WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AXA SA v. Cho Y.G.--DOMAIN-FOR-SALE--

Case No. D2015-1986

1. The Parties

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

The Respondent is cho y. g. --DOMAIN-FOR-SALE-- of Seoul, The Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <axaplus.com> (the “Domain Name”) is registered with OnlineNIC, Inc., d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2015 listing cho y.g /--DOMAIN-FOR-SALE--, as the Respondent. On November 3, 2015, the Center transmitted a request for registrar verification in connection with the Domain Name to the Registrar by email. On November 4, 2015, the Registrar transmitted to the Center by email its verification response confirming the contact details of the Respondent with regard to the Domain Name.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint and the proceedings commenced on November 9, 2015. In accordance with paragraph 5(a) of the Rules, the due date for the Respondent to file a Response was November 29, 2015. The Respondent did not submit any response with respect to this proceeding. The Center notified the parties of the Respondent’s default on November 30, 2015.

The Center appointed Marylee Jenkins as the sole panelist in this matter on December 9, 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 paragraph 7 of the Rules.

4. Factual Background

Based on the review of the uncontested evidence submitted with the Complaint, the Panel determines that the Complainant owns trademark registrations for the mark AXA in multiple countries including, for example, U.S. Trademark Registration No. 2,072,157, registered June 17, 1997, International Trademark Registration No. 490,030, registered December 12, 1984, Community Trademark No. 8,772,766, registered September 7, 2012, French Trademark Registration No. 1,270,658, registered January 10, 1984 and Korean Trademark Registration No. 4100250220000, registered February 4, 2005 as well as Community Trademark No. 373,894 for the mark AXA and design, registered July 29, 1998 (“Complainant’s Mark”). The registrations are registered in at least international classes 35, 36, 39, and/or 42 with several having a priority claim of at least as early as January 10, 1984. The Complainant further bases the Complaint on common law or unregistered rights in the mark AXA PLUS for use in connection with a customer loyalty programme accessible at the website “www.axaplus.ie”. Hereinafter the AXA PLUS mark and the Complainant’s Marks will individually and collectively be referred to as the “Complainant’s Marks”.

Well prior to the registration date of the Domain Name in this proceeding, the Complainant and its related companies have also registered a number of domain names that incorporate the marks AXA and AXA PLUS (e.g., <axa.com>, <axa.net>, <axa.info>, <axa.fr>, <axaplus.co.uk> and <axaplus.ie>) and operate websites at the domain names <axa.com>, <axa.fr> and <axaplus.ie>.

The Domain Name <axaplus.com> was registered on April 24, 2013 and currently directs to a parked webpage.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is the holding company of the AXA Group, which is famous 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 further alleges that it operates in 59 countries and employs 161,000 individuals, with a notable presence in Europe, North America and the Asia-Pacific region. The Complainant alleges that the provided evidence shows that the Complainant’s Marks have become internationally famous and enjoy a worldwide good reputation, and that they are protected and well known in numerous countries in the world, including the Republic of Korea (the home country of the Respondent). The Complainant states that it is the owner of all rights in and to the Complainant’s Marks. In addition, the Complainant has indicated that it has obtained multiple trademark registrations for the Complainant’s Marks worldwide.

The Complainant has further stated that it is the owner, directly or through subsidiaries, of several domain names which incorporate the Complainant’s Marks. Particularly, the Complainant owns the domain names <axaplus.co.uk> and <axaplus.ie>, which were both registered on January 9, 2006, and maintains a website at “www.axaplus.ie”. At this site, the Complainant maintains the AXA PLUS customer program, which allows customers to save money with leading retailers on electronic items.

The Complainant asserts that the Domain Name reproduces the entirety of the Complainant’s Marks, which are alleged to be highly distinctive in view of the fact that the term “AXA” lacks a particular meaning. The Complainant further asserts that the additional term in the present case, “plus”, is a common term of no significant value in distinguishing the Complainant’s Marks from the Domain Name. Moreover, the Complainant has indicated that the term “plus”, which suggests a service of high quality, is likely to increase the risk of confusion. In view of these assertions, the Complainant alleges that the term “plus” along with the generic top level domain “.com” may cause Internet users to believe that the corresponding website is an official website of the Complainant.

The Complainant further asserts that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has provided evidence that the Domain Name was registered several years after registration of the domain names <axaplus.co.uk> and <axaplus.ie> by the Complainant’s subsidiary and the Complainant alleges that it has never licensed or otherwise permitted the Respondent to use the Complainant’s Marks or to register any domain name including the Complainant’s Marks. As a result, the Complainant asserts that no relationship exists between the parties. Furthermore, the Complainant states that the Respondent has not demonstrated any active interest in using the Domain Name because two years after registration, the Doman Name is currently being used as a parked webpage with advertising provided by a “pay-per-click” service. The Complainant asserts that this use constitutes an attempt to unfairly capitalize or otherwise take advantage of the Complainant’s Marks and so cannot create a right or legitimate interest with respect to the Domain Name.

