The Complainants are AXA S.A. and AXA Investment Managers S.A. of Paris, France, represented by Day Pitney LLP, United States of America.
The Respondent is Domains by Proxy, Inc. of Scottsdale, Arizona / Adam Long of Kansas City, Missouri, United States of America.
The disputed domain name <axa-pe.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2009. On April 7, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 7, 2009, GoDaddy.com, Inc. 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 April 8, 2009, 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 April 13, 2009. 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 April 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 7, 2009.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on May 13, 2009. 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.
The Complainants in this administrative proceeding are AXA, Société Anonyme (“AXA S.A.”) and AXA Investment Managers, Société Anonyme (“AXA Investment Managers”), both French corporations. “AXA S.A.” wholly owns the subsidiary “AXA Investment Managers” and the latter owns AXA Investment Managers Private Equity, Société Anonyme, which is often referred to as “AXA PE” (short for Axa Private Equity).
AXA Investment Managers (AXA IM) facilitates investment opportunities around the world with a network of investment centers in twenty-one countries and a staff of more than 3,100. It operates a web site at <axa-im.com>.
AXA PE offers institutional and high net worth investors the opportunity to invest in private equity funds and is active in all types of private equity including, but not limited, to leveraged buy-out, venture, expansion, recovery, emerging markets, primary and secondary funds of funds. It was created in 1996 and it has offices in Paris, Frankfurt, London, Milan, New York, Singapore, Zurich and Vienna. It is a leader company in the private equity market with US$ 26 billion of assets managed or advised across its multiple generations of direct funds, funds of funds and third-party mandates.
AXA Group is listed as the 15th largest organization in the world on the 2008 Fortune Global 500 list (based on revenue), with 93.6 billion euros in revenue as of December 31, 2007.
AXA is a worldwide leader in financial protection and wealth management and it had € 981 million in assets under management as of December 31, 2008; the AXA Group has more than 65 million clients worldwide and more than 135,000 employees.
The AXA trade name was developed in 1982.
The Complainant AXA S.A. owns numerous U.S. federal trademark registrations for “AXA” (the “AXA Marks”), such as registrations for AXA No. 1.679.597 registered on March 17, 1992 for actuarial services and No. 2.072.157 registered on June 17, 1997 for insurance services; registration for AXA Investments Managers No 2.237.424 registered on April 4, 2000 for investments and business services and registrations for AXA Private Equity No. 2.837.673 registered on May 4 2004 for financial services and No. 2.942.802, registered on April 19, 2005 for telecommunications and financial services.
The Complainant AXA S.A. is also the owner of several additional registrations for its AXA trademarks in numerous countries all over the world.
The disputed domain name was registered on November 5, 2008.
The contested domain name currently redirects to the Complainants' “www.axa-im.com.” website.
Complainants contend that AXA mark is famous and entitled to the broadest possible protection under the law, as a result of its worldwide size, the money under management, the workforce employed, the arbitrary and original name under which it operates.
In light of these factual arguments Complainants contend that AXA mark has acquired an extensive reputation and goodwill.
Furthermore Complainants contend that also the names AXA Private Equity and its abbreviation AXA PE are independently distinctive and well known to the investment community
AXA PRIVATE EQUITY is registered as alone trademark at the U.S. Patent and Trademark Office.
AXA PE is commonly used to refer to AXA Private Equity and consumers immediately associate the AXA PE mark with AXA and its high quality products and services. In light of this use, Complainants contend that AXA has common law trademark rights in and to the term AXA PE.
Complainants contend that the domain name <axa-pe.com> is identical or confusingly similar to AXA trademarks because it incorporates the entirety of Complainants' famous AXA trademark, it consists of a common abbreviation for the name of one of Complainants' companies only with the addiction of a hyphen, it is a slight variation of the axaprivateequity.com domain name and finally it corresponds to AXA common law rights in AXA PE.
Complainants contend that the Respondent has no rights or legitimate interests in respect of the contested domain name.
The Respondent is not generally known by the domain name and has never conducted a legitimate offline business under the name “AXA” or “AXA PE”, or “AXA IM.”.
