WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Oghenejokwo Buhari, Sjbuhari Ltd.
Case No. D2016-2178
1. The Parties
Complainant is AXA SA of Paris, France, represented by Selarl Candé - Blanchard - Ducamp, France.
Respondent is Oghenejokwo Buhari, Sjbuhari Ltd. of Warri, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <axasecure.info> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2016. That same day the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 28, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 28, 2016.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on December 2, 2016. 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 AXA Group has a long-standing history going back to the Eighteenth century. After a succession of mergers, acquisitions and name changes, the trade name AXA was introduced in 1985. Since 1988, AXA is traded on the Paris Stock Exchange and in 1996 it became listed on the New York Stock Exchange. Complaint, AXA SA, is the holding company of the AXA Group.
The AXA Group is well known for numerous activities in three major lines of business: property and casualty insurance, life insurance and savings, and asset management for individuals and companies. For these businesses, AXA Group employs 166,000 people worldwide and serves 103 million customers. The Group is present in 64 countries doing business, for example, in Europe, North America and Asia-Pacific. Also, the AXA Group is well known in the United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”) where it has over 10 million customers and employs 10,500 people. In the United Kingdom, AXA operates through the company AXA Insurance UK plc; which is one of the largest insurers in the United Kingdom, providing personal and commercial insurance direct to the customer.
Complainant owns various trademark registrations for AXA (“the AXA Mark”) including: International trademark registration No. 490030 (registered on May 12, 1984) for advertising and business, insurance and financial services; European Union trademark registration No. 008772766 (registered September 7, 2012) for insurance and finance, banking services, all risks insurance, and savings banks; and United Kingdom trademark registration No. 00001272911 (registered on September 30, 1988) for insurance services and financial banking services. Complainant is also the owner of the following domain names: <axa.com>, <axa.net>, <axa.info>, and <axa.fr> registered respectively on October 18, 2009, January 14, 2011, July 30, 2001 and May 20, 1996. Further, AXA Insurance UK plc, Complainant’s subsidiary, owns <axa.co.uk> registered in August 1996 which directs Internet users to Complainant’s official website.
Respondent registered the Domain Name on July 3, 2016. The website to which the Domain Name used to resolve is no longer publicly accessible.
5. Parties’ Contentions
The Domain Name <axasecure.info> is confusingly similar to the AXA Mark because it incorporates the entirety of the AXA Mark, which is highly distinctive. This is particularly true where the trademark is well known as with AXA. A likelihood of confusion exists regardless of adding the term “secure” to the AXA Mark, which may suggest to the public that the website associated with the Domain Name is an official website.
Respondent has no rights or legitimate interests in the Domain Name because: (1) Complainant has never licensed or otherwise permitted Respondent to use its trademarks or to register a domain name including the AXA Mark; and (2) Respondent has not been commonly known by the Domain Name and is not making a fair use of the Domain Name – Respondent is an individual named Oghenejokwo BUHARI. Furthermore, on the homepage of the website associated with the Domain Name it indicates that the site belongs to “AXA Security Safe Deposits Limited” registered under 1734493. This company does not exist, rather the company registered under this number on the UK companies house’s registry is “Metropolitan Safe Deposits Limited” whose address is in London, United Kingdom and whose website link is provided under the “NEWS” tab of Respondent’s website.
By using the Domain Name to offer the same services as Complainant (i.e., financial and insurance services) Respondent is intentionally seeking to cause consumer confusion by diverting Internet users away from Complainant’s site to Respondent’s site for the latter’s benefit. Such use is not a bona fide commercial use.
Respondent has registered and is using the Domain Name in bad faith. Respondent was aware of the AXA Mark at the time he acquired the Domain Name, considering that the Mark has been used internationally and is well known. It is registered in numerous countries around the world including Nigeria (Respondent’s home country) and the United Kingdom (where Respondent provides its financial and insurance services). The Domain Name consists of Complainant’s AXA Mark with the addition of the word “secure” which corresponds to the nature of Complainant’s business of insurance and finance. Thus, Respondent had the AXA Mark in mind when it registered the Domain Name.
