WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Contact Privacy Inc. / Balticsea LLC
Case No. D2015-0688
1. The Parties
The Complainant is AXA SA of Paris, France, represented by Selarl Candé - Blanchard - Ducamp, France.
The Respondent is Balticsea LLC of Kaliningrad, the Russian Federation / Contact Privacy Inc. of Toronto, Canada.
2. The Domain Name and Registrar
The disputed domain name <axa-eqiutable.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2015. On April 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2015, 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 April 22, 2015 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 April 27, 2015.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2015.
The Center appointed Petter Rindforth as the sole panelist in this matter on June 4, 2015. 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.
The Panel shall issue its Decision based on the Complaint, including Amendments of the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel is conducted in the English language.
4. Factual Background
The Complainant is a French insurance, savings and asset management company, and the owner of a number of trademark registrations for AXA, including:
- United States Patent and Trademark Office (“USPTO”) Trademark Registration No. 3938187 AXA EQUITABLE REDEFINING/STANDARDS (fig), filed on October 29, 2008, and registered on March 29, 2011 for services in classes 36, 39, 41 and 44.
- United States Patent and Trademark Office (“USPTO”) Trademark Registration No. 2072157 AXA (fig), filed on August 5, 1994, and registered on June 17, 1997 for services in class 36.
- International Registration No 490030 AXA (word), registered on December 5, 1984, for services in classes 35, 36 and 39, designating more than 20 countries, including Russia.
- Community Trademark Registration No. 373894 AXA (fig), filed on August 28, 1996, and registered on July 29, 1998 for services in classes 35 and 36.
- Community Trademark Registration No. 8772766 AXA (word), filed on December 21, 2009, and registered on September 7, 2012 for services in classes 35 and 36.
- French national Trademark Registration No. 1270658 AXA (word), filed on January 10, 1984 for services in classes 35, 36 and 42.
The disputed domain name <axa-eqiutable.com> was registered on May 21, 2010. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
The Complainant has a long business history, dating back to the 18th century. The name AXA was introduced in 1985. The Complainant claims to be famous and world leader for its numerous activities in three major lines of business: property and casualty insurance, life insurance and savings, and asset management, proposed both to individuals and to business companies.
The Complainant is present in 56 countries, employs 157,000 people worldwide and serves 102 million customers.
In addition to the registered AXA trademarks, the Complainant is also the holder of four domain name registrations reproducing the AXA trademark: <axa.com>, <axa.net>, <axa.info>, and <axa.fr>, all registered prior to the disputed domain name <axa-eqiutable.com>.
Further, the Complainant has an American subsidiary, Axa Equitable Life Insurance Company, holding the domain name <axa-equitable.com>.
The Complainant asserts that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. <axa-eqiutable.com> reproduces entirely the trademark AXA, and the adjunction of the term “eqiutable” to the trademark AXA does not diminish the confusing similarity with the AXA trademark, but is rather instead likely to increase the risk of confusion.
The Complainant also argues that the disputed domain name <axa-eqiutable.com> is almost identical to the complainant’s trademark AXA EQUITABLE, where the Respondent appears to have employed a minor misspelling to take bad faith advantage of spelling errors made by Internet users.
Further, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name <axa-eqiutable.com>, as the Complainant has never licensed or otherwise permitted the Respondent to use the Complainant’s trademark or to register any domain name including the trademark. The complainant also notes that the Respondent is not seriously interested in actively using <axa-eqiutable.com> as it only is used for a parking page connected with a pay-per-click service.
Finally, the Complainant concludes that the disputed domain name was registered and is being used in bad faith. The trademark AXA was internationally famous at the time of registration of <axa-eqiutable.com>, and the Respondent was obviously aware of the Complainant’s trademark at the time of acquiring the disputed domain name.
The adjunction of the term “eqiutable” proves that the Respondent undoubtedly knew both the AXA trademark and the AXA EQUITABLE trademark or related company name.
The Complainant also refers to the fact that the Respondent initially used a proxy service to avoid disclosing the Respondents real identity, and that when identified, the Respondent turns out to be known for practicing cybersquatting.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 is the owner of numerous trademark registrations for AXA, including the US national registration of AXA EQUITABLE REDEFINING/STANDARDS (fig).
