WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. WhoisGuard Protected, WhoisGuard, Inc. / Oleg Dobrolubov
Case No. D2018-1411
1. The Parties
The Complainant is AXA SA of Paris, France, represented by Cande Blanchard Ducamp Avocats, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Oleg Dobrolubov of Novgorod, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <axamoney.win> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2018. On June 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 2018, 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 July 2, 2018 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 July 2, 2018.
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 July 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2018. Apart from an email receive on July 2, 2018 from the Respondent no formal Response was filed with the Center.
The Center appointed Luca Barbero as the sole panelist in this matter on August 6, 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
The Complainant is the holding company of the AXA Group, one of the leading group of companies worldwide which operates in three major lines of business: property and casualty insurance, life insurance and savings, and asset management.
Since 1988, AXA is traded on the Paris Stock Exchange and in 1996 it was also listed on the New York Stock Exchange.
The Complainant is the owner, amongst others, of the following trademark registrations:
- International trademark registration No. 490030 for AXA (word mark), registered on December 5, 1984, in classes 35, 36 and 39;
- European Union trademark registration Nos. 000373894 for AXA (figurative mark), registered on July 29, 1998, in classes 35 and 36, and 008772766 for AXA (word mark), registered on September 7, 2012, in classes 35 and 36;
- French trademark registration No. 1270658 for AXA (word mark), registered on January 10, 1984, in classes 35, 36, and 42;
- United States of America trademark registration No. 2072157 for AXA (word mark), registered on June 17, 1997, in class 36.
The Complainant is also the owner, amongst others, of the domain names <axa.com>, registered on October 23, 1995, <axa.net>, registered on November 1, 1997, <axa.info>, registered on July 30, 2001, and <axa.fr>, registered on May 20, 1996.
The disputed domain name <axamoney.win> was registered on May 12, 2018 and has not been pointed to an active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the trademark AXA since it reproduces the mark in its entirety with the mere addition of the term “money”, which is descriptive of to the Complainant’s financial services and does not dispel the confusion between the disputed domain name and trademark at issue.
The Complainant states that the Respondent has no prior rights or legitimate interests in the disputed domain name because:
i) there is no relationship whatsoever between the parties and the Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register the disputed domain name;
ii) the Respondent has not been commonly known by the disputed domain name and is not making a fair use of the same, since the Respondent is simply passively holding the disputed domain name since its registration.
The Complainant submits that the Respondent registered the disputed domain name in bad faith since the Respondent was obviously aware of the Complainant’s famous trademark AXA at the time it acquired the disputed domain name and the addition of the word “money” to the trademark in the disputed domain name was made in a deliberate attempt to create a likelihood of confusion and to take predatory advantage of the Complainant’s reputation.
The Complainant also states that the Respondent’s passive holding of the disputed domain name amounts to bad faith because:
i) the Complainant’s trademark AXA has strong reputation and is widely known;
ii) the Respondent is not interested in actively using the disputed domain name;
iii) the Respondent did not reply to the Complainant’s cease and desist letter and subsequent reminders;
iv) the use of a proxy registration service to avoid disclosing the name and coordinates of the real party in interest is also consistent with an inference of bad faith in registering and using the disputed domain name;
v) given the world-wide fame of the Complainant’s trademark AXA is widely known, it is inconceivable that the Respondent will be able to use the disputed domain name for any purpose that would not be infringing the Complainant’s rights;
vi) the Respondent’s behavior is likely to disrupt the business of the Complainant since it prevents the Complainant from reflecting its reputed trademarks into a corresponding domain name.
The Respondent did not file a formal Response, but it sent an email communication to the Center, on July 2, 2018, waiving any rights to use the disputed domain name.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights over the trademark AXA based on its several trademark registrations cited under Section 4 above.
The disputed domain name reproduces the trademark AXA in its entirety with the addition of the suffix “money”. The Panel finds that the addition of such descriptive term to the trademark AXA does not exclude confusing similarity with the Complainant’s trademark. See Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
The Panel also notes that the generic Top-Level Domain “.win” does not avoid confusing similarity and can be disregarded in this case as being a mere technical requirement for registration. See, amongst others, OSRAM GmbH v. Ou Yang San Gen, WIPO Case No. D2017-0250 (<osramlight.win>).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the records, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name.
In addition, there is no evidence that the Respondent might be commonly known by the disputed domain name or that it might have ever used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
The Panel finds that, in view of the Complainant’s prior registration and use of the trademark AXA in connection with the Complainant’s insurance and financial services in several countries of the world and of the well-known status of the trademark, as demonstrated by the evidence submitted by the Complainant and recognized by prior UDRP panels (see, i.e., AXA S.A. v. Privacy Protect, LLC (PrivacyProtect.org) / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd, WIPO Case No. D2017-1703), the Respondent knew or should have known of the existence of the Complainant’s trademark at the time of the registration of the disputed domain name, with which it is confusingly similar.
Moreover, in light of the fame of the Complainant and its trademark, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant.
With reference to the use of the disputed domain name, the Panel notes that is has not been pointed to an active website since its registration. However, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, i.a., in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In the case at hand, in view of i) the well-known character of the Complainant’s trademark; ii) the Respondent’s registration of a domain name confusingly similar to the Complainant’s trademark; iii) the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name; and iv) the Respondent’s failure to respond to the Complainant’s cease and desist letters, the Panel finds that the passive holding of the disputed domain name by the Respondent does not prevent a finding of bad faith registration and use.
Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by paragraph 4(a)(iii) 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 <axamoney.win> be transferred to the Complainant.
Date: August 20, 2018