WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AXA SA v. Yang Ji Feng

Case No. D2017-1299

1. The Parties

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

The Respondent is Yang Ji Feng of Anqing, Anhui, China.

2. The Domain Name and Registrar

The disputed domain name <axa.sale> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2017. On July 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 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.

On July 12, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 13, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 in Chinese and English of the Complaint, and the proceedings commenced on July 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2017.

The Center appointed Jonathan Agmon as the sole panelist in this matter on August 11, 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, AXA SA, is a French insurance and asset management company traded on the Paris Stock Exchange. The Complainant has begun use of its name AXA as early as 1984, the Complainant gained reputation in its name in connection with insurance services. The Complainant is operating under the AXA trademark in China, where the Respondent is located.

The Complainant has some 165,000 employees in 64 countries serving over 100 million customers.

The Complainant owns several trademark registrations for the mark AXA. For example, European Union Trade Mark registration no. 373894, registered on July 29, 1998; International trademark registration no. 490030, registered on December 5, 1984; International trademark registration no. 1290037, registered on December 16, 2015; and more.

The Complainant also holds domain names incorporating AXA. For example: <axa.com> and <axa.info>.

The disputed domain name was registered on May 13, 2017.

The disputed domain name is parked and redirects Internet users to various websites offering direct marketing of various goods and services.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is both visually and phonetically identical to the AXA trademark and therefore is identical or confusingly similar to the Complainant’s AXA trademark. The Complainant contends that the Top-Level Domain (“TLD”) “.sale” does not serve to distinguish the disputed domain name from the Complainant’s trademark.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant further contends that it has not authorized the Respondent to use the AXA trademark.

The Complainant further argues that the disputed domain name was registered and is being used in bad faith as the Respondent offered the Complainant the disputed domain name for sale.

The Complainant further argues that the Respondent is using the disputed domain name in bad faith when it is parked and offers pay-per-click links.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural Issue – Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain names is Chinese.

The Complainant requested that the language of the proceedings be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

In deciding the language of the proceedings, the Panel takes the following into consideration:

a) The disputed domain names consist of Latin characters;

b) The Respondent communicated with the Complainant using the English language;

c) The Respondent did not respond to the Complainant’s request that English be the language of the proceedings, or otherwise comment on the language of the proceedings.

d) The Respondent was notified of the proceedings in Chinese and in English, but chose not to file a Response or otherwise participate in the proceedings.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English.

Accordingly, the Panel determines that the language of this administrative proceeding should be English.

6.2. Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the mark AXA. For example, European Union Trade Mark registration no. 373894, registered on July 29, 1998; International trademark registration no. 490030, registered on December 5, 1984; International trademark registration no. 1290037, registered on December 16, 2015; and more.

The disputed domain name <axa.sale> incorporates the Complainant’s AXA trademark in its entirety with the addition of the TLD “.sale”. The addition of the TLD suffix “.sale” does not have the capacity to distinguish the disputed domain name from the Complainant’s AXA registered trademark and is disregarded when comparing the disputed domain name with the Complainant’s trademark. See Philip Morris USA Inc. v. Zhang Xiao, WIPO Case No. D2017-1156; Altria Group, Inc., Altria Group Distribution Company v. Zhang Xiao, WIPO Case No. D2017-1157. If anything, the addition of the TLD suffix “.sale” to the disputed domain name, may in fact serve to increase confusion when the trademark is associated with the sale of goods or services, as is the case here. See Volkswagen AG v. Steve William, WIPO Case No. D2015-1317.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to the AXA trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof, the Respondent is not known by the Complainant’s trademark, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.

The Respondent has not submitted any Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the AXA trademark since at least the year 1984. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The disputed domain name is identical to the Complainant’s trademark. Previous UDRP panels have found that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy. This is especially true when the Complainant’s trademark has no meaning and is so closely associated with the Complainant, as is the case here.

In addition, the evidence provided by the Complainant shows that the Respondent is offering, directly or through an agent, the disputed domain name for sale. The Complainant provided evidence showing the Respondent offered the disputed domain name for sale through third-party resellers, such as SEDO. When the Complainant contacted the Respondent, the Respondent, itself or through an agent, offered to sell the disputed domain name to the Complainant for a sum in excess of its documented out-of-pocket costs directly relating to the purchase of the disputed domain name. Of particular note was the Respondent’s agent statement that the offering price was “lower than the basic cost of your application for arbitration”. Such statement indicates that the Complainant’s sole intent was to register the disputed domain name to exert substantial consideration from the Complainant. In addition, the Respondent’s agent stated that “if you do not want to accept, we may also sell to other people, not limited to your competitors”. Thus, not only was the Respondent seeking to exert substantial consideration from the Complainant, it was also threatening the Complainant with selling the disputed domain name to its competitors. Under the circumstances of this case, it is difficult to come to any other conclusion other than that the Respondent’s behavior is clear evidence of bad faith registration and use of the disputed domain name contrary to Policy. (Policy, paragraph 4(b)(i)).

Moreover, the Complainant provided evidence that shows that the Respondent is using the disputed domain name to direct Internet users, through an automatic forwarding parking service to various websites offering goods and/or services, some of which may be competing with the services of the Complainant. Numerous UDRP decisions have established that use of a pay-per-click parking service may provide indication that the Respondent’s primary intent with respect to the disputed domain name is to trade off its value through these pay-per-click links. See Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363. Likewise, the use of similar services which automatically direct Internet users to websites offering competing goods and/or services with those of the Complainant and which would provide the Respondent with revenue per click or referral is evidence of bad faith registration and use.

Based on the evidence that was presented to the Panel, including the Complainant’s registered trademark, the use of the Complainant’s trademark in the disputed domain name, the practice of automatic forwarding parking services, the offer for sale made by the Respondent or its agent, and the Respondent’s failure to answer the Complaint, the Panel finds that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 disputed domain name <axa.sale> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: August 22, 2017