WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA S.A. v. Nevile James, Stiffkey Media
Case No. D2017-0912
1. The Parties
The Complainant is AXA S.A. of Paris, France, represented by Selarl Candé - Blanchard - Ducamp, France.
The Respondent is Nevile James, Stiffkey Media of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), self- represented.
2. The Domain Name and Registrar
The disputed domain name <queenaxa.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 5, 2017. On May 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2017, 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 May 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2017. The Response was filed with the Center on May 30, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 15, 2017. 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.
In light of claims made in the Response by the Respondent (discussed further below), on June 29, 2017, the Panel issued the following Panel Order under paragraph 12 of the Rules, set out in part:
"By [July 7, 2017], the Respondent may file with the Center and serve simultaneously on the Complainant any evidence in corroboration of his claims:
a. about Ms. [S's] given/birth name;
b. her use of the name "Queen Axa"; and
c. her consent to the Respondent's use of the disputed domain name."
A further time was specified for the Complainant to submit a Reply in response to any further evidence submitted by the Respondent pursuant to the Panel Order and the time for the decision to be submitted was extended accordingly.
No further filings were received from either party.
4. Factual Background
According to the Complaint, the trade name "Axa" was first introduced in 1985. In 1988, the parent entity known as Axa SA was listed on the Paris stock exchange. In 1996, it also became listed on the New York Stock Exchange. The Complainant's group can be traced back to the 18th century. It is the product of a number of mergers, acquisitions and name changes involving insurance companies around the world.
The corporate group of which the Complainant is the parent conducts numerous activities in three major lines of business: property and casualty insurance, life insurance and savings, and asset management. The Axa group employs 166,000 people worldwide and has over 103 million customers. It has operations in some 64 countries.
It has numerous registered trademarks, including:
- International trademark AXA n°490 030 registered from December 5, 1984 in classes 35, 36 and 39, in particular for "advertising and business; insurance and financial services" designating, inter alia, Algeria, Austria, Bosnia and Herzegovina, Croatia, Egypt, Spain, Germany, Hungary, Italy, Morocco, Monaco, Portugal, Democratic People's Republic of North Korea, Romania, Russian Federation, Sudan, Ukraine, Viet Nam, Benelux and Switzerland.
- European Union figurative trademark for AXA n°373 894 registered on July 29, 1998 in classes 35 and 36, in particular for "insurance; personal insurance; life insurance; bereavement insurance".
- European Union trademark AXA n°008 772 766 registered on September 7, 2012 in classes 35 and 36 in particular for the following goods: "advertising; assistance to commercial or industrial firms in the conduct of their business; insurance and finance; banking services".
- French trademark AXA n°1 270 658 registered on January 10, 1984 in classes 35, 36 and 42, in particular for "insurance and finance" and duly renewed.
- United Kingdom trademark AXA n° 1272911 registered from September 30, 1988 in classes 35 and 36 in particular for "insurance services; financial banking services".
According to the Response, the Respondent has been a producer of adult entertainment material for more than 20 years. The Respondent says his material is legal and accessible via the Internet.
The Respondent registered the disputed domain name on October 10, 2016.
At the time this decision is being prepared, the disputed domain name resolves to a website headed "Queen Axa - I am Queen Axa-Sovereign Ruler of Planet Lesbia". There are also a number of pictures of the lady in question in rather revealing poses with an invitation for other females wishing to avail themselves of her services to get in contact.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the registered trademarks identified in Section 4 above. In addition, the Panel considers that the extent of sales and promotion of the trademark by the Complainant is more than sufficient to qualify the trademark as widely known in many countries around the world.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain ("gTLD") component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of bad faith are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the ".com" gTLD, the disputed domain name differs from the by the addition of the word "queen" at the front. The word "Axa" is clearly visible and comprehensible within the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognised the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent's name. The Complainant's trademarks have been in use for many years before the Respondent registered the disputed domain name and the evidence indicates that the Complainant's trademarks are widely known.
