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FINAXA v. Billy Oglesby [2004] GENDND 634 (6 May 2004)

1. The Parties

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

The Respondent is Billy Oglesby, of, South Carolina, United States of America.

2. The Domain Name and Registrar

The disputed domain name <axagroup.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 5, 2004, by e-mail, hard copy of which was received on March 12, 2004. On March 5, 2004, the Center transmitted by e-mail to Network Solutions, LLC., a request for registrar verification in connection with the domain name at issue. On March 8, 2004, Network Solutions, LLC., transmitted by e-mail 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 this 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 March 15, 2004, by e-mail and courier. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2004. The file shows that delivery of these documents, both by electronic mail and courier, was unsuccessful. The Complainant stated in its Complaint that a copy thereof had been sent by registered letter to the Respondent on March 3, 2004 (Complaint, para. 16).

The Panel is satisfied that the Center has complied with its obligations under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" (see e.g. Charles Schwab & Co, Inc. v. Polanski, WIPO Case No. D2001-0959).

The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 15, 2004, by e-mail.

The Center appointed the undersigned as sole panelist in this matter on April 22, 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, and rendered its decision within the time-limit granted.

4. Factual Background

The Complainant has numerous registered trademarks all over the world containing the word AXA such as:

- The French trademark AXA No. 1 270 658 registered on January 10, 1984, in class 36 especially for "insurance and financial affairs" and renewed on January 8, 2004 (Annex 3 to the Complaint).

- The French trademark AXA No. 94 513 873 registered on April 1, 1994, in classes 9, 16, 38, 41 and 42 especially for "transmission of information through computer communication means, communications via computer terminals, programming, development of computer hardware and software services" (Annex 34 to the Complaint).

- The French trademark AXA ASSURCREDIT and design No. 003 014 835 registered on March 16, 2000, in classes 35 and 36 especially for "business management, insurance, financial affairs and real estate affairs" (Annex 4 to the Complaint).

- The French trademark AXA ASSISTANCE and design No. 99 783 489 registered on March 29, 1999, in classes 35, 36, 37, 36, 39 and 42, especially for "business management, insurance, financial affairs and real estate affairs" (Annex 5 to the Complaint).

- The community trademark AXA and design No. 373 894 registered on July 29, 1998, in classes 35, 36 especially for "business management, insurance, financial affairs and real estate affairs" (Annex 6 to the Complaint).

- The community trademark AXA INVESTMENT MANAGERS No. 721 928 registered on April 8, 1999, in classes 16, 35, 36, 38, 41 and 42 especially for "advertising, business management, insurance, financial affairs and real estate affairs" (Annex 7 to the Complaint).

- The community trademark AXA ASSISTANCE and design No. 1 224 294 registered on July 31, 2000, in classes 35, 36, 37, 38, 39 and 42 especially for "business advice or information, business management, insurance, finance, financial assistance services" (Annex 8 to the Complaint).

- The international trademark AXA No. 490 030 registered in class 36 especially for "insurance and financial affairs" designating Algeria, Austria, Bosnia-Herzegovina, Croatia, Egypt, Spain, Hungary, Italy, Morocco, Monaco, Portugal, North Korea, Rumania, Russia, Saint Martin, Slovakia, Slovenia, Sudan, Ukraine, Viet-Nam, Yugoslavia, Benelux, Switzerland, Liechtenstein (Annex 9 to the Complaint).

- The international trademark GROUPE AXA INTERNATIONAL registered on December 13, 1984, in classes 35, 36 and 39 especially for "financial affairs and real estate affairs" designating inter alia Algeria, Austria, Deutschland, Egypt, Spain, Hungary, North Korea Italy, Morocco, Monaco, Portugal, Rumania, Russia, Sudan, Saint Martin, Tunisia, Viet-Nam, Yugoslavia (Annex 10 to the Complaint).

- The international trademark AXA ASSISTANCE and design registered on September 1, 1999, in classes 35, 36, 37, 38, 39 and 42 especially for business advice and information, business management, insurance, finance, financial assistance" designating inter alia Switzerland, Czech Republic, Morocco, Monaco, Portugal (Annex 11 to the Complaint).