The Complainant further asserts that the Domain Name was registered and is being used in bad faith. The Complainant alleges that the Respondent was aware of the Complainant’s Marks at the time of registration. To support this assertion, the Complainant has cited the international fame and worldwide good reputation associated with the Complainant’s Marks and the fact that the Complainant’s Marks are registered in multiple countries, including the Republic of Korea, the Respondent’s home country. The Complainant further alleges that the addition of the term “plus” was not made in order to make a difference, but rather in a deliberate attempt to create a likelihood of confusion with the Complainant’s Marks, resulting in a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website connected with the Domain Name. In view of the above, the Complainant claims that the Respondent chose and registered the Domain Name in bad faith in order to take predatory advantage of the Complainant’s reputation.

With respect to the allegation of use in bad faith, the Complainant asserts that the Respondent’s use of the Domain Name as a parked webpage with pay-per-click advertising qualifies as bad faith under paragraph 4(b)(iv) of the Policy. Moreover, the Complainant asserts that the Respondent has attempted to attract for commercial gain Internet users to its webpage by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s webpage or location or of a product or service on the Respondent’s web page. In addition, the Complainant alleges that the Respondent acquired the Domain Name primarily to sell it to the Complainant, allegedly demonstrating a pattern of conduct preventing the Complainant’s use of the registration per paragraph 4(b)(iii) of the Policy. In support, the Complainant has directed the Panel’s attention to the banner located on the top of the parked webpage at the Domain Name, which directs visitors to submit offers to purchase the Domain Name. As an additional basis for the alleged use in bad faith, the Complainant cites to the Respondent’s failure to respond to six cease and desist letters sent by the Complainant between January and July 2014. Consequently, the Complainant asserts that the Domain Name was registered intentionally and is being used in bad faith for a commercial purpose by the Respondent without any rights or legitimate interest.

B. Respondent

No response was filed by the Respondent with respect to this proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant’s favor only after the Complainant has proven that the above elements are present.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights via trademark registrations and common law in and to the Complainant’s Marks.

A review of the second-level domain of the Domain Name, “axaplus,” shows that it comprises the Complainant’s Marks (i.e., the mark AXA PLUS in its entirety and the mark AXA combined with the descriptive term “plus”). The Respondent’s incorporation of the Complainant’s Marks in the second-level domain clearly shows that the Respondent had knowledge of the Complainant’s Marks, its domain name registrations and corresponding websites when the Respondent registered the Domain Name. The Panel therefore finds that paragraph 4(a)(i) has been satisfied based on the Domain Name being identical to the Complainant’s mark AXA PLUS as well as confusingly similar to the Complainant’s AXA marks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on the evaluation of all of the evidence presented, can demonstrate the domain name holder’s rights to or legitimate interests in a domain name. These circumstances include:

(i) before any notice to the holder of the dispute, the holder’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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or

(iii) the domain name holder 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.

No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise, by the Domain Name. In addition, no evidence has been presented that the Respondent has ever asked for or been given permission by the Complainant to register or use any domain name incorporating the Complainant’s Marks in any fashion. Rather, the uncontested evidence shows that the Respondent is directing the Domain Name to a parked webpage containing commercial advertising links and a notice soliciting offers to purchase the Domain Name on the top of the web page. Such use does not create rights or legitimate interests in the Domain Name by the Respondent.

The uncontested evidence further shows that the Complainant had well-established rights in the Complainant’s Marks at the time of the Respondent’s registration of the Domain Name and that the Respondent nevertheless registered the Domain Name. In view of the uncontested evidence, the Panel does not find any right or legitimate interest in the Domain Name by the Respondent and therefore concludes that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the domain name holder includes, but is not limited to:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder’s website or location.

No evidence has been presented that the Respondent is commonly known by the Domain Name or that the Complainant has at any time assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant’s Marks. Further, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services. Rather, the Panel finds that the Respondent clearly had knowledge of the Complainant’s Marks when registering the Domain Name. This finding is supported by the uncontested evidence showing that the Domain Name was registered by the Respondent well after the Complainant’s significantly earlier registrations of the Complainant’s Marks. The Respondent’s registrations of the Domain Name, comprising the Complainant’s Marks as well as in a similar format to the Complainant’s existing domain names, provide further evidence of the Respondent’s actual knowledge of the Complainant’s Marks.

Furthermore, the Complainant has sufficiently proven that the Respondent likely acquired the Domain Name in bad faith primarily for the purpose of diverting Internet users looking for the Complainant to the Respondent’s website for its own commercial benefit. The Complainant alleges and has submitted uncontested evidence showing that the Domain Name direct to a parked webpage containing “pay-per-click” advertising links and an offer to sell the Domain Name. Based on the submitted evidence, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its parked webpage so as to create a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation or endorsement thereof for apparent commercial benefit. The Panel therefore concludes that the Respondent has registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <axaplus.com> be transferred to the Complainant.

Marylee Jenkins
Sole Panelist
Date: January 6, 2016