These matters are not disputed by the Respondent and together with the length and very wide extent of use of the Complainant's trademarks, would provide a sufficient basis to find a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
Referring to his business in the production of adult entertainment, however, the Respondent says that the disputed domain name is linked to another domain name, namely <planetlesbia.com>, both of which (when finished) will predominantly feature an internationally known adult actress, Axa Jay [S].. The Respondent says that this is the actress' given/birth name. The Respondent says further that the title "Queen" has been used as Ms [S]. has been appointed "ruler" of "Planet Lesbia". The Respondent further volunteered that the use of the name "Queen Axa" was with the full cooperation of Ms. [S.]. According to the Respondent, at the end of each video session, Ms. [S.] has signed a written consent "Model Release" in her given/birth name as required under American legislation. The Respondent volunteered to make copies available subject to compliance with United Kingdom data protection laws.
As noted above, the disputed domain name does in fact resolve to a website which includes images of someone purporting to be "Queen Axa".
Rudimentary Internet searches also disclosed references to an MMX or wrestling competitor known as "Axa Jay", apparently in 2016. There are a few other references to an "Axa S.".
Strictly speaking, the Respondent should have submitted the objective materials corroborating his claims as part of the Response. Nonetheless, in response to his offer and the Internet search results referred to above, the Panel issued the Panel Order set out above. As also noted above, however, the Respondent did not avail himself of the opportunity to provide the information requested.
In these circumstances, it would appear that Ms. [S.] is in fact a real person. The evidence in this proceeding does not permit the Panel to find that she is, or is not, an internationally known "adult" entertainer. It appears likely that she is the "Axa Jay" wrestling competitor.
There is no evidence to suggest that Ms. [S.] is commonly known as "Queen Axa". Indeed, the website of the "planet" she is claimed to be the "ruler" of is not active. Even assuming in the Respondent's favour that he and Ms. [S.]are in some sort of association, the circumstances require a far more frank exposure of when and how the Respondent or Ms. [S.]came up with her proposed designation as "Queen Axa" and does not use what appears to be the only professional name by which she is known.
In this connection, it is important to note that both paragraphs 4(c)(i) and 4(c)(iii) emphasise that the usage must be in good faith to be justified under the second limb of the Policy. The requirement that the respondent be "commonly known" before registering the domain name serves a similar purpose of ensuring also only good faith actors are protected. Both under the Policy and trademark law more generally the requirement of good faith requires that the respondent be motivated only by legitimate purposes and not acting from any motivation to take advantage of another's goodwill and reputation.
Here, the Complainant's trademark is long established and very well-known. It seems very unlikely that the potential for association with the Complainant's trademark was not appreciated by the Respondent or Ms. S., as the case may be, when embarking on the plan to register and use the disputed domain name. Moreover, the Respondent or Ms [S.], as the case may be, chose to adopt a name which is not any name by which Ms. [S.]appears to be known and which increases the risks of confusion.
In these circumstances, the Panel is not prepared to find that the disputed domain name has been adopted in good faith sufficient to provide the Respondent with a basis to claim rights or a legitimate interest in it. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has been registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Panel notes that the fact that the disputed domain name resolves to a website which is pornographic in nature is not in itself sufficient for a finding or registration or use in bad faith. As the Respondent claims, many such businesses are quite legitimate under the laws of different countries. Accordingly, as is the case generally with any type of activity what must typically be shown is that the disputed domain name has been registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
For the reasons set out in Section 5B above, the Respondent has been found not to have rights or a legitimate interest in the disputed domain name. It appears most likely, however, that the Respondent was aware of the Complainant's trademarks and the high risk of association and confusion. In these circumstances, therefore, the Panel finds that the Respondent registered the disputed domain name to take advantage of its significance as the Complainant's trademark. That qualifies as registration in bad faith under the Policy. The way the Respondent has been using the disputed domain name since registration is highly likely to lead to tarnishment of the Complainant's trademark in a fashion typically found to be bad faith under the Policy. See, e.g., Christian Dior Courture v Paul Farley, WIPO Case No. D2008-0008.
Accordingly, the Complainant has established the third requirement under the Policy.
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 <queenaxa.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: July 24, 2017