AXA SA v. Whois Privacy Protection Service, Inc., Demand Domains, Inc.
Case No. D2007-1382
1. The Parties
The Complainant is AXA SA, France, represented by Selarl Marchais De Candé, France.
The Respondent is Whois Privacy Protection Service, Inc.,United States of America, Demand Domains, Inc., United States of America, represented by Christina G. Radocha, United States of America.
2. The Domain Name and Registrar
The disputed domain name <axaonline.net> is registered with EnomX, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2007. Following communications between the Center and the Complainant, it was confirmed that EnomX, Inc. was the Registrar for the disputed domain name (the Complaint as first filed identified another registrar). On November 1, 2007, the Center transmitted by email to EnomX, Inc. a request for registrar verification in connection with the domain name at issue. On November 1, 2007, EnomX, Inc. transmitted by email to the Center its verification response, confirming the relevant ‘Whois’ details for the Respondent.
In response to a notification by the Center that the Respondent named in the Complaint was not the registrant named in the Whois details (as confirmed by the Registrar), the Complainant filed amendments to the Complaint on November 6 and 8, 2007. The initially amended Complaint identified ‘Whois Privacy Protection Service, Inc.,’ as the Respondent, based on what appears to have been the Whois record at the time. Following confirmation from the Registrar that the registrant-in-fact is Demand Domains, Inc., the Complaint was additionally amended to specify Demand Domains, Inc. as the proper Respondent.
(Panels in some other cases have been prepared to include a privacy service as being included as a Respondent (see e.g. Deutsche Telekom AG v. Philip Seldon/RegTek Whois Envoy,
WIPO Case No. D2007-0674). For the purpose of these proceedings, and consistently with this precedent, Whois Privacy Protection Service, Inc., is also included as a named Respondent in addition to Demand Domains, Inc. However, as only Demand Domains, Inc. appears to be the registrant-in-fact of the disputed domain name, references below to the activities of ‘the Respondent’ are references to Demand Domains, Inc.)
The Center then verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 9, 2007. The proceedings were suspended following a request from the Complainant, on November 26, 2007, for a suspension “in order to obtain the amicable transfer of the [disputed] domain name” from the Respondent. Such an agreement was not reached and, on December 27, 2007, the Complainant requested the reinstitution of the proceedings. As notified to the parties by the Center, all deadlines following the reinstitution of the proceedings were calculated from the re-institution date.
As such, in accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2008. The Respondent did not submit any response by the reinstituted due date. The Respondent was notified, by communication from the Center dated January 7, 2008, of its failure to submit a Response by the due date.
The Center appointed James A. Barker as the sole panelist in this matter on January 15, 2008. 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.
By email to the Center dated January 15, 2008, the Respondent requested the opportunity to submit a late Response. To ensure that both parties had an opportunity to make submissions, and under paragraph 10 of the Rules, the Panel granted the Respondent’s request on the condition that the Response be submitted by January 24, 2008. The Respondent submitted its Response on January 23, 2008. The deadline for the decision in this case was not consequentially extended.
4. Factual Background
The following facts are not contested.
The Complainant is the holding company of the AXA Group, whose main business is in the field of insurance and financial services. The Group is widely known under the trade name ‘AXA’ in relation to its fields of business.
The Complainant is the owner of a number of registered trademarks for the mark AXA in various countries, including in the United States of America where the Respondent is based. The Complainant’s registered rights date back to at least 1984.
The Complainant also operates websites at “www.axa.com”, “www.axa.fr” and “www.axa.eu”, registered in 1995, 1996 and 2006 respectively.
The Complainant provided evidence that the disputed domain name reverted to a ‘portal’ or ‘directory’ website which also included a search facility (although the date on which the Complainant gathered that evidence is not specified in the Complaint). The homepage for that website prominently displayed the heading ‘axaonline.net’, and also a list of links, with titles such as ‘online’, Stefano Online’, ‘Fontainebleau Online’, ‘Wireless Internet Phone’, Wireless Phone Internet’, ‘Website’, and ‘Axa’, among others. At the bottom of the webpage, further links appeared, including a group of links in a box under the heading ‘Axa’, including links to ‘Investment Managers’, ‘Achievement’, ‘Axa Car Insurance’, and ‘Liberty Bowl’.
