WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Ruben Weiner
Case No. D2014-0458
1. The Parties
The Complainant is AXA SA of Paris, France, represented by Selarl Candé - Blanchard - Ducamp, France.
The Respondent is Ruben Weiner of Apeldoom, the Netherlands.
2. The Domain Names and Registrar
The disputed domain names <axaporn.com> and <axatube.com> are registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2014. On March 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 26 and 31, 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on May 9, 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 has provided insurance and other financial services under the trademark AXA since 1985. It employs 214.000 people world-wide and has 96 million customers. It has registered the trademark AXA in several countries, for example in the European Union the mark AXA (fig) No. 000373894 was registered on July 29, 1998, and International Trademark No. 490030, registered on December 05, 1984 “designating, inter alia, the Benelux”.
The disputed domain name <axatube.com> was registered on June 30, 2008 and the disputed domain name <axaporn.com> on July 5, 2011. Both websites under the disputed domain names contain explicit pornographic advertisings.
5. Parties’ Contentions
The disputed domain names are confusingly similar to the Complainant’s trademark AXA, because they combine that trademark with merely descriptive English terms. The term “tube” means “television” or a “computer terminal” and is a common suffix for Internet sites with video material. The term “porn” is an abbreviated form of pornographic. These descriptive terms lack any distinctive character.
The Complainant has not licensed or otherwise permitted the Respondent to use its trademarks and there is no relationship whatsoever between the parties. The Respondent is not known by the disputed domain names and is making commercial use of them.
Due to the reputation of the Complainant’s trademark, the Respondent was obviously aware of the Complainant’s AXA trademark when registering the disputed domain names. The word “axa” has no dictionary meaning. The disputed domain names were registered in order to take advantage of the Complainant’s reputation.
The Respondent is using the disputed domain names to offer pornographic content and to derive pay-per-click revenue. This “porno-squatting” has been found by previous UDRP panels to be evidence of use and registration of domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names incorporate the Complainant’s trademark AXA in its entirety. The mark is combined with the English terms “tube” and “porn”. The Panel accepts that these words are descriptive elements when used in connection with websites offering videos and pornographic material.
The mere addition of a generic or descriptive word to a trademark within a domain name does not typically avoid confusing similarity between that domain name and an earlier trademark (see inter alia, Caesars Entertainment, Inc. v. Michael Ulrich/HardcoreDVD.com, WIPO Case No. D2004-0463; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Marko Tusla d/b/a/ Toshiba-Club.com, WIPO Case No. D2004-1066; International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028; Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056; Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778; Amazon.com, Inc. v. PDC, WIPO Case No. D2003-0076; and National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr., WIPO Case No. D2001-1338).
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The consensus view among UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing the absence of such rights or legitimate interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names by asserting that it has not licensed nor authorized the use or registration of the disputed domain names; that the Respondent is not commonly known by that name; and that the Respondent is making a commercial use of the disputed domain names and is taking advantage of the Complainant’s trademark and reputation. The Respondent has chosen not to reply to these contentions.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant has submitted evidence of the use and reputation of its AXA trademark and the Panel finds it unlikely that the Respondent would not have been aware of the Complainant’s trademark when registering the disputed domain names.
The Panel also considers that using a domain name that is confusingly similar to a well-known trademark for pornographic services, especially when also deriving pay-per-click revenue, advertising links to third-party pornographic websites, is evidence of use and registration of the disputed domain names in bad faith. One on hand, it may harm the reputation of the trademark and on the other hand, the Respondent is using the Complainant’s mark to attract Internet users to its websites for commercial gain.
The Panel agrees with the findings of the panel in Prada S.A. v. Roberto Baggio, WIPO Case No. D2009-1187 when it found that “[t]he facts of this case constitute a classic example of “porno-squatting” in which confusion with a well-known trade mark is used to divert customers to a pornographic website for commercial purposes. ‘Porno-squatting’ constitutes a paradigm case of registration in bad faith as the decisions of many panels have established, not least in relation to the PRADA trade mark in Prada S.A. v. Ms. Loredana Salvatori, WIPO Case No. D2007-0064”.
On this basis the Panel finds that the disputed domain names were registered and are being used 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 names <axaporn.com> and <axatube.com> be transferred to the Complainant.
Date: May 19, 2014