- The US trademark AXA No. 1 679 597 registered on March 17, 1992, in class 36 for "insurance and financial affairs" and renewed on March 17, 2002 (Annex 12 to the Complaint).

- The US trademark AXA FINANCIAL No. 76/063570 registered on December 25, 2001, in class 36 for "insurance" (Annex 13 to the Complaint).

- The US trademark AXA ADVISORS No. 2 546 262 registered on March 12, 2002, in class 36 for "financial services and insurance services" (Annex 14 to the Complaint).

- The US trademark AXA ASSISTANCE and design No. 2511513 registered on November 7, 2001, in classes 35, 36, 37, 38, 39 and 42 especially for "business management, insurance, financial affairs and real estate affairs" (Annex 15 to the Complaint).

The Complainant is the owner of many registrations in class 36 for "insurance and financial affairs" for "AXA" and device , such as the registrations in Australia, Austria, Bahrain, Bahamas, Brazil, Brunei, Canada Chili, China, Colombia, Korea, United States of America, France, Gilbratar, Hong-Kong, Hungary, Caiman Islands, Indonesia, Jersey, Senegal, Egypt, Lebanon, Macao, Malaysia, Morocco, Mexico, New Zealand, European Community, Philippines, Russia Great Britain, Singapore, Switzerland, Turkey, Uruguay (Annex 33 to the Complaint).

Moreover, the Complainant belongs to the group AXA which main business is insurance and financial affairs services and is known worldwide under the trade name AXA (Annex 16 to the Complaint).

The Group AXA is also the owner of the domain names to which correspond active websites such <as axa.com> registered on October 24, 1995, (Annex 17 to the Complaint), <axa.fr> (Annex 18 to the Complaint), <axa.us> registered on April 24, 2002, (Annex 19 to the Complaint), <axaonline.com> registered on October 3, 1999, (Annex 20 to the Complaint), <axa-consulting.com> registered on December 19, 2002, (Annex 21 to the Complaint), <axa-art.com> registered on April 16, 1999, (Annex 22 to the Complaint), <axa-insurance.biz> registered on November 7, 2001, (Annex 23 to the Complaint), <axa-insurance.info> (Annex 24 to the Complaint), <axa-insurance.us> registered on May 23, 2002, (Annex 25 to the Complaint<axa-financial.com> registered on February 25, 1999, (Annex 26 to the Complaint).

5. Parties' Contentions

A. Complainant

The Complainant submits the following:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The domain name <axagroup.com> is confusingly similar to the services marks AXA or AXA and design as well it is confusingly similar to the Complainant domain names. Indeed, the disputed domain name reproduces entirely the term "AXA", for which Complainant owns several registrations.

Moreover the term "AXA" has no particular meaning and is accordingly distinctive. The term "group" on the contrary, is purely descriptive and is no apt to influence significantly the overall impression produced by the domain name <axagroup.com>, which is dominated by the term "AXA".

The Complainant belongs to the Group AXA having numerous subsidiaries worldwide and is well-known for its insurances and financial services.

Incorporating Complainant's trademarks AXA and trade name AXA with the term "group", at the disputed domain name, the likelihood of confusion is rather aggravated as it is suggested that <axagroup.com> belongs or is connected to the Group AXA.

Obviously, the registration of the domain name <axagroup.com> can be considered as an infringement of the Complainant's prior rights concerning his registered trademarks, domain name and trade name.

Thus, the domain name in question is similar to the Complainant's prior rights because it obviously implies an implementation with the Group AXA and the association of "AXA" with the services of insurances and finance.

(ii) The Respondent has no rights or legitimate interests in respect of the domain name.

First, the Complainant has never licensed or otherwise permitted the Respondent to use the trademarks or domain names incorporating the above mentioned trademarks.

Moreover, it is obvious that Billy Oglesby does not have legitimate interest to use the domain name <axagroup.com> since neither the term "Billy" nor the term "Oglesby" has any resemblances with the term "axagroup".

