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FINAXA Société Anonyme v. Matthew Peskett [2004] GENDND 1105 (25 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

FINAXA Société Anonyme v. Matthew Peskett

Case No. D2004-0455

1. The Parties

The Complainant is FINAXA Société Anonyme, Paris, France, represented by Selarl Marchais De Candé, Paris, France.

The Respondent is Matthew Peskett, Dorking, Surrey, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <axacarinsurance.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2004. On June 21, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. The same day, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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”).

On June 22, 2004, the Respondent sent an email to the Complainant to acknowledge receipt of the Complaint and to let him know that he was willing to transfer the domain name free of charge. He asked the Complainant to send him a transfer request. The same day, the Center sent an email to the parties suggesting that the Complainant request the suspension of the UDRP proceedings. The Complainant did not respond.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center thus formally notified the Respondent of the Complaint, and the proceedings commenced on June 25, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2004.

The Center appointed Theda König Horowicz as the sole panelist in this matter on August 4, 2004. 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 member of the AXA Group, whose main business is in the field of insurances and financial services. The group is widely known under the trade name AXA.

The AXA Group has numerous subsidiaries in many countries around the world, including in the United Kingdom where it operates websites at the addresses “www.axa.co.uk”, “www.axa-insurance.co.uk” and “www.axamotor.co.uk”.

The Complainant owns registrations all over the world for the service marks “AXA” and “AXA INSURANCE” in relation to the field of insurance, in particular :

- English Trademark “AXA” No 1 272 911, in international class 36, of October 1, 1986;

- English Trademark “AXA” No 1 272 910, in international class 35, of October 1, 1986;

- English Trademark “AXA INSURANCE”, in international classes 16 and 36, of February 22, 1991;

- Community Trademark “AXA” No 373 894, in international classes 35 and 36, of July 29, 1998.

The domain name <axacarinsurance.com> was registered on April 13, 2004, and connected to a website offering domain names for sale in a category named “Car insurance”. According to a printout of the website in question, the domain name was for sale for 250£. The offer was formulated in French as follows :

“Le nom de domaine est mis en vente par le propriétaire à un prix fixe.

Vous pouvez acheter le nom de domaine pour :

Prix de vente : 250£”.

As already mentioned under the "Procedural History" section (see point 3. above), the Respondent sent an email to the Complainant on June 22, 2004 to let him know that he was willing to transfer the domain name free of charge. The Complainant did not respond to the said offer.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that:

The domain name <axacarinsurance.com> is strictly identical or confusingly similar to the trademarks “AXA and AXA INSURANCE” and the different domain names owned and widely used by the Complainant.

The Respondent has no prior rights or legitimate interests which would justify the use of the term “AXA”. He was not authorized to use this term and there was no connection between the choice of the domain name <axacarinsurance.com> and the website the domain name was connected to. Furthermore, the Respondent is not in the field of insurance.

The Respondent registered the domain name in bad faith as he must have been aware at the time of its registration of the existence of the trademarks “AXA” and “AXA INSURANCE”. He registered and used the domain name with the sole purpose of benefitting from the reputation of the trademarks of the Complainant when selling the domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy directs the Complainant to prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The domain name <axacarinsurance.com> is confusingly similar to the service marks “AXA” and “AXA INSURANCE” for which the Complainant owns several registrations. Indeed, as already stated in previous WIPO decisions, the domain name reproduces entirely the term “AXA”, which has no particular meaning and is accordingly distinctive. The terms “car” and “insurance”, on the contrary, are descriptive and have no significant influence on the overall impression produced by the domain name at issue (see AXA China Region Limited v. KANETT Limited, WIPO Case No. D2000-1377 and Finaxa Société Anonyme v. James Lee, WIPO Case No. D2002-1098).

The Complaint therefore meets the requirements of paragraph 4(a)(i) of the Policy.

The domain name <axacarinsurance.com> was connected to a website offering domain names for sale.

Furthermore, according to information found on the Internet by the Complainant, the Respondent is working for a Company in the business of online advertising and marketing consultancy. He is thus not active in the field of insurance.

In addition, it must be noted that the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks. There is no relationship between the parties which would justify the registration of the domain at issue by the Respondent.

The Panel thus finds that the Respondent has no rights or legitimate interests in respect of <axacarinsurance.com>.

Accordingly, the Complainant succeeds in establishing the requirements of paragraph 4(a)(ii) of the Policy.

The Complainant refers to Paragraph 4(b)(i) of the Policy which finds registration and use in bad faith to have occurred if a domain name is acquired primarily for the purpose of selling the domain name registration to the complainant or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.

The Panel notes that the domain name at issue was offered for sale on a publicly accessible website and was not directly offered for sale to the Complainant or to one of its competitors. If the Respondent considered the Complainant or its competitors as its “target audience” to sell <axacarinsurance.com> he probably would have sent an offer letter directly to them rather than posting its offer on a publicly accessible website (see Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044).

Paragraph 4(b) of the Policy indicates that its listing of bad faith circumstances is “without limitation”. The Panel must thus examine if the general circumstances of this case constitute bad faith registration and use of the domain name in accordance with Paragraph 4 (a)(iii) of the Policy.

The Panel considers that the Respondent must have known of the existence of the Complainant’s trademarks and that he did not reproduce them in <axacarinsurance.com> by coincidence. Indeed, as stated in a previous WIPO decision, “Whereas the choice of the three letters “AXA” without knowledge of Complainant’s mark would not be impossible in view of the brevity of this term, the involuntary combination of the letters AXA with a descriptive word corresponding to the Complainant’s line of business appears completely unlikely” (see Finaxa Société Anonyme v. James Lee, WIPO Case No. D2002-1098).

Furthermore, the Complainant evidenced that the domain name at issue was connected to a website which specialized in offering domain names for sale and that <axacarinsurance.com> was parked in the category “Car insurance”, which is a service in which the Complainant (and not the Respondent) is active.

The Respondent was thus most probably hoping, by registering and using <axacarinsurance.com>, that it would be found and acquired for a good price by someone interested in the Complainant’s trademark and/or business.

According to a printout of the website in question provided by the Complainant, the domain name was for sale for 250£. This amount is substantially higher than the usual registration price for one domain name.

The fact that the Respondent later indicated to the Complainant that he was willing to transfer the domain name at issue free of charge is not relevant from the point of view of the Panel, as the said offer was made after the Respondent knew of the filing of the Complaint. However, one may wonder why the Complainant has not accepted the said offer in order to avoid the present proceedings.

The Panel infers from the above-mentioned circumstances that the domain name at issue has been registered and used in bad faith by the Respondent with the purpose of benefitting from the reputation of the trademark of the Complainant and of selling it for more than its out-of-pocket costs.

The Panel considers that these circumstances are sufficient for the Complaint to meet the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the domain name, <axacarinsurance.com> be transferred to the Complainant.

Theda König Horowicz
Sole Panelist

Dated: August 24, 2004