UDRP has been denied.
The domain AXA.org was registered in 1997 to Advocates Across America. AXA SA of Paris, France, attempted to get the domain via the UDRP process at the WIPO, by claiming rights to the AXA mark.
Despite not having an active web site at AXA.org, the acronym reflects its purpose, according to the UDRP panelist who handled the case:
“Whilst the Complainant is correct that “axa” is not an acronym for the Respondent’s name it is nevertheless a convenient three-letter abbreviation for that name, given that the letter “x” an be described as “a cross” and hence “axa” can be said to represent Advocates Across America. The Panel can readily conceive how it was independently derived. The use of those letters in conjunction with a “.org” gTLD suffix would seem appropriate for a charitable or campaigning organisation.”
There was no response by the non-profit organization, that got quite lucky. The Complainant operates its own gTLD from dot .AXA.
The panelist, Nick J. Gardner, found no bad faith in the registration or use of the domain, ordering it to remain with the Respondent.
Full details of this decision follow:
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ADMINISTRATIVE PANEL DECISION
AXA SA v. Advocates Across America
Case No. D2017-24971. The Parties
The Complainant is AXA SA of Paris, France, represented by Selarl Candé – Blanchard – Ducamp, France.
The Respondent is Advocates Across America of Chandler, Arizona, United States of America (“US” or “United States”).
2. The Domain Name and Registrar
The disputed domain name <axa.org> (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2017. On December 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
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 of the Complaint, and the proceedings commenced on December 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 29, 2018. 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 French company and one of the biggest insurance companies in the world. Its history dates back over 100 years. The trade name “AXA” which it now uses as its name and as its core brand throughout its business was created in 1985. The AXA group is present in 64 countries and employs 165,000 people worldwide.
The Complainant has numerous registrations for the term “AXA” including for example International Trademark Registration No. 490030, for AXA, registered on December 5, 1984, in classes 35, 36 and 39, and United States Trademark Registration No. 2072157, for AXA, filed on August 5, 1994, and registered on June 17, 1997, in class 36. These are referred to in this decision as the “AXA trademark”.
The Complainant owns (directly or indirectly) the domain names <axa.com>, <axa.net>, <axa.info>, and <axa.fr>, respectively created in 1995, 1997, 2001 and 1996.
The Disputed Domain Name was registered on July 10,1997. It currently resolves to a single “under construction” webpage. It has in the past, according to evidence from Archive.org filed by the Complainant, resolved to webpages which promote the activities of a charity/campaigning organisation called “Advocates Across America, Inc.”, which offered resources to assist parents with children who have learning disabilities to campaign for their children’s rights. It appears the Respondent is some form of corporate body formed under Arizona law and evidence filed by the Complainant shows the Respondent was “administratively dissolved” in 2016 by the State of Arizona for non-filing of annual reports.
5. Parties’ Contentions
A. Complainant
The Complainant relies on the reputation of the AXA trademark and asserts that the Disputed Domain Name entirely reproduces this coined trademark.
The Complainant says the Disputed Domain Name is therefore identical to the AXA trademark.
The Complainant asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Name, since it has no prior rights, has no relationship with the Complainant and has never been authorised to use the AXA trademark.
As to bad faith registration, the Complainant says that, given the reputation of the AXA trademark, the Respondent was well aware of the Complainant’s trademark rights when it decided to register the Disputed Domain Name. It says the Disputed Domain Name is not an acronym for the Respondent’s name and the Respondent’s motive was to attract Internet users for commercial gain who were confused by the similarity of the Disputed Domain Name to the Complainant’s AXA trademark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Preliminary IssueThe Panel notes that no communication has been received from the Respondent. However, given that the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, the Panel considers satisfied the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any response.
Substantive IssuesA. Identical or Confusingly Similar
The Complainant has clearly established its rights in the AXA trademark.
It is well established that the generic Top-Level Domain (“gTLD”), in this case “.org”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Disputed Domain Name is therefore identical to the Complainant’s AXA trademark and paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
It is not clear to the Panel that the Respondent would be able to establish it currently has rights or a legitimate interest in the Disputed Domain Name where the evidence establishes the Respondent no longer exists. However, in view of the Panel’s finding under the third element, below, the Panel does not need to determine this issue.
C. Registered and Used in Bad Faith
The Complainant has to establish that the Disputed Domain Name has been registered and is being used in bad faith. It is quite clear that these requirements are conjunctive. The difficulty the Complainant faces in the present case is that the evidence before the Panel establishes that an organisation called Advocates Across America existed and registered the Disputed Domain Name to promote itself as a provider of information and assistance to parents of children with learning difficulties. The filed evidence shows copies of what appears to be a bona fide website associated with this organisation and linked to the Disputed Domain Name.
The Complainant itself does not suggest otherwise – to quote from the Complaint: “Originally Advocates Across America would have been formed to help train parents how to advocate for the educational rights of children with special needs”. What the Complainant however says is that the registration was nevertheless in bad faith because the Respondent must have been aware of the Complainant and the fame of its AXA trademark; that it did not need to use the Disputed Domain Name <axa.org> as “axa” is not an acronym for its name; and it must have registered the Disputed Domain Name to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant.
The Panel has no hesitation in rejecting those arguments. Dealing with them in turn:
While the filed evidence establishes that as at today’s date the Complainant’s AXA trademark is very well known indeed, including in the United States, the position was not as clear in 1997, when the Disputed Domain Name was registered. Whilst the Complainant had in 1995 obtained a US registered trademark for AXA the evidence exhibited by the Complainant as to the AXA group’s history shows the Complainant’s first expansion in the United States occurring in 2009 with the acquisition of “well known American insurer Mutual of New York”. It is accordingly not clear to the Panel the Respondent would have been aware of the claimed fame of the AXA trademark when it registered the Disputed Domain Name.
In any event it seems to the Panel the Respondent, finding that <axa.org> was available, could readily have formed the view it was an appropriate domain name for its use. Whilst the Complainant is correct that “axa” is not an acronym for the Respondent’s name it is nevertheless a convenient three-letter abbreviation for that name, given that the letter “x” an be described as “a cross” and hence “axa” can be said to represent Advocates Across America. The Panel can readily conceive how it was independently derived. The use of those letters in conjunction with a “.org” gTLD suffix would seem appropriate for a charitable or campaigning organisation.
The Panel cannot conceive of any reason why a bona fide campaigning organisation would wish to create confusion and seek to attract consumers looking for the Complainant. Further there is no explanation from the Complainant as to how this suggestion would result in improper commercial gain to the Respondent. The Panel rejects this argument.
It accordingly follows that on the evidence before the Panel the Complainant has failed to establish that the Disputed Domain Name was registered in bad faith. It does not matter what has happened since, although the Panel does not accept the Complainant’s submission that the continued passive holding of the Disputed Domain Name when the Respondent’s activities ceased itself amounts to bad faith use.
The fact that the Respondent has ceased to exist does not alter this analysis. The Policy is not intended to provide a vehicle for a party who is interested in acquiring a domain name to do so just because the registrant on record has ceased to exist. The Panel is not competent to determine what has happened to its property in those