The Complainant is AXA SA of Paris, France, represented by Selarl Candé - Blanchard - Ducamp, France.
The Respondent is Damon Nelson, Quantec, LLC/ Novo Point LLC of Dallas, Texas, United States of America (“USA”).
The disputed domain name, <axaonlline.com> (the “Domain Name”), is registered with Fabulous.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2015. On February 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 24, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 26, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 26, 2015.
The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2015. However, apart from an informal communication submitted to the Center by the Respondent Damon Nelson on February 26, 2015, which is dealt with in section 4 below, the Respondent has not responded to the Complaint.
On March 30, 2015, the Center informed the parties about the commencement of the Panel appointment process.
The Center appointed Tony Willoughby as the sole panelist in this matter on April 7, 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 the Rules, paragraph 7.
The issue giving rise to the amendment of the original Complaint was that the Respondent had been utilizing a privacy service, which was named as the registrant of the Domain Name in the original Complaint. For the purposes of this decision all references to the Respondent are references to the above-named Damon Nelson, Quantec, LLC/ Novo Point LLC, the underlying registrant, names disclosed by the Registrar, noting also that the Respondent Damon Nelson submitted to the Center the above-mentioned informal communication on February 26, 2015.
The Complainant is a very substantial player in the international financial services industry with a long history in the insurance services sector dating back to the early 19th century. It adopted the AXA name in 1985.
The Complainant is the registered proprietor of numerous trade mark registrations covering the AXA name including French registration no. 1270658 dated January 10, 1984 AXA (word) in classes 35, 36 and 42.
The Complainant has an online presence via its website connected to inter alia its <axa.fr> domain name which it registered on May 20, 1996. One of the Complainant’s subsidiaries, AXA Equitable Life Insurance Company of New York, USA, is the proprietor of the <axaonline.com> domain name (registered October 3, 1999), which it uses to market its services in the USA.
The Domain Name was first registered on January 17, 2006, but the Registrar is unable to say when it was first acquired by the Respondent. The Domain Name has been connected to a pay-per-click parking website featuring links to websites relating to the Complainant and to websites of others including competitors of the Complainant. The screenshots exhibited by the Complainant show a heading comprising the Domain Name and a legend reading “The Best Place To Find AXA Online.”
In January, 2015, the Complainant wrote to the Respondent drawing the Respondent’s attention to its trade mark rights and seeking inter alia transfer of the Domain Name. On January 24, 2015, someone purporting to write on behalf of the Respondent replied in the following terms:
“This domain name was setup to its current page by the US Federal District Court through a Federal Receiver. Once current litigation is concluded and control is released from the Federal Court’s imposed page, I expect your concerns will be alleviated. When operational, the website will be clearly identified as not being operated or sponsored by your client. If for any reason this is insufficient, this domain asset has a valuation under USD 5,000. It does not make economic sense to engage in a legal fight because of a trade mark dispute over this name. My suggestion is that your client make an offer to purchase for USD 3,500, and you then make a joint motion with us for the US district court to approve transfer of the domain name to your client. Hope this is helpful for you.”
On February 3, 2015, Mark Monitor acting at the request of the Respondent forwarded to the Complainant what purports to be an extract of an order of the United States District Court for the Northern District of Texas Dallas Division in an action between two parties neither of whom has any obvious connection with the parties to this dispute. The order is undated, unsigned and incomplete. It features no court seal or stamp signifying authenticity. The only date appearing on the document is a filing date of November 24, 2010.
The order appoints a Receiver for the defendant in the action and identifies several “Receivership Parties” one of which is “Novo Point, Inc., a USVI Corporation” and “Quantec, Inc., a USVI Corporation”. Those two US Virgin Island corporations bear similar names to the two LLCs of the Respondent (see section 1 above).
On February 26, 2015, the Center received an email from the Respondent Damon Nelson in the following terms:
“Hello. My position as court appointed manager of the portfolio of domain names controlled by the Receivership was vacated by the US District Court on February 28, 2014. I no longer represent this domain name, or any other domain name assets in the Portfolio LLCs or the Receivership.”
The email goes on to identify two other people to whom “future domain name purchase or transfer questions” are to be referred.
