WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Registration Private, Domains by Proxy, LLC / Lincoln Salmon
Case No. D2016-0023
1. The Parties
The Complainant is AXA SA of Paris, France, represented by Selarl Candé Blanchard Ducamp Avocats, France.
The Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States of America / Lincoln Salmon of Oviedo, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <axainsuranceagency.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2016. On January 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 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 January 11, 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 January 18, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2016.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 17, 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 a financial services and insurance company operating under the name AXA since 1985. The Complainant owns trademark registrations for the mark AXA in multiple countries including, for example, the United States of America, where the Respondent is based.
The disputed domain name was registered on March 22, 2009. The disputed domain name is being used to display sponsored links.
5. Parties’ Contentions
The Complainant’s contentions can be summarized 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. The AXA Group is widely known for insurance savings and asset management. The Complainant owns registered trade marks for AXA for its services including in the United States of America where the Respondent is located.
The AXA Group also owns several domain names including <axa.com>, <axa.net>, <axa.info> and <axa.fr>.
The disputed domain name reproduces the Complainant’s trademark AXA which has no particular meaning and, is therefore, highly distinctive. The adjunction of the terms “insurance agency” to the AXA trademark in the disputed domain name does not diminish the confusing similarity of the disputed domain name with the Complainant’s trademark. The distinctive part of the disputed domain name is “axa” and “insurance agency” is descriptive of the services provided by the Complainant and will lead Internet users to believe the web site attached to the disputed domain name is an official site of the Complainant.
The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including the Complainant’s trademarks. There is no relationship whatsoever between the Respondent to the Complainant.
The Respondent has not been commonly known by the disputed domain name and is not making a fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
The Complaint states that the AXA trademark is well-known, and it is clear that the Respondent had in mind the Complainant’s trademark because of the addition of the terms “insurance agency”. Therefore, the Complainant concludes that the disputed domain name was registered in bad faith.
Finally, the Complainant states that the disputed domain name is being used in bad faith because it conducts Internet users to a parking site that proposes links to other insurance providers which compete with the Complainant. According to the Complaint, this qualifies as bad faith under paragraph 4(b)(iv) of the Policy.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed 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 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 trademark registrations consisting of or containing the AXA word mark around the world including the United States of America, with first use going back to 1985 in this country.
The disputed domain name is confusingly similar to the Complainant’s trademark, consisting of the Complainant’s AXA registered trademark and the generic terms “insurance” and “agency”, both terms evoking an insurance service being an area in which the Complainant operates.
The distinctive part of the disputed domain name is “axa”. The addition of the non distinctive terms “insurance agency” does nothing to prevent the confusing similarity of the disputed domain name with the Complainant’s AXA trademark especially since the Complainant operates in the insurance services sector.
As such, the Panel holds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use or demonstrable preparations to use, the disputed domain name or name corresponding to disputed domain name in connection with a bona fide offering of goods or services before any notice to them of the dispute, or
(ii) it (as individual, a business, or other organizations) has been commonly known by the disputed domain name, even if it acquired no trademark or service mark rights, or
(iii) it is making a legitimate non commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert Internet users or to tarnish the trademark or service mark at issue.
Once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, the burden shifts to the Respondent to prove its rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Panel is satisfied that the Respondent does not appear to have been commonly known by the disputed domain name, it is not a licensee or an agent of the Complainant, nor is in any way authorized to use the Complainant’s trademarks.
Furthermore, according to the Registrar’s verification, the disputed domain name was registered on March 22, 2009, long after the Complainant’s registration of its famous trademarks. The disputed domain name is composed of the Complainant´s trademark plus the generic terms “insurance agency” and the website to which it resolves contains pay-per -click links. Thus the Panel concludes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
Hence, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
The Complainant must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Because the disputed domain name contains the trademark AXA with the addition of the terms “insurance agency” (being insurance services the Complainant’s core business) it is hard to imagine that the Respondent did not have in mind the Complainant business when it registered the disputed domain name. Thus, it is the view of the Panel that the disputed domain name was registered in bad faith.
In addition, the Panel has visited the disputed domain name on March 1, 2016. The Respondent’s resolving website feature links to third-party sites that may be of interest to the Complainant´s customers and therefore divert business away from the Complainant. The Panel concludes that the Respondent’s use of the confusingly similar disputed domain name for such a purpose constitutes bad faith under Policy. Thus, the case comes within sub-paragraph 4(b)(iv) which provides “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
Thus, the Panel concludes that the disputed domain name was registered in bad faith and that it is 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 name <axainsuranceagency.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: March 1, 2016