WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Axa SA v. Francisco Ferreiro
Case No. DPW2018-0003
1. The Parties
The Complainant is Axa SA of Paris, France, represented by Selarl Candé Blanchard Ducamp Avocats, France.
The Respondent is Francisco Ferreiro of Miami Beach, Florida, United States of America (“United States”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <axa.pw> 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 October 4, 2018. On October 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2018, 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 October 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2018. On October 30, 2018, the Respondent requested an extension of time for filing the Response. In accordance with the Rules, paragraph 5(b), the Respondent was granted an automatic four calendar day extension for the Response, and the due date for the Response was updated to November 4, 2018. The Response was filed with the Center on November 4, 2018.
The Center appointed Adam Taylor as the sole panelist in this matter on November 14, 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 a French insurance group, which has traded under the name “AXA” since 1985. The Complainant employs 160,000 people in 62 countries, including Europe, North America, and the Asia-Pacific region. In 2017, its worldwide revenues were approximately EUR 98.5 billion.
The Complainant owns a number of registered trade marks for AXA including United States trade mark no. 2,072,157, filed August 5, 1994, registered June 17, 1997, in class 36.
The Complainant operates its main website at “www.axa.com”.
The disputed domain name was registered on November 9, 2017.
The Respondent has used the disputed domain name for a webpage inviting offers to buy the disputed domain name.
The Complainant sent a cease and desist letter to the Respondent on July 19, 2018.
On July 20, 2018, the Respondent replied: “I’m a trademark attorney and find your claims regarding the letters AXA somewhat absurd. Please call me at your convenience on [phone number]”.
The Respondent sent a chaser on July 25, 2018, asking when the Complainant’s representative would be available to discuss “your client’s purported rights to the letters A, X and A”. The Complainant’s representative replied on the same day stating that it was in discussion with its client and would revert as soon as it had received instructions. So far as the Panel is aware, there were no communications between the parties thereafter.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The Complainant enjoys a worldwide reputation.
The disputed domain name is identical or confusingly similar to the Complainant’s trade mark, which is entirely reproduced in the disputed domain name.
Country code Top-Level Domain (“ccTLD”) suffixes are generally ignored when assessing identity or confusing similarity.
In any case, the suffix “.pw” does not distinguish the disputed domain name from the Complainant’s trade mark. On the contrary, it adds to the confusing similarity as Internet users may believe that it refers to the Complainant’s official website in Palau.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has never licensed or otherwise permitted the Respondent to use its trade marks or register the disputed domain name. The Respondent’s response to the Complainant’s cease and desist letter shows that there is no legal relationship between the parties.
The Respondent is not making fair use of the disputed domain name. He does not use it for any services other than to offer the disputed domain name itself for sale. Passive holding does not constitute legitimate noncommercial use.
By offering to sell the disputed domain name, the Complainant is trying to take unfair advantage of the Complainant’s fame.
The Respondent was aware of the Complainant’s trade marks when he acquired the disputed domain name, given the evidence of the Complainant’s international fame. The Complainant’s trade mark is well-known and protected in many countries including the United States.
If the Respondent is a trade mark attorney, then he was undoubtedly aware that the disputed domain name infringes the Complainant’s trade mark.
The Respondent registered the disputed domain name in a deliberate attempt to create a likelihood of confusion with the Complainant’s trade mark.
The disputed domain name constitutes a passive holding in bad faith.
The fact that the Respondent only uses the disputed domain name to invite purchase offers indicates that the Respondent acquired the disputed domain name primarily to sell it to the Complainant or others or to use it as a means of applying unlawful pressure on the Complainant.
The Respondent did not attempt to resolve the matter on receipt of the Complainant’s cease and desist letter.
The Respondent’s lack of bona fide use of the disputed domain name is likely to disrupt the Complainant’s business since it prevents the Complainant from reflecting its famous trade marks in a corresponding “.pw” domain name.
Further, given the fame of the Complainant’s trade marks, it is inconceivable that the Respondent will be able to use the disputed domain name without infringing the Complainant’s rights.
A summary of the Respondent’s contentions is as follows:
The Complainant has mischaracterised the email exchange between the parties, part of which was omitted.
When comparing the disputed domain name and the Complainant’s trade mark, it is well settled that both should be viewed as a whole.
When the domain name and trade mark are generic, in particular where they both comprise a single, short, common word, the rights enquiry is more likely to favour the domain name owner.