There is no relationship between Complainants and Respondent and the Respondent was not licensed or otherwise permitted to use a domain name, which incorporates in their entirety or is confusingly similar to Complainants' AXA marks.
Moreover, Respondent can have no right or legitimate interest in the domain name because he was certainly aware of the AXA trademark before any use or demonstrable preparation to use the relevant domain name, as it is demonstrated also by the fact that the disputed domain redirects to Complaint's <AXA-im.com> website. The disputed domain name is used or could be used, at least, to generate click through income.
Complainants contend that the domain name <axa-pe.com> has been registered and is being used in bad faith.
Complainants contend that the domain name at issue is deliberately used for commercial gain to attract Internet users who, being familiar with the well known AXA marks, would be confused as to the source, sponsorship or endorsement of Respondent's website or the products or services offered through the website.
The Respondent was certainly aware of Complainants' AXA Marks at the time it registered the domain name.
Complainants contend that Respondent's bad faith is evidenced even by the fact that in the contested domain name the exact AXA trademark is simply combined with a common abbreviation for Private Equity: the result is a confusingly similar domain name.
Moreover, the fact that Respondent is using the AXA Marks to redirect traffic to the legitimate <axa-im.com> website is evidence of bad faith since this circumstance demonstrates that the Respondent is clearly seeking to profit from an unauthorized association with Complainants' AXA Marks.
Finally, the Respondent's bad faith is also proved by the fact that in the absence of any license or permission from the Complainants to use their well known mark or to apply for or use any domain name incorporating that trademark, no actual or contemplated bona fide or legitimate use of the domain name can be claimed by Respondent.
The Respondent did not reply to the Complainant's contentions.
Pursuant to paragraph 4(a) of the Policy, Complainants must prove each of the following three elements:
(i) the domain name registered by the respondent 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 registered by the respondent has been registered and is being used in bad faith.
The Panel finds that the disputed domain name is confusingly similar to the Complainants' AXA trademark, a widely-known mark in which Complainants have established rights through registration and extensive use, at least, in connection with the sector of insurance and financial industry services.
The domain name at issue incorporates in its entirety Complainants' trademark AXA combined with the well-known abbreviation PE, used for one of the operating divisions of AXA, the AXA Private Equity Company. The only other differences are the insertion of a hyphen between the word AXA and the abbreviation PE and the suffix “.com”.
The addition of a generic term – that gives association to Complainants' business activity and services – is not enough to prevent a confusing similarity between the domain name and the incorporated trademark.
There are several WIPO UDRP decisions which state that in determining similarity between a trademark and a domain name the addition of a generic/descriptive term which merely indicates the business area does not eliminate the likelihood of confusion.
On the contrary, considering that the abbreviation “per” is commonly used by the financial and investment community to refer to the “private equity” funds, the Panel finds that the adding of the term “per”, that clearly relates to one of the Complainants' business activity, is likely to enhance the confusion and to lead the customers to believe that the disputed domain name is effectively linked to or affiliated with or connected to the Complainants (see America Online Inc. v. Detach Communication Inc., WIPO Case No. D2001-0055, GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195, Red Bull GmbH v. Chair Larbthanasub, WIPO Case No. D2003-0709, Novo Nordisk A/S v. Mr. Jonathan Valicenti, WIPO Case No. D2005-0563 and Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987).
The Panel believes that people viewing the disputed domain name without awareness of its content may think that the domain name is in some way connected and associated with the Complainants: this situation is known as “initial interest confusion” (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206, CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988).
With regards to the suffix “.com” (which indicates that the domain name is registered in the .com gTLD), as it was established in many previous decisions (see A.P. Møller v.Web Society, WIPO Case No. D2000-0135, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, Arab Bank for Investment And Foreign Trade v. Mr. Kenn Wagenheim / firstname.lastname@example.org, WIPO Case No. D2000-1400, Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457) does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.
Therefore, the Panel finds that Complainants have satisfied the first element of the Policy.
