WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Guiying Wu
Case No. D2017-2534
1. The Parties
Complainant is AXA SA of Paris, France, represented by Selarl Candé - Blanchard - Ducamp, France.
Respondent is Guiying Wu of Lishui, China.
2. The Domain Name and Registrar
The disputed domain name <axa-minmetals.mobi> 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 December 20, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 Respondent of the Complaint, and the proceedings commenced on January 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 22, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 23, 2018.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 5, 2018. 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
Complainant is the owner of registration for the word, and word and design, service mark AXA as a European Union Trade Mark (“EUTM”), registration numbers 008772766 and 373894, registrations dated September 7, 2012, and July 29, 1998, respectively. Complainant is also the owner of an International Registration under the Madrid System for the word service mark AXA, registration dated December 5, 1984, designating 29 countries. The aforesaid registrations cover services in the fields of advertising and business, insurance and financial services, and transportation of persons and goods.
Complainant is a major multinational provider of insurance, finance and other services the service mark of which has previously been recognized as well-known under the Policy, see AXA SA v. Frank Van, WIPO Case No. D2014-0863.
AXA-Minmetals is the name of a former joint venture established in China by Complainant and China Minmetals Corporation, the latter based in Beijing, China. The aforesaid joint venture was established in 1999, with its headquarters in Shanghai, China. In 2012, AXA-Minmetals combined with a substantial Chinese banking entity, Industrial and Commercial Bank of China Co. Ltd (“ICBC”), and ceased doing business under the name AXA-Minmetals. Complainant continues to do business in China as part of ICBC-AXA Life.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the disputed domain name was registered by Respondent on June 11, 2011.
Respondent has used the disputed domain name to direct Internet users to a one-page website incorporating the representation of a front-facing smart phone with a screen stating (translated from the Chinese by Complainant) “welcome to axa-minmetals 3G Edition website” and providing an email address and telephone number.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the trademark AXA, and that the disputed domain name is confusingly similar to that trademark. Complainant argues that combination of its well-known trademark with the trademark of an enterprise with which it established a joint venture does not diminish the confusing similarity between its trademark and the disputed domain name.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant has never licensed or otherwise permitted Respondent to use its trademark in the disputed domain name or otherwise; (2) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services; (3) there is no evidence that Respondent has been commonly known by the disputed domain name.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent was obviously aware of Complainant’s trademark when it registered the disputed domain name; (2) Complainant’s trademark was well known internationally at the time of registration; (3) Respondent opportunistically registered the disputed domain name following announcement in October 2010 of a joint venture the name of which is directly represented in the disputed domain name; (4) Respondent has not shown serious interest in use of the disputed domain name; (5) registration of the disputed domain name shortly following announcement of the joint venture suggests “opportunistic cybersquatting”, including that Respondent registered the disputed domain name with the intent to sell it to Complainant.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of a proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Express courier records indicate that the Written Notice of the Complaint was successfully delivered to the address included in Respondent’s record of registration. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the AXA service mark in a number of jurisdictions, see Factual Background, supra, and has provided evidence of long-standing use in commerce. Respondent has not contested Complainant’s rights in its service mark. The Panel determines that Complainant has established rights in the service mark AXA.
The disputed domain name incorporates Complainant’s distinctive AXA service mark combined with a part of the name of Complainant’s Chinese joint venture partner, i.e., “Minmetals”. Complainant’s trademark is clearly recognizable in the disputed domain name and Internet users viewing the combination would likely assume that the disputed domain name is associated with Complainant and its services business. Addition of the generic Top-Level Domain (“gTLD”) “.mobi” does not affect the assessment of confusing similarity in circumstances such as those present here. The Panel determines that the disputed domain name is confusingly similar to Complainant’s service mark.
The Panel determines that Complainant has established rights in a service mark and that the disputed domain name is confusingly similar to that service mark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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”. (Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain name does not on its face manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Those are: “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; (ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Respondent registered Complainant’s distinctive and well-known service mark in the disputed domain name shortly following Complainant’s announcement of a joint venture in China that uses the same name incorporated by Respondent in the disputed domain name. Respondent, according to its registration data, is based in China. The possibility that registration of the joint venture name by Respondent was serendipitous is remote. It is reasonable for the Panel to conclude that Respondent registered the disputed domain name with the intent to take unfair advantage of Complainant’s service mark and associated goodwill.
Respondent is using the disputed domain name to publish its contact information on the Internet. As Complainant suggests, such use by Respondent may well be intended to solicit an offer to purchase the disputed domain name from Complainant. The disputed domain name directly incorporates the identifiers of two substantial enterprises doing business in China, and Respondent has not suggested any plausible good faith basis for its registration and use of the disputed domain name. Combined with the factor that Respondent registered the disputed domain name shortly following the announcement of Complainant’s joint venture in China, the Panel determines that Respondent registered and is using the disputed domain name in bad faith with the intention to take unfair advantage of the service mark and associated goodwill of Complainant, including by circumstances in which an offer for sale to Complainant at a price in excess of Respondent’s out-of-pocket expenses in association with the disputed domain name may reasonably be inferred.
The Panel determines that Complainant has established that Respondent registered and is using the disputed domain name in bad faith within the meaning of 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 <axa-minmetals.mobi> be transferred to Complainant.
Frederick M. Abbott
Date: February 19, 2018