The Complainant contends that the Domain Name is confusingly similar to its AXA registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Respondent Damon Nelson did not respond to the Complainant’s allegations and, if the email of February 26, 2015, is to be believed, Damon Nelsonhas not had any connection with the Domain Name since February 2014.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent 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.
How court proceedings may affect the conduct of proceedings under the Policy is well summarized in paragraph 4.14 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 2nd edition in answer to the question “What is the relationship between UDRP proceedings and court proceedings?”:
“As paragraph 4(k) of the UDRP indicates, the UDRP does not bar either the complainant or the respondent from seeking judicial remedies. Paragraph 18(a) of the Rules gives the panel discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is the subject of other pending legal proceedings. A panel may determine (as happens in rare instances) that a UDRP dispute cannot be evaluated separately from such ongoing court proceeding, and may terminate or suspend the UDRP case on that basis, normally (in the case of termination) without prejudice to the filing of a future UDRP complaint pending resolution or discontinuation of such court proceeding. As to any previous court proceedings, it is in the UDRP panel's discretion to determine what weight to ascribe thereto, in light of all circumstances. Additionally, national courts have on occasion referred a portion of a case which concerns a domain name for determination under the UDRP.”
In this case the document ‘evidencing’ the US proceeding is incomplete, undated, unsigned and does not bear the sort of stamp or seal one might expect to see verifying authenticity. Moreover, it is by no means clear to the Panel that the Domain Name was ever subject to that order and, as indicated, the Respondent claims to have had no connection with the Domain Name since February, 2014. Finally, the Panel finds it highly unlikely that a misspelt domain name so obviously targeting the Complainant could, as claimed on behalf of the Respondent (see section 4 above), have been connected with the authority of the court to a parking page calculated to free-ride on the fame of the Complainant’s trade mark.
The Panel is not persuaded that there are any current proceedings in place, which should deter him from proceeding to a decision under the Policy in the usual way.
For completeness, it should be observed that the Complainant has identified a number of other WIPO cases involving the Respondent as respondent and in which the Texas court proceedings are discussed. Suffice it to say that the panels in those cases appear to have had more information on the proceedings than has been provided to the Panel in this case, but all appear to have proceeded to decisions rather than to have ordered termination or suspension.
The Domain Name features the Complainant’s AXA trade mark, a misspelling of the word “online” and the generic “.com” Top-Level Domain identifier.
In the view of the Panel neither the word “onlline” nor the generic “.com” Top-Level Domain identifier serves to dilute the distinctiveness of the Complainant’s trade mark in the Domain Name. It is inconceivable to the Panel that the Domain Name was adopted other than to represent a misspelling of “AXA online”, <axaonline.com> being the domain name of the Complainant’s US subsidiary (see section 4 above).
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
As indicated above, the Panel is satisfied on the evidence that the Domain Name is intended to represent a misspelling of “AXA online”, <axaonline.com> being the domain name used by the Complainant’s US subsidiary. Were there to have been any doubt on that topic, it is removed by the legend appearing on the Respondent’s website reading: “The Best Place To Find AXA Online”.
The Panel can conceive of no justification for the adoption and use of such a domain name by the Respondent. The Respondent has not come forward with any explanation and claims to have had no connection with the Domain Name for over a year.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
If it is the case that the Respondent currently has no connection with the Domain Name, somebody other than the Respondent, but using the Respondent’s name, is deriving pay-per-click revenue on the back of the misspelling of “AXA online” through advertising links some of which lead to websites relating to the Complainant, but many of which do not. Indeed, some of the links lead to websites of competitors of the Complainant. The Panel has no hesitation in finding that this constitutes a bad faith use of the Domain Name.
However, bad faith use on its own may not be enough for a complaint under the Policy to succeed. Generally, it is also necessary to establish that the Domain Name was registered in bad faith.
The Panel finds it inconceivable that anyone selecting a domain name featuring the trade mark of a well-known company and a misspelling of the word “online” could have done so otherwise than with the intention of trading on the reputation of the trade mark owner.
In the absence of any explanation to the contrary, the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <axaonlline.com> be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: April 16, 2015