(iii) The domain name was registered and is being used in bad faith.

The Respondent was undoubtedly aware at the time of the registration of the reputation and notoriety, especially in the United States of America (Annex 29 to the Complaint) of the Complainant's trademarks using the word "AXA" and trade name AXA and their connection with the Complainant's insurance and finance business and that any registration and use of disputed domain name by the Respondent would misrepresent an association with the Complainant and AXA Group and its goodwill.

It appears that Billy Oglesby is a student at the University of South Carolina, member of the staff of the University's School of Health where he is responsible for "grant management". He is the Qualitative Data Analyst & Technical Support Manager of the CDC/ASPH Institute for HIV Prevention Leadership. Moreover, he holds a B.S. in Business Finance from the Nationally-Ranked Moore School (Annex 28 to the Complaint).

Moreover, the Respondent has so far not activated the site (Annex 30 to the Complaint). Actually, this inactive website corresponds to the "AXA Research & Consulting Group" entity, which appears to be set up by Mr. Billy Oglesby. It is noted on the pages of the website of the "2003 South Carolina HIV/Aids Conference" that "Site Designed and Maintained by AXA Research & Consulting group". The Copyright notice of 2003, suggests that the site was prepared in 2003. Clicking on this link leads to the passive website "www.axagroup.com" reserved by Mr. Billy Oglesby (Annex 31 to the Complaint).

An Internet search relating to "AXA Research & Consulting Group" using "Google" search engine reveals that the purpose of this entity would be to offer business advice, business management and financial services (Annex 32 to the Complaint).

There is also no doubt that, by registering the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's trademarks, trade name and existing domain names and by creating an affiliation with the Group AXA.

Consequently, in the present case, the absence of use of the domain name demonstrates the bad faith of the Respondent whose only purpose is to benefit from the reputation of the trademarks and the trade name of the Complainant and to create an affiliation with AXA Group.

B. Respondent

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

6. Discussion and Findings

Concerning the proceedings, in particular the notification of the Complaint to the Respondent, the Panel considers, from the reading of the documents available in the file, that the Center has discharged its responsibility, pursuant to Paragraph 2(a) of the Rules, in forwarding the Complaint to the Respondent in the manner prescribed therein.

As regards the merits, it is to be recalled that Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:

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

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

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

The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.

In accordance with Paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established its rights in the trade and service marks AXA with various registrations for such a name (see Complainant's Annexes mentioned above), especially in the United States.

The Complainant referred in its Complaint to the AXA China Region Limited v. KANNET Limited, WIPO Case No. D2000-1377 whereby the panel decided that "the suffixes "chinaregion" were generic and did not effectively distinguish the domain name <axachinaregion.com> from the mark AXA".

In the instant case, the word "group" is a no doubt a descriptive term which, in addition to the name "AXA", does not create a new wording with a meaning of its own whereby "AXA" would no longer be perceived as the Complainant's trade and service marks. The public may certainly perceive the <axagroup.com> domain name as being owned by or related to the Complainant, thus creating a likely risk of confusion.

The Panel concludes therefore that there is confusing similarity between the Complainant' trade and service marks AXA and the domain name <axagroup.com>.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Panel to draw any such inferences from such default, as it considers appropriate pursuant to Paragraph 14(b) of the Rules already cited above.

Absent evidence to the contrary, the Complainant has not granted any license or otherwise permitted the Respondent to use such trade and service marks or to apply for any domain name incorporating the said trade and service marks. In addition, the Respondent has not, indeed, been known under the disputed domain name.

Under those circumstances, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at stake.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

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

As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or use of the domain name in issue.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant's assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

As pointed out by the Complainant in a conclusive manner, the Respondent was not doubt aware of the reputation and notoriety of the Complainant's rights over the mark AXA.

Likewise, the use of the disputed domain name made by the Respondent, as described by the Complainant and mentioned above, obviously amounts to bad faith within the meaning of Paragraph 4(b)(iv) of the Policy.

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 <axagroup.com> be transferred to the Complainant.

Christophe Imhoos
Sole Panelist

Dated: May 6, 2004