WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Contact Privacy Inc. / Syed Hussain, Domain Management
Case No. D2017-0998
1. The Parties
The Complainant is AXA SA of Paris, France, represented by Selarl Candé - Blanchard - Ducamp, France.
The Respondent is Contact Privacy Inc. of Toronto, Ontario, Canada / Syed Hussain, Domain Management of New Jersey, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <axagulf.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 19, 2017. On May 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 2017, 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 May 24, 2017 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 May 24, 2017.
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 May 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 21, 2017.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on July 7, 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.
4. Factual Background
The WhoIs for disputed domain name provided by the Complainant shows that it was created on April 16, 2010 and lists it for sale for USD2,465.00. At the time of the filing of the Complaint, it resolved to a holding page at which, inter alia, the disputed domain name was offered for sale for EUR 2,250. When the Panel attempted to access the website pursuant to the power conferred by the Policy, the disputed domain name resolved to what appeared to be a "phishing" site which mirrored third party e-commerce sites such as Powerball and Ali Express.
The Complainant is the holding company for the AXA Group, an internationally renowned financial institution offering financial services including insurance services throughout the world. Its origins date back to the eighteenth century. It is listed on the Paris and New York Stock Exchanges and operates in 64 countries.
The trade mark, AXA, was formally adopted in 1985 and is the subject of International Trademark Registration No. 4900301 dated December 5, 1984 and several other registrations included United States trade mark registration No. 2072157 registered on June 17, 1997 and United Arab Emirates trade mark registration No. 121882 registered on December 13, 2010. The Complainant is the holder of several domain names incorporating the Trade Mark AXA including <axa-gulf.com> dated July 9, 2005. The Complainant operates in the countries of the Arabian Gulf where it is known as "Axa Gulf". The Complainant's rights and reputation in the trade mark AXA have been recognised in over thirty prior decisions under the Policy including AXA S.A. v. Frank Van, WIPO Case No. D2014-0863 where the panel noted that "The Complainant has established its right in the world-known AXA trade mark, duly registered in several countries around the world".
The Respondent has been subject to 22 prior decisions under the Policy.
5. Parties' Contentions
The Complainant's contentions may be summarised as follows:
1. The disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights. The Complainant has longstanding trade mark registrations in many countries throughout the world including the United States. The disputed domain name wholly incorporates the Complainant's AXA trade mark.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or authorised the Respondent to use its AXA trade mark or to incorporate it into the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or has any trade mark rights in relation to it. The disputed domain name is not being used in connection with a bona fide offering of goods or services but is being used unfairly to capitalise upon the reputation of the AXA trade marks.
3. The disputed domain name has been registered in bad faith. The Complainant's trade mark is internationally famous and enjoys a worldwide reputation including in countries of the Persian Gulf. The Respondent has chosen the disputed domain name which is very close to the Complainant's <axa-gulf.com> domain name in order to take predatory advantage of the Complainant's reputation.
4. The Respondent is using the domain name to direct to a website offering links to other websites and offers the disputed domain name for sale at a price well in excess of the out of pocket costs directly related to the registration of the domain name. Further, the Respondent has used a proxy registration service in an attempt to disguise its identity which is consistent with an inference of bad faith registration and use.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name wholly incorporates the Complainant's AXA trade mark. The term "AXA" has no meaning apart from its significance as the trade mark of the Complainant. In the context of the disputed domain name, it is the first and dominant particular and the addition of the geographic term "gulf" does not serve to distinguish the disputed domain name from the Complainant's trade mark. The Complainant has amply demonstrated that it has strong registration and reputation rights in the trade mark including rights established in the states of the Persian Gulf. Its operation in that region is known as Axa Gulf.
The Panel therefore finds that the disputed domain name is confusingly similar to the AXA trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has asserted that it has not licensed or otherwise authorised the Respondent to use its trade mark or to incorporate it into the disputed domain name. There is no evidence that the Respondent or any organization with which the Respondent is connected has been commonly known by the disputed domain name nor is the use which the Respondent is making of the disputed domain name a legitimate noncommercial or fair use. The use which is being made of the disputed domain name is not use in the offering of bona fide goods or services and there is no other apparent basis upon which the Respondent might claim a legitimate right or interest. The Respondent has had an opportunity to rebut the Complainant's contentions or to explain its action. It has failed to do so.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant has shown substantial evidence that its name and trade mark AXA is well and widely known throughout the world including the United States where the Respondent is resident. There is no evident reason why the Respondent, a serial cyber-squatter, with 22 adverse decisions to his name, should register a domain name incorporating the Complainant's trade mark otherwise than to illicitly profit from the reputation attached to the trade mark.
The Respondent has used the disputed domain name in an attempt to profit commercially from the reputation of the trade mark by providing links to third party websites and by offering the disputed domain name for sale at a price substantially in excess of the out of pockets costs in registering the disputed domain name. The form and content of the website at the disputed domain name appear designed to induce Internet users to believe that the website is in some way associated or affiliated with the Complainant. It is apparent therefore that the Respondent is using the disputed domain name to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the website.
The Panel therefore finds that the disputed domain name has been registered and 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, <axagulf.com> be transferred to the Complainant.
Desmond J. Ryan AM
Date: July 19, 2017