The Respondent did not reply to the Complainants' contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainants.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the domain name, such as:
(i) use or preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute, or
(ii) being commonly known by the domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the domain name.
The Respondent is not generally known by the AXA mark or the disputed domain name, and it appears not to have acquired any trademark or service mark rights in that name or mark, and seems not to have conducted a legitimate offline business under the name “AXA” or “AXA PE” or “AXA IM”.
The Complainants state that there is and has never been a relationship between the Complainants and the Respondent. The Respondent is not a licensee of the Complainants and no authorization has been granted to the Respondent to use the trademark AXA or to apply for any domain name incorporating the Complainants' trademarks.
Furthermore, the use of the disputed domain names cannot be considered a bona fide offering of goods or services. The Respondent is merely redirecting the disputed domain name to the Complainant's website at <axa-im.com>. Such use cannot be considered bona fide use in the circumstances of this case.
Finally, the Panel finds that the Respondent's lack of rights or legitimate interests in the disputed domain name is also supported by the fact that no response was filed by the Respondent and the Respondent has thus not ebutted the Complainant's prima facie case.
According to earlier decisions (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, and Giorgio Armani, GA Modefine S.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090) “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights”.
Therefore, based on the evidence, the Panel is satisfied that the second element is met.
The Panel finds that the domain name was registered and is being used in bad faith.
The Panel finds that the Complainants' AXA trademark and activities are well established and very widely known, especially in the field of insurance and financial services and considering the widespread use and reputation of AXA name and mark, the inherent distinctiveness of the mark, and Complainants' prior trademark registrations, the Respondent most likely was aware of it when it registered the domain name at issue.
The choice of the disputed domain name by the Respondent, in the Panel's view, could not result from a mere coincidence. The Respondent's awareness of the Complainants' activity and rights is suggested by two facts:
- the Respondent registered a domain name just consisting of the Complainants' mark AXA and the abbreviation “pe” commonly used for “private equity”; consequently the disputed domain name appears to relate to one of the Complainants' business activities and, especially, to one of the operating divisions of AXA, the AXA Private Equity company, generally called AXA PE;
- at the time of its registration, as well as currently, the disputed domain name resolved to the Complainant AXA Investment Managers' site.
In line with other prior decisions (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395), the Panel believes that, in the absence of any right or legitimate interest and lacking any contrary evidence, the Respondent's registration of a domain name confusingly similar to the Complainant's widely-known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411).
Concerning the use of the domain name, Complainants have proven that the disputed domain name resolves to the home page of Complainant AXA Investment Managers's website, “www.axa-im.com”; this circumstance is evidenced by the web site title description and meta description in the WhoIs record for <axa-pe.com> (see Complainant's Exhibit A).
Also with regard to this issue, the Panel shares the Complainants' view and believes that the Respondent, registered and is using the disputed domain name in bad faith. (see American Institute of Floral Designers v. Palm Coast Floral, Inc., WIPO Case No. D2000-0335; America Online, Inc. v. AOL International, WIPO Case No. D2000-0654; Encyclopedia Britannica Inc. v. Shedon.com, WIPO Case No. D2000-0753 and Infospace.com v. Tenenbaum Ofer, WIPO Case No. D2000-0075).
By exploiting the renown of the AXA trademark, the Respondent appears to be seeking to profit from an unauthorized association with said mark, attracting hits and possibly obtaining revenue from the diverted traffic if not acquiring sensitive personal and financial details of the Complainants' customers (besides the decisions mentioned by the Complainants, see Habib Bank AG Zurich v. Dave WestCase, WIPO Case No. D2004-0041 and Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955; see also Altavista Company v. Brunosousa, aka Bruno Sousa, WIPO Case No. D2002-0109, InterContinental Hotels Group v. Dennis Stewart, WIPO Case No. DSC2008-0001 in which the contested domain name redirects to the Complainant's official web-site).
In light of the above circumstances, the Panel is satisfied that the third element is met and that the domain name <axa-pe.com>, was registered and is being used in bad faith.
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 <axa-pe.com> be transferred to the Complainants.
Dated: May 27, 2009