WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Domain Administrator, PrivacyGuardian.com / Michael T. Nishimura
Case No. D2019-0757
1. The Parties
Complainant is AXA SA of Paris, France represented by Selarl Candé, Blanchard, Ducamp, France.
Respondent is Domain Administrator, PrivacyGuardian.com of Phoenix, Arizona, United States of America (“United States”) / Michael T. Nishimura of Florida, United States.
2. The Domain Name and Registrar
The disputed domain name <axa-provence.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2019. On April 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 3, 2019 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 5, 2019.
The Center verified that the Complaint together with the amended 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 April 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 30, 2019.
The Center appointed Clive Elliott Q.C.as the sole panelist in this matter on May 8, 2019. 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
According to the publicly available WhoIs information, the Domain Name was registered on December 27, 2018.
AXA is a French multinational insurance company with its headquarters in Paris, France engaging in global insurance, investment management and financial services. It is a world leader in insurance, saving and asset management. After a succession of mergers, acquisitions and name changes involving some of the biggest insurance companies around the world, the trade name “AXA” was introduced in 1985 (“the AXA Group”).
The AXA Group is present in 64 countries and employs 160,000 people worldwide. AXA was listed on the Paris Stock Exchange in 1988 and on the New York Stock Exchange in 1996.
Complainant (AXA SA) is the French based holding company of the AXA Group.
Complainant is the owner of the following AXA trade marks (Complainant’s Mark):
- American trade mark (+design) No. 2 072 157, August 5, 1994 in class 36 for “insurance services”;
- International trade mark No. 490 030, December 5, 1984 in classes 35, 36 and 39, in particular for “advertising and business. Insurance and financial services”;
- European trade mark (+design) No. 373 894, August 28, 1996 in classes 35 and 36, in particular for “insurance; personal insurance; life insurance; bereavement insurance”;
- European trade mark No. 008 772 766, December 21, 2009 in classes 35 and 36 in particular for the following services: “advertising, assistance to commercial or industrial firms in conduct of their business. Insurance and finance; banking services”; and
- French trade mark No. 1270658, January 10, 1984 in classes 35, 36 and 42, in particular for “insurance and finance”.
Complainant is also the owner of the following domain names:
- <axa.com> registered October 23, 1995;
- <axa.net> registered November 01, 1997;
- <axa.info> registered July 30, 2001; and
- <axa.fr> registered May 20, 1996.
5. Parties’ Contentions
Complainant states that it enjoys a worldwide reputation and Complainant’s Mark, which has no particular meaning and is therefore highly distinctive, is widely known.
Complainant states that the Domain Name reproduces Complainant’s Mark in its entirely. The addition of the word “provence” to Complainant’s Mark in the Domain Name does not diminish the confusing similarity between the Domain Name and Complainant’s Mark. The word “provence” is a geographically descriptive term referring to a region of southeastern France.
Taken in combination with Complainant’s Mark, the region name “Provence” can infer to Internet users that the corresponding website is an official AXA’s website devoted to people living in the French geographical region of Provence, who would expect to find content related to Complainant and/or its regional subsidiaries.
Complainant contends that the Domain Name was the former website of the French AXA agency of Emilien HERMIER, located in Le Cannet Des Maures, in the French Provence Alpes Coted’Azur region. This, it is said, also heightens the confusing similarity between the Domain Name and Complainant’s Mark.
Complainant states that it has never licensed or otherwise permitted Respondent to use Complainant’s Mark or to register any domain name including Complainant’s Mark. There is no relationship between the parties. Respondent has no prior rights and/or legitimate interest to justify the use of Complainant’s Mark.
Complainant asserts that Respondent has adopted Complainant’s Mark for its own use and incorporated it into his Domain Name without Complainant’s authorization and is making a commercial use of the Domain Name.
Complainant contends that Respondent has been using the Domain Name to offer explicit pornographic content and links to third-party pornographic websites and has therefore registered the Domain Name in bad faith in order to take predatory advantage of Complainant’s reputation. Such porno-squatting conduct on Respondent’s part is inherently misleading and has the potential to tarnish the reputation of Complainant’s Mark.
Complainant states that the use of a domain name that is confusingly similar to Complainant’s Mark in order to lure Internet users to a website offering pornographic content does not constitute a bona fide offering of services capable of conferring a right or legitimate interest, nor does it amount to a legitimate non-commercial or fair use.
Complainant goes on to state that Respondent was aware of Complainant’s Mark at the time he acquired the Domain Name. Complainant’s Mark is well protected in numerous countries in the world, including the United States - the home country of Respondent and France, the country where the region of Provence, which name is associated with Complainant’s Mark in the Domain Name, is located.
Complainant asserts that the word “AXA” has no dictionary meaning and does not correspond to Respondent’s name. This word is not used on the website, except in its footer which mentions “© Auteur Axa provence - 2019”, whereas Axa Provence is not an existing legal person, and the author of the site is not related to AXA SA.
Complainant states that three cease and desist letters were sent to Respondent in January and February 2019. However, no responses were received, which Complainant submits is evidence of Respondent’s bad faith intention.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established to the satisfaction of the Panel that Complainant’s Mark has been widely used and registered, relevantly in this matter in the USA where Respondent resides and in France where Provence is a well-known French geographical region in the south of that country. Complainant has for many years provided insurance related services under and by reference to Complainant’s Mark.
Given Complainant’s Mark has no obvious meaning and appears to be a made-up term and that Respondent has reproduced Complainant’s Mark in its entirety, albeit with the addition of the geographic term Provence, this does not lend any degree of distinctiveness to the Domain Name. The term AXA quite plainly remains as the predominant and distinctive feature of the Domain Name.
In the absence of any attempt to explain its actions or to refute the allegations made by Complainant it is found that:
a) Complainant has rights in respect of Complainant’s Mark.
b) The Domain Name is confusingly similar to Complainant’s Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
In terms of whether Respondent has rights or legitimate interests in the Domain Name, Complainant contends that Respondent has been using the Domain Name to offer explicit pornographic content and links to third-party pornographic websites. Complainant’s concern that porno-squatting conduct of this type is both misleading and has the potential to tarnish the reputation of Complainant’s Mark are reasonable.
Again, in the absence of any response or explanation, the Panel has no difficulty in concluding that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is therefore satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Given Complainant’s use and registration of Complainant’s Mark, and its international repute the Panel infers that Respondent knew of Complainant’s Mark when registering the Domain Name.
Complainant indicates that it has attempted, on three occasions, to get Respondent to cease and desist from its conduct but with no success. It appears that, notwithstanding these communications, Respondent continues to supply, either directly or indirectly pornographic material, relying on Complainant’s Mark.
On the basis of the above, the Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of Complainant’s Mark and accordingly that the third limb of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <axa-provence.com> be transferred to Complainant.
Clive Elliott Q.C.
Date: May 22, 2019