an online marketplace for freelancer from all over the world”.
“I am neither trying to get benefits of name from AXA insurance nor it was my main purpose. Axa word means Axis in my language and I have never thought about Axa insurance!”
“I am telling you again. I already deleted the files from that domain name. It’s empty! What else do you want from me?”
The Respondent’s email of August 22, 2016 included the following statements:
“- If the domain name that I own is that much important for AXA, why they haven't bought it at the first
- How come they can blame me just because I bought a domain name which they have never thought about?
- How come they can enforce me to transfer the name for free that I have already paid considering the fact
that they have done nothing to the others who have axa word in their domain?
- Who is going to compensate my lose?
- Why you have done nothing to the other domain names that contains axa word in it? It's just a matter of making regular people uncomfortable? Especially considering the fact that I bought that domain name for only one year and there is only four months left.”
6. Discussion and Findings
The Panel is required to decide on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable (paragraph 15(a) of the Rules).
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; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed 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) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the trademark registration for the word AXA referred to above.
The disputed domain name is not identical to the Complainant’s AXA trademark. The disputed domain name contains the Complainant’s trademark entirely and adds the generic term “themes”, which means “topics” or “subjects”.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 states that “The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [...] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
Paragraph 1.9 of the WIPO Overview 2.0 states that “the addition of merely generic, descriptive or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP”. The term “themes” is a generic term.
In the present case, the Panel considers that on a visual comparison the disputed domain name is confusingly similar to the Complainant’s AXA trademark for the following reasons: (i) AXA is a distinctive word, notwithstanding its meaning (‘axis’) in Romanian, the native language of the Respondent; (ii) the disputed domain name incorporates the AXA trademark in its entirety; (iii) the AXA trademark remains easily recognizable and distinctive in the disputed domain name; (iv) ‘themes’ is a generic English term which does not distinguish the disputed domain name from the AXA trademark; and (v) in fact “theme” enhances the confusing similarity with the AXA trademark because “theme” is the English translation for the French word “thema” which is used in commerce by the Complainant in conjunction with the AXA trademark.
For the above reasons, the Panel considers that the disputed domain name is confusingly similar to the Complainant’s AXA trademark.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered trademark corresponding to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the Complainant’s AXA trademark or to register and use the disputed domain name; and (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name.
The Respondent’s communications allege that other third parties may be using or have used the AXA trademark in domain names. The Respondent also refers to the fact that the Complainant has never registered the disputed domain name itself, and also that the Respondent paid for its registration. None of these circumstances create rights or legitimate interests of the Respondent in the disputed domain name.
Paragraph 4(c) of the Policy provides three circumstances, any of which is sufficient to evidence that the Respondent has rights or legitimate interests in the disputed domain name. Firstly, in relation to paragraph 4(c)(i), the Panel is satisfied that the Respondent knew of the Complainant’s AXA trademark at the time of registration, and in fact has not denied this in his communications (asserting instead a mistaken belief in his right to the disputed domain name). Accordingly, the Respondent’s use of the disputed domain name has never been bona fide within the meaning of paragraph 4(c)(i) of the Policy as any offer of services has been based on the wrongful exploitation of the Complainant’s AXA trademark.
As for paragraph 4(c)(ii), there is no evidence that the Respondent is commonly known by the disputed domain name.
With regard to paragraph 4(c)(iii), the Respondent is clearly not making a legitimate noncommercial and fair use of the disputed domain name. The original use of the disputed domain name appears to have been commercial (implicitly acknowledged by the reference to an ‘online marketplace’ in his email of August 18, 2016) and after receiving the Complainant’s cease-and desist communication the Respondent sought a commercial advantage by offering the disputed domain name for sale at a price well exceeding his own out-of-pocket expenses.
For these reasons, the Panel finds that the second element of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that a disputed domain name was registered in bad faith and also that it is being used in bad faith. Paragraph 4(b) of the Policy sets out four circumstances “in particular but without limitation” which, if found to be present by a Panel, shall be evidence of the registration and use of a domain name in bad faith.
The Panel finds that bad faith within the meaning of paragraph 4(b)(iv) of the Policy is established in the present case. The Panel is satisfied that the Respondent intentionally registered and used the disputed domain name with full knowledge of the of the Complainant’s trademarks because: (i) AXA is a well-known international trademark; (ii) the disputed domain name closely resembles the Complainant’s AXA THEMA trademark, including reflecting the blue, red and white colour scheme of the Complainant’s design mark in the logo on the website hosted at the disputed domain name; and (iii) the Respondent has not denied his knowledge of the Complainant’s trademarks in his communications, and has instead asserted his belief in his right to use the disputed domain name.
The commercial purpose of the Respondent’s registration and use is demonstrated by his offers to sell the disputed domain name for prices well in excess of his out-of-pocket expenses, the templates offered for sale by means of links on the landing page of the disputed domain name, and the Respondent’s own reference to an ‘online marketplace’ in his email of August 18, 2016.
Accordingly, the Respondent has intentionally sought to attract for commercial gain Internet users to his website by creating a likelihood of confusion in that Internet users would expect to find either a website of the Complainant or a website that was affiliated to or sponsored by the Complainant at the disputed domain name.
Further, bad faith is independently established by the Respondent’s demands for compensation substantially in excess of his own costs in order to transfer the disputed domain name to the Complainant, after receipt of the Complainant’s cease-and-desist communications in April 2016.
For these reasons, the Panel finds that the Respondent has registered and used the disputed domain name in 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 <axathemes.com> be transferred to the Complainant.
David J.A. Cairns
Date: December 13, 2016