The relevant part of the disputed domain name is “axa-eqiutable”. The addition of the generic Top-Level Domain “.com” is insufficient to distinguish the disputed domain name from the Complainant’s mark.
The Panel concludes that the disputed domain name consists of the Complainants trademark AXA, followed by the word “eqiutable” which the Panel concludes is a misspelling of the generic word “equitable”.
As stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a domain name from a trademark. The generic word may even add to the confusing similarity (see Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627, finding that “[t]he addition of the generic term ‘online’…is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant’s online business”); see alsoSwarovski Aktiengesellschaft v. wutianhao, WIPO Case No. D2010-0503 (“the disputed domain name consists of ‘swarovskicrystalshop’, which can easily be read as ‘swarovski’, ‘crystal’ and ‘shop’… Given that the disputed domain name contains the Complainant’s mark SWAROVSKI in its entirety, adding the generic terms ‘crystal’ and ‘shop’ that are related to the Complainant's crystal products marked with SWAROVSKI does not preclude a finding of confusing similarity”).
In this case, the word “equitable” is also related to the Complainant’s US trademark registration as well as US subsidiary company, thereby - independently of its obvious misspelling – rather add to the relation to and confusing similarity with the Complainant’s trademark.
The Panel concludes that <axa-eqiutable.com> is confusingly similar to the Complainants trademarks AXA and AXA EQUITABLE REDEFINING/STANDARDS.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
By not submitting a Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name or to rebut the Complainant’s prima facie case that it lacks rights or legitimate interests.
The Respondent has no rights to use the Complainant’s trademark/s and is not an authorized agent or licensee of the Complainant’s products, services or trademarks. There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in <axa-eqiutable.com>, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
On the contrary – the Panel finds that the Respondent’s use of the disputed domain name for a web site with sponsored links offering “life insurance resources” was an obvious attempt to mislead customers seeking for the Complainant’s services and website and to earn click-through revenue. Such use does not establish rights or legitimate interests. See Fluor Corporation v. Above.com Domain Privacy/ Huanglitech, Domain Admin, WIPO Case No. D2010-0583 (noting that it is “well established” that the use of a domain name to “trade[…] off Complainant’s trademark […] is not bona fide” and “cannot confer any rights or legitimate interests” upon a respondent); see also CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt.Ltd., WIPO Case No. D2010-1680 (registration of a domain name “for the purpose of misleading or diverting consumers” cannot give to rise rights or legitimate interests).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As concluded above, the Complainant’s trademark AXA (in different versions) is well protected and well known in numerous countries in the world, including the Russian Federation – the home country of the Respondent.
The disputed domain name consists of the Complainant’s trademark AXA with the addition “eqiutable”, being an obviously misspelled version of the descriptive word “equitable” that is also used and registered by the Complainant together with the trademark AXA.
Thus, it is clear to this Panel that the Respondent had the Complainant’s trademark in mind when the Respondent registered the disputed domain name, and that the addition of the word ““eqiutable” was not made in order to make a difference, but rather a deliberate attempt to create a likelihood of confusion with the Complainant’s mark and services as to the source, sponsorship, affiliation, or endorsement of the website connected with the disputed domain name, and take advantage of users misspelling when search for the Complainant’s services. See GA Modefine S.A. v. Thomas Casey, WIPO Case No. D2009-0826 (finding that a respondent’s knowledge of a complainant’s trademark rights, and its bad faith registration of the disputed domain name, may be inferred when the domain name merely consists of the complainant’s trademark and a term “clearly relate[d]” to the complainant’s products).
The disputed domain name is used for a website with sponsored links offering “life insurance resource”. In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, thus enabling the Respondent to earn revenues by attracting users to its website. See Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith); see also Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364 (“the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <swarovski.com> and <swarovski.net> domain names”).
The Panel also notes that the Respondent initially used a proxy service to avoid disclosing the Respondent’s real identity. Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. In this case, the Respondent has been involved in similar domain name disputes related to the registration of misspelled versions of others trademarks. Therefore, the Panel concludes that the Respondent has used the proxy registration service to increase the difficulties for the Complainant in identifying the Respondent. This is further indication of Respondent’s registration and use in bad faith.
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within 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-eqiutable.com> be transferred to the Complainant.
Date: June 8, 2015