WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AXA SA v. YAnina, DostavkaProduktov

Case No. D2017-0237

1. The Parties

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

The Respondent is YAnina, DostavkaProduktov of Kiev, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <axaukraine.com> (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 February 7, 2017. On February 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 8, 2017, 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 February 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 6, 2017.

The Center appointed Olga Zalomiy as the sole panelist in this matter on March 9, 2017. 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 French multinational insurance and asset management firm. The Complainant owns trademark registrations for the AXA mark. Among others, the Complainant owns a French registration No. 1,270,658 registered on January 10, 1984, and an international trademark registration No. 490030 dated December 5, 1984.

The Complainant also registered domain names including its AXA trademark, such as <axa.com> and <axa ukraine.com>.

The Respondent registered the Domain Name on April 22, 2016. Currently, the Domain Name does not resolve to a website. The Domain Name previously redirected to a website of a competitor.

Prior to filing the Complaint in this case, the Complainant sent five cease-and-desist letters to the Respondent informing it about the Complainant's rights in the AXA trademark and demanding that the Respondent discontinue its use of the Domain Name and the Complainant's trademark. The Respondent never replied to the cease-and-desist letters.

5. Parties' Contentions

A. Complainant

The Complainant alleges that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant contends that it owns international, European Union, French, and American trademark registrations for the well-known AXA trademark. The Complainant alleges that it is the owner of several domain names, which reproduce its AXA trademark. The Complainant claims that the Domain Name incorporates the AXA trademark in its entirety, so it is difficult, if not impossible to distinguish from the Domain Name regardless of added terms. The Complainant argues that addition of the geographical term "Ukraine" to the trademark AXA in the Domain Name does not diminish confusing similarity between the Domain Name and the AXA trademark. The Complainant contends that it owns a "www.axa-ukraine.com" website offering its insurance services in Ukraine, which increases the likelihood of confusion between the AXA trademark and the <axaurkaine.com> Domain Name.

The Complainant claims the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant claims that it has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name incorporating the Complainant's trademarks. The Complainant alleges that the Respondent has not been commonly known by the Domain Name and is not making a fair use of the Domain Name. The Complainant contends that the Domain Name redirects Internet users to the website "www.arsenal-shrahovanie.com/ru" belonging to the insurer Arsenal-Strahovanie, which offers competitive financial and insurance services in Ukraine and the Russian Federation. The Complainant argues that the Respondent is intentionally seeking to exploit user confusion by diverting Internet users away from the Complainant's website to the Respondent's website to capitalize on the fame of the Complainant's marks and that such use does not amount to bona fide commercial use, sufficient to legitimize any rights or interests the Respondent might have in the Domain Name.

The Complainant claims that the Domain Name was registered and is being used in bad faith. The Complainant argues that the Respondent, who is a competitor of the Complainant, was aware of the Complainant's AXA trademark when it registered the Domain Name. The Complainant claims that because the Domain Name is very similar to its famous trademark and because it is used to redirect users to a website, which offers competing services, it is clear that the Respondent registered the Domain Name with full knowledge of the Complainant's trademark and in bad faith to take advantage of the Complainant's reputation. The Complainant alleges the Respondent is using the Domain Name in bad faith for the purpose of disrupting the business of a competitor. The Complainant claims that the Respondent is using the Domain Name to attract Internet users for commercial gain by creating a likelihood of confusion as to source or affiliation to the Complainant. The Complainant argues that the Respondent diverts potential clients from the Complainant by offering financial and insurance services via the website connected to the Domain Name. The Complainant points to the Respondent's failure to respond to its cease-and-desist letters as evidence of the Respondent's bad faith intentions.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

A. Identical or Confusingly Similar

Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has established its rights in the AXA trademark by submitting evidence of its trademark registrations.

The Panel finds that the Domain Name is confusingly similar to the Complainant's mark. The addition of a generic Top-Level Domain suffix such as ".com" is to be generally disregarded under the confusing similarity test as it is a technical requirement of domain name registration. See paragraph 1.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). Thus, the inquiry here under paragraph 4(a)(i) of the UDRP is only whether the "axaukraine" second-level domain is identical or confusingly similar to the Complainant's mark AXA. The second-level domain incorporates the Complainant's trademark in its entirety and it is well established that "[t]he addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP." See paragraph 1.9, WIPO Overview 2.0. Therefore, the Domain Name is confusingly similar to the Complainant's AXA trademark.

Thus, the Panel holds that the first element of the UDRP has been proved.

B. Rights or Legitimate Interests

Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent. Once the complainant has made out the prima facie case, the burden of demonstrating rights or legitimate interests in the domain name shifts to the respondent. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See paragraph 1.9, WIPO Overview 2.0.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant claims that it has not licensed or otherwise permitted the Respondent to use its AXA trademark, nor has it allowed the Respondent to apply for or to use any domain names incorporating the AXA mark. The Panel accepts this contention because the Respondent failed to respond or to provide any evidence disproving the contention.

The Complainant alleges that there is no evidence suggesting that the Respondent is commonly known by the Domain Name. The Panel accepts the Complainant's contentions and finds it unlikely that the Respondent is commonly known by the Domain Name. The Respondent's name is "YAnina" and the Respondent Organization's name is "DostavkaProduktov", which in Russian means "delivery of groceries", and have nothing in common with the Domain Name.

The Complainant claims that the Respondent does not use the Domain Name in connection with a bona fide offering of goods or services. The Complainant alleges that the Domain Name redirects consumers to a website "www.arsenal-strahovanie.com/ru", which offers competitive insurance services. The Respondent did not dispute the Complainant's allegations. Even though the Complainant submitted into evidence only screenshots of the "www.arsenal-strahovanie.com/ru" website, there is no evidence suggesting that the Domain Name was not used in the manner that the Complainant described. Currently, the Domain Name does not resolve to any website. The Panel, thus, finds that it is more likely than not that the Respondent does not genuinely promote products or services nor makes a noncommercial or fair use of the Domain Name.

Because the Complainant has made out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent and the Respondent failed to demonstrate that it has any rights or legitimate interests in the Domain Name, the Panel holds that the second element of the UDRP has been satisfied.

C. Registered and Used in Bad Faith

Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.

The Complainant argues that the Respondent's actions constitute bad faith registration and use of the Domain Name pursuant to the UDRP, paragraph 4(b)(iv) because the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating likelihood of confusion with the Complainant's mark as to the affiliation or endorsement of either the Respondent or its website. Currently, the Domain Name does not resolve to a website. However, the evidence on file shows that the Domain Name was likely used to redirect to a website, which offered competing insurance services in Ukraine and the Russian Federation. It is well-established that passive holding does not prevent a finding of bad faith. See paragraph 3.2, WIPO Overview 2.0. As one UDRP panel held in similar circumstances: "the presence of the Domain Name in the hands of the Respondent represents, in the view of the Panel, an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use." Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited, WIPO Case No. D2014-1564. This is especially true in this case because the Respondent had used the Domain Name, which is very similar to the Complainant's <axa-ukraine.com> domain name to redirect to a website offering competing services. Thus, the Panel holds that the Respondent's current passive holding of the Domain Name also amounts to bad faith use of the Domain Name.

The Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been proved.

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 Domain Name <axaukraine.com> be transferred to the Complainant.

Olga Zalomiy
Sole Panelist
Date: March 21, 2017