While the Complainant has provided evidence of trade mark rights in connection with financial services, this combination of letters is not unique to the Complainant.
The term “AXA” may refer to a variety of goods, services and institutions including an abbreviation for Alpha Chi Alpha, a fraternity at Dartmouth College in the United States, and the airport code for Anguilla.
There are a number of unrelated third-party United States trade marks for AXA including no. 3645578 for AXA on household products, no. 5155813 for AXA AXCESSABLES for use on camera and stereo accessories and no. 5420643 for AXA SWEDISH HARVEST for use on food products.
Given the number of potential uses for the phrase “AXA”, as well as the number of third parties using the term, the Complainant’s rights should be interpreted narrowly and third parties should not be precluded from using this combination for unrelated goods or services.
The domain name suffix can be taken into account when comparing the disputed domain name with the Complainant’s trade mark because it is a key part of the disputed domain name. Unlike in the case of “.com” and “.net”, there is no evidence that the suffix “.pw” is likely to be ignored or recognised as a generic geographic designation by consumers. Because the letters “pw” are commonly used as shorthand for “password”, the role that these letters play in shaping consumer impressions should not be discounted.
As the Complainant has provided no evidence of trade mark rights in Palau, there is no basis for assuming that consumers in that territory would recognise the term “AXA” as having any connection with the Complainant, let alone an exclusive association.
Accordingly, the disputed domain name is neither identical nor confusingly similar to the Complainant’s trade mark.
The Complainant has provided no evidence to support the conclusion that the disputed domain name was registered to target its trade mark.
While the disputed domain name is parked, the Respondent bought it based on its descriptive or common meaning and intends to make use of the name in future. The Respondent’s intention to use the disputed domain name on unrelated goods/services is sufficient to establish a legitimate interest in the disputed domain name.
The disputed domain name was neither registered nor used in bad faith.
There is no evidence that the Respondent has violated any applicable laws in registering and using the disputed domain name. An administrative proceeding is a cheap vehicle for acquiring a domain name without the judicial scrutiny that would be required if the case was filed in court.
There is no evidence that the Respondent registered the disputed domain name in bad faith and this is a powerful factor in favour of a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the mark AXA by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
The Respondent argues that the Complainant’s rights should somehow be interpreted narrowly for the purposes of the first element, based on on the existence of various third-party trade-marks which include the term “AXA”, as well as some evidence of third-party use of the same term.
However, in the Panel’s view, to the extent that such third-party rights or usage are relevant, they fall for consideration under the second and/or third elements of the Policy.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that the first element functions primarily as a standing requirement, involving a relatively straightforward side-by-side comparison between the domain name and the textual components of the relevant trade mark to assess whether the mark is recognisable within the disputed domain name.
Here, the Complainant’s trade mark is undoubtedly recognisable within the disputed domain name.
Although the disputed domain name is under the ccTLD for the Pacific Island nation of Palau, nothing here turns on the fact that the Complainant has not established ownership of trade mark rights in Palau. Section 1.1.2 of the WIPO Overview 3.0 explains that under the UDRP, which applies to “.pw” domain names, the jurisdiction where the Complainant’s trade mark is valid is not relevant under the first element.
The Respondent further argues that the domain name suffix should not be disregarded for the purposes of the comparison on the grounds that, because the term “pw” is commonly used as a shorthand for “password”, the suffix “.pw” carries added significance beyond a generic, geographic designation such as “.com” and “.net” – and presumably likewise beyond its meaning as the ccTLD for Palau.
Contrary to the Respondent’s assertion, however, the practice of disregarding the domain name suffix is applied irrespective of the nature of the suffix, albeit that its meaning may be relevant to the second and/or third elements, e.g., as to whether the suffix signals an intention to use the domain name fairly – or otherwise. See section 1.11.1 of WIPO Overview 3.0.
In any case, even if one were to take the suffix into account and even if one were to assume that it denotes the word “password” rather than the ccTLD for Palau, it is difficult to see how that would assist the Respondent. One would simply be faced with the conjunction of “AXA” plus a descriptive term. This combination does not create a phrase with a significantly different overall impression which in some way subsumes the term “AXA” – if that is what the Respondent is claiming. The position is no different than if the Respondent had combined the term “AXA” with one of the many descriptive “new gTLDs” such as “.app” or “.club”.