At the date of this decision, the disputed domain name also reverted to a ‘portal website’, although in somewhat different form to the website described in the initial Complaint. It was however, similar in look and feel to the website described in the amended Complaint (filed on November 6, 2007). The Complainant provided evidence that the disputed domain name then reverted (although the Complainant does not specify a precise date) to a website which included the heading ‘Welcome to axaonline.net’, and included a series of links alongside a photograph of a smiling woman carrying a backpack. Those links were, among others, titled ‘voyage’, ‘spectacle’, ‘shopping’, ‘ordinateur’, ‘matériel informatique’, among others. At the date of this decision, the website included, among others, the following links: ‘Adventure tours’, Books’, ‘Broadband’, ‘Business Education, ‘Car Rental’, ‘Cheap DVDs’, ‘Education’, and ‘Finance’.
5. Parties’ Contentions
A. Complainant
The Complainant claims that the disputed domain name is highly distinctive, and is not distinguished by the inclusion of the generic term ‘online’ in the disputed domain name. In support of these contentions the Complainant refers to Finaxa S.A .v Spiral Matrix,
WIPO Case No. D2005-1044 (in which the then Panel found that the Complainant’s AXA mark was distinctive) and Oki Data Americas, Inc. v. ASD Inc.,
WIPO Case No. D2001-0903 (for the principle that a domain name that wholly incorporates a mark is sufficient to establish identity or confusing similarity). The Complainant thus states that the risk of confusion between its mark and the disputed domain name is obvious.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, on the basis that it has no prior right or interest to justify use of that mark, and has no relevant permission from or relationship with the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant claims that the disputed domain name has been registered to attract Internet users to the Respondent’s website by intentionally creating a likelihood of confusion with the Complainant’s mark. The Complainant refers to various prior decisions under the Policy, to the effect that using a domain name that incorporates another’s mark to generate Internet traffic to ‘parking’ websites, may be evidence of registration and use in bad faith.
B. Respondent
The Respondent states that it was unaware of the Complainant’s rights until the Complaint was filed. The Respondent states that, “had Complainant contacted Respondent prior to initiating this UDRP action, Respondent would have willingly, and at no charge, transferred the <axaonline.net> domain to Complainant.” [Although the Panel notes that, in this respect, the case file indicates that the Whois details for the Respondent, immediately before confirmation to the Center from the Registrar of the true registrant, provided only details for ‘Whois Privacy Protection Service, Inc.’]
The Respondent provides various evidence of emails between its own corporate counsel, corporate counsel for the Complainant, and the registrar, in which the Respondent offered to transfer the disputed domain name to the Complainant free of charge. The Respondent provided evidence that the registrar sent an e-mail to counsel for Complainant on December 27, 2007, and attempted to assist in the transfer of <axaonline.net>. The Respondent contends that neither Respondent nor the domain registrar received a response from Complainant
The Respondent therefore requests that the Panel make a finding that it acted in good faith and undertakes that, if the Complaint is dismissed, that it will transfer the disputed domain name to the Complainant. Alternatively, the Respondent requests that the Panel refrain from making a finding of bad faith against the Respondent and simply endorse the Respondent’s offer to transfer <axaonline.net> to the Complainant.
6. Discussion and Findings
The Complaint has the burden of proving all of the following, if it is to succeed, under paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 was registered in bad faith and used in bad faith.
Each of these three elements is discussed in turn below.
A. Identical or Confusingly Similar
The Complainant clearly ‘has rights’ in a mark, for the purpose of paragraph 4(a)(i) of the Policy. The Complainant provided substantial evidence of its marks. The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s AXA mark, for much the same reasons identified in the Complaint. The Respondent does not dispute the Complainant’s contentions in this respect.
The Complainant has therefore established this first element.
B. Rights or Legitimate Interests
Neither does the Respondent dispute the Complainant’s contentions that the Respondent lacks rights or legitimate interests in the disputed domain name. It seems that, because the Respondent has indicated its willingness to transfer the disputed domain name, it has seen it unnecessary to respond to the Complainant’s case against it on this point.
Further, the activity of the Respondent in this case (that is, the operation of an apparently commercial web directory displaying various links to third-party websites) is similar to its conduct described in other cases, in which the then panel found that the conduct was not a bona fide offering under paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. See The Royal Bank of Scotland Group plc, Directline Insurance plc, and Privilege Insurance Company Limited v. Demand Domains, c/o C.S.C., FA 714952.
