WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AXA SA v. ArnaVoyage LLC

Case No. D2019-2139

1. The Parties

The Complainant is AXA SA, France, represented by Selarl Candé - Blanchard - Ducamp, France.

The Respondent is ArnaVoyage LLC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <theaxagroup.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2019. On September 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2019, 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 September 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2019.

The Center appointed Antony Gold as the sole panelist in this matter on October 7, 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

The Complainant is a company providing insurance, saving and asset management services. It employs approximately 160,000 people and serves around 105 million customers. It has a presence in 64 countries and its principal markets are in Europe, North America and Asia-Pacific.

The Complainant trades as AXA and it has registered many trade marks to protect this trading style. These include, by way of example only, International Trade Mark No. 490,030 for AXA, registered on December 5, 1984 in classes 35, 36 and 39 and designating over 25 countries. The Complainant is also the registrant of a number of domain names which incorporate its mark, including <axa.com> and <axa.fr>.

The disputed domain name was registered on April 15, 2019. It resolves to a parking page which contains the greeting; “Welcome to the axagroup.com”. Beneath that is the statement; “This Web page is parked for FREE, courtesy of GoDaddy.com. On the left side of the page is a column of related links, including to; “Axa Financial”, “Axa Insurance”, “Homebanking”, “Risk” and “Assurance Insurance”. Amongst the content on the right hand side of the page is the invitation; “Would you like to buy this domain?”.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is confusingly similar to a name in which it has rights and that it reproduces entirely its famous AXA trade mark. Accordingly, it is difficult, if not impossible, to adequately distinguish the mark from the disputed domain name. The addition of the descriptive word “group” to the trade mark does not diminish the confusing similarity as it suggests that the corresponding website is the official website of the group of companies controlled by the Complainant. As a consequence, this word increases the likelihood of confusion.

The Complainant asserts also that the Respondent has no rights or legitimate interests with respect to the disputed domain name. First, there is no relationship between the parties and the Complainant has not licensed or otherwise permitted the Respondent to use its trade mark or to register any domain name which includes it. Second, the Respondent is not making a fair use of the disputed domain name. He has simply been passively holding it since registration. It is parked with the Registrar and contains sponsored links and an offer for sale. Passive holding does not constitute a legitimate non-commercial use; (see, for example, Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195). Moreover, the Respondent is using the services offered by GoDaddy in order to unfairly capitalize upon, or otherwise take advantage of, the AXA trade marks. Such use does not provide it with a right or legitimate interest in respect of the disputed domain name; (see for example Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).

Lastly, the Complainant says the disputed domain name was registered and is being used in bad faith. The Respondent was obviously aware of the Complainant’s trade mark at the time that he acquired the disputed domain name; the Complainant has submitted ample evidence to show that its AXA trade mark has become internationally famous and enjoys a worldwide reputation, including in the United States of America where the Respondent is based. The Respondent chose and registered the disputed domain name in bad faith; it is very close to the Complainant’s <axa.com> domain name and the Respondent has intended to mislead Internet users into thinking that it was related to the Complainant and thereby to take advantage of the Complainant’s reputation.

The Complainant is also using the disputed domain name in bad faith. The disputed domain name is not being used and passive holding may, in some circumstances, be considered bad faith; see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Respondent is not seriously interested in actively using the disputed domain name. The Respondent’s website is inactive and is being used as a parking site displaying sponsored links in the hope of making money through pay per click remuneration. It has been held that using a domain name incorporating a well-known mark to generate pay per click revenue will constitute bad faith use; see Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753. Furthermore, the Respondent did not reply to the cease and desist letter sent by the Complainant in July 2019, nor to reminders. A failure to respond to a complainant’s efforts to make contact can provide strong support for a determination of bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its many trade marks for AXA, including the specific mark in respect of which details are provided above. These establish its rights in AXA.

For the purpose of considering whether the disputed domain name is identical or similar to the Complainant’s trade mark, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The disputed domain name contains the Complainant’s distinctive trade mark in full. It is preceded by the indefinite article “the” and followed by the descriptive word “group”. Neither of these words has any impact on an assessment of whether the disputed domain name is confusingly similar to the Complainant’s trade mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Similarly, section 1.8 of the WIPO Overview 3.0 notes that: “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 therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.

So far as the first circumstance is concerned, whether the use to which the disputed domain name has been put might amount to a bona fide offering of goods and service is considered at section 2.9 of the WIPO Overview 3.0. This explains that “[a]pplying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.

The destinations to which the links on the Respondent’s home page will take the Internet user are not known but links such as “Homebanking”, “Risk” and “Assurance Insurance” are very likely to redirect many Internet users, who were seeking the Complainant, towards competing services. The Respondent’s website does not therefore comprise a bona fide offering of goods and services. Moreover, offering the disputed domain name for sale in these circumstances does not comprise a bona fide offering of goods and services. See, by way of example, Ruby’s Diner, Inc. v. Joseph W. Popow,WIPOCase No. D2001-0868, in which the panel found that registering a domain name and doing no more with it than to advertise that it is for sale, does not support a respondent’s legitimate interest under the Policy.

The second and third circumstances outlined above can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain name and the use which has been made of it is clearly commercial in character.

As explained at section 2.1 of the WIPO Overview 3.0, once a Complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden.

The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name comprises the Complainant’s AXA trade mark, preceded by the indefinite article “the” and followed by the descriptive word “group”. As explained at section 3.1.4 of the WIPO Overview 3.0: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. Such a presumption applies on these facts and, as the Respondent has not attempted to rebut it, the Panel finds that the disputed domain name was registered in bad faith.

Whilst the use of a domain name to point to parking pages hosting pay-per-click sponsored links is not inherently objectionable, it has been well established in previous decisions under the Policy that such conduct can constitute bad faith use if the combination of the characteristics of a domain name and the nature of the links on the website to which it points are intended to mislead Internet users. See, for example, Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491, in which the panel explained that “the use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”.

The facts point to the Respondent having registered the disputed domain name in circumstances similar to those outlined in Yahoo! Inc. v. Hildegard Gruener (supra). Such conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, the Respondent has intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website.

For these reasons, the Panel therefore finds that the disputed domain name was both registered and used in bad faith. The Complainant’s additional submissions do not therefore require consideration.

7. Decision

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 <theaxagroup.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: October 23, 2019