In any event, for the above reasons the Panel concludes that the domain name suffix can be disregarded and that the disputed domain name is identical to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering. The Respondent claims that his intention to use the disputed domain name for goods/services unrelated to those of the Complainant is sufficient to establish a legitimate interest in the disputed domain name. However, as explained in section 2.2 of the WIPO Overview 3.0 , future intent on its own does not suffice. There must be at least credible evidence of demonstrable preparations to make an offering. Here, there is no such evidence.
The Respondent’s use of the disputed domain name for a website inviting offers to buy the disputed domain name cannot be said to constitute a bona fide offering in the circumstances outlined under the third element below.
Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name has only ever been used for a website offering the disputed domain name for sale and, in particular, there is no evidence that it has ever been used in connection with the kind of services offered by the Complainant, namely insurance.
The key issue for the Panel to consider is the likelihood that the Respondent nonetheless acquired the disputed domain name by reference to the Complainant.
The Respondent claims at various points in the Response that the disputed domain name is “generic”, “descriptive”, and in “common” use.
While there is no evidence before the Panel to indicate that the term “AXA” is either generic or descriptive, the Respondent has established that a number of unrelated third parties have registered or are using the term – but only to a modest degree.
Of the three third-party United States trade marks cited by the Respondent, two contain material terms in addition to the word “AXA”, namely “axcessables” and “Swedish harvest”, thereby weakening their relevance.
As regards third-party use of the term “AXA”, the Respondent refers to six “AXA” acronyms listed in an online dictionary including, e.g., an abbreviation for a fraternity at a particular United States university and the airport code for Anguilla.
In the Panel’s view such matters are vastly outweighed by the evidence of the Complainant’s substantial worldwide use of the name “AXA” for its insurance business, including in the United States from where it derives some 18 percent of its worldwide revenues.
Notably, while the Respondent claims that there is no evidence that he registered the disputed domain name to target the Complainant’s trade mark, he does not specifically deny that he was aware of the Complainant and its trade marks at the time of registration of the disputed domain name.
Furthermore, the Respondent has not explained exactly why he registered the disputed domain name.
The Respondent says that he bought the disputed domain name based on its “descriptive or common meaning” and that he intends to use the disputed domain name in future to offer goods/services unrelated to those of the Complainant. But the Respondent has not identified those goods or services, thereby casting some doubt on the credibility of his explanation. And, for reasons explained above, the Panel does not consider that the disputed domain name can correctly be characterised as either “descriptive” or “common”.
Other unanswered questions include: Did the Respondent acquire the disputed domain name in connection with his role as a trade mark attorney or otherwise? What was the relevance, if any, of the “.pw” suffix? Did the Respondent acquire the disputed domain name with reference to Palau? Or was he motivated by “pw” as an abbreviation for password, which he raises as a likely consumer perception of the disputed domain name when addressing the first element under the Policy, but which he does not discuss in the context of his rationale for acquiring the disputed domain name.
The Panel also notes that, in response to the Complainant’s cease and desist letter, the Respondent simply stated that he found the Complainant’s claims “somewhat absurd”. While the Respondent did invite the Complainant to telephone him to discuss the matter,1 if the Respondent had a legitimate reason for acquiring the disputed domain name, one might have expected him to explain this when initially responding to the Complainant’s letter.
Having carefully weighed up all of the above matters including the extent of the Complainant’s fame, the Respondent’s failure to deny knowledge of the Complainant, and the lack of a detailed explanation for his registration of the disputed domain name, the Panel has concluded on balance that the Respondent’s ultimate purpose in registering the disputed domain name was to sell the disputed domain name to the Complainant for a price in excess of out of pocket costs in accordance with paragraph 4(b)(i) of the Policy.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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.pw> be transferred to the Complainant.
Date: November 28, 2018
1 The Panel wishes to add that it agrees with the Respondent that the Complainant’s claim that the Respondent did not attempt to resolve the matter on receipt of the cease and desist letter mischaracterises the correspondence between the parties. Indeed, the Respondent followed up his initial response with a further email chasing for a telephone conversation with the Complainant’s representative, to which the Complainant’s representative said that it would revert once it had instructions. Surprisingly, the Complainant failed to exhibit the latter two emails. While the Complainant’s mischaracterisation was relatively clear from the correspondence which the Complainant did disclose, the latter two emails reinforce the point that it was the Complainant, not the Respondent, which avoided any attempt to resolve the matter.