For these reasons, the Panel finds that the Complainant has established this second element.
C. Registered and Used in Bad Faith
The Respondent contends, contrary to the arguments of the Complainant, that it acted in good faith. In support of this argument, the Respondent contends that it did not have actual knowledge of the Complainant until notification of this dispute. The Respondent also suggests that it sought to effect a transfer of the disputed domain name to the Complainant (and suggests that this was frustrated by a lack of communication from the Complainant).
However, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, for the following reasons.
Firstly, the Respondent has a history of registering domain names and then either not responding to administrative proceedings brought against it (see e.g. Peek & Cloppenburg KG v. Whois Privacy Protection Service, Inc./Demand Domains,
WIPO Case No. D2007-0019) or agreeing to the transfer of a disputed domain name in its response, although not actually achieving any such voluntary transfer prior to appointment of a panel (see e.g. Instituto del Fondo Nacional de la Vivienda para los Trabajadores v. Whois Privacy Protection Service Inc., Demand Domains, Inc.,
WIPO Case No. D2007- 0917).
The Panel finds that the Respondent’s prior conduct, as well as its conduct in this case, go toward a finding that the Respondent has engaged in a ‘pattern’ of bad faith registration of domain names, within the meaning of paragraph 4(b)(ii) of the Policy. As noted above, the Respondent has previously been an unsuccessful Respondent in proceedings under the Policy in circumstances similar to this one.
Secondly, the Respondent states that it “has a policy against holding domains in derogation of legitimate rights holders”. However, the Respondent provided no evidence of what steps it takes (if any) to give effect to that policy. On the contrary, the Respondent’s conduct in this case, and in previous cases, suggests that it takes few active steps to avoid administrative proceedings brought by legitimate rights owners. (Indeed, there may be no real incentive for the Respondent to expeditiously transfer the disputed domain name if it continues to receive ‘click through’ revenue while it holds that registration. This may rather be an incentive for the Respondent to seek to frustrate or delay the resolution of proceedings against it.) Additionally, the Respondent’s use of a privacy service, and prior failure to transfer domain names in comparable circumstances, indicates a pattern of putting complainants through unnecessary administrative delay and expense.
The Respondent’s contention - that it would have willingly transferred the disputed domain name had the Complainant contacted it before these proceedings - is disingenuous. There is no evidence that the Respondent provided, via its Whois details or otherwise, any real contact details for this purpose. The failure of the Respondent to transfer disputed domain names in similar circumstances (in e.g. Instituto del Fondo Nacional de la Vivienda para los Trabajadores v. Whois Privacy Protection Service Inc., Demand Domains, Inc.,
WIPO Case No. D2007-0917) may also cast doubt on the genuineness of this contention.
Thirdly, the Respondent denies any actual knowledge of the Complainant and its mark when it registered the disputed domain name. The Respondent does not explain why it did not have such knowledge. But even if it did not have that knowledge (for example, because it automatically registered the disputed domain name as part of a bulk registration), the Panel finds that the Respondent should have known of the Complainant’s rights. Relevantly, a number of prior cases under the Policy have found that a finding of bad faith may be made where a Respondent should have been aware of a complainant, and willfully avoided finding out. For example, as stated by the Panel in Mobile Communication Service Inc. v. WebReg, RN,
WIPO Case No. D2005-1304:
“respondents cannot…shield their conduct by closing their eyes to whether domain names they are registering are identical or confusingly similar to trademarks…[Where] a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.”
(For similar statements, see also Media General Communications, Inc. v. Rarenames, WebReg,
WIPO Case No. D2006-0964; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,
WIPO Case No. D2007-0062.) The Panel finds that it is reasonable to apply this principle to the registration of domain names in connection with directory websites, as in this case, as much as registrations for the purposes of resale, as in the Mobile Communication Service Inc., case cited above.
In this case, it is clear that the Respondent should have known of the Complainant. The Complainant is well-known and, as found in prior proceedings (noted above), its mark is distinctive. The only conceivable purpose for the Respondent to have registered the disputed domain name was to benefit from the reputation of the Complainant’s mark, by misdirecting Internet traffic to the Respondent’s directory website.
For these reasons, the Panel finds that the Respondent registered and has used the disputed domain name in bad faith. The Complainant has therefore established this third element.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <axaonline.net>, be transferred to the Complainant.
James A. Barker Sole Panelist
Dated: January 29, 2008
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