Respondent is using the Domain Name in bad faith because it is using a confusingly similar mark for commercial gain – to sell financial and insurance services and it is using a false company name (as discussed above) under the registration number 1734493. Respondent is already using “Metropolitan Safe Deposits Limited” on a website linked to Respondent’s website, it need not use the AXA Mark for its business.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the Domain Name to the Complainant:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
In accordance with paragraph 14(b) of the Rules, if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004. Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that Complainant prove each of the three elements set forth therein to obtain a decision that the Domain Name should be cancelled or transferred.
A. Identical or Confusingly Similar
It is uncontested that Complainant has established rights in its AXA Mark long before Respondent registered the Domain Name on July 3, 2016. These rights were established by Complainant’s long-term use and by virtue of the various trademark registrations mentioned above.
The Domain Name <axasecure.info> consists of Complainant’s AXA Mark in its entirety plus the descriptive word “secure” and the generic Top-Level Domain (“gTLD”) suffix “.info”. It is an accepted principle that the addition of suffixes such as “.info”, being a gTLD, is typically not a distinguishing factor. Furthermore, Respondent’s use of the term “secure” fails to distinguish the Domain Name from Complainant's mark because, as indicated repeatedly on Complainant’s website, Complainant is in the business of offering financial “security” to their clients (e.g., life insurance, products and accounts specifically designed for retirement, and investment products and services). Consequently, the Panel finds that the Domain Name is confusingly similar to the AXA Mark.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is undisputed that Complainant has not licensed or otherwise permitted Respondent to use the AXA Mark for any purpose. Also, there is no evidence that Respondent has been commonly known by the Domain Name. In fact, on the homepage of the website associated with the Domain Name (“Respondent’s website”) there is an indication that the site belongs to “AXA Security Safe Deposits Limited” registered under 1734493, however that registry number actually belongs to the same or a similar business of Respondent’s named “Metropolitan Safe Deposits Limited”. A link to the website of this business was provided under the “News” tab of Respondent’s website. Furthermore, the evidence shows that Respondent is not making a legitimate noncommercial use of the Domain Name under the Policy because Respondent is using the Domain Name to redirect the public to its own website where it offers insurance in conjunction with its rental of safety deposit boxes. That is: (1) on Respondent’s website it prominently displays a design comprised of crossed keys in a shield next to the word “Insurance” followed by “Up to £500,000”; (2) the site also has a section titled “Insurance” which informs customers and potential customers that the safe deposit boxes Respondent rents carry “comprehensive risk insurance” which can save them substantially on their home insurance premiums; (3) the public is directed to contact Respondent using “AXA Financial Security S.A. (Foreign Operations Department)”; and (4) customers can purchase additional insurance for their safety deposit boxes from Respondent. Thus, Respondent is using a confusingly similar mark for profit in the very business sector – insurance – in which Complainant operates.
Insofar as Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following: (i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Respondent has provided no evidence to carry its burden.
Complainant has raised a prime facie presumption of Respondent’s lack of rights or legitimate interests in the Domain Name, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and used the Domain Name in bad faith. Complainant’s long-standing rights in the AXA Mark are uncontroverted, as is the fact that Respondent registered the Domain Name long after Complainant established its rights in the Mark worldwide and obtained trademark registrations in numerous countries around the world including Nigeria (Respondent’s home country) and the United Kingdom (where Respondent appears to have an established business). Respondent registered the Domain Name, which is confusingly similar to Complainant’s well-known AXA Mark, without any rights or legitimate interests to it. For all of these reasons, the Panel concludes that it is more likely than not that Respondent knew of Complainant and its rights in the AXA Mark when it registered the Domain Name.
With regard to bad faith use of the Mark, Respondent is using a confusingly similar Domain Name to host a site that sells insurance, which is one of the products that Complainant sells under the AXA Mark. The Panel therefore concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with the AXA Mark as to the source, sponsorship, affiliation or endorsement of such sites or the products or services advertised on such sites, within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel therefore holds that Complainant has satisfied 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 Domain Name <axasecure.info> be transferred to Complainant.
Harrie R. Samaras
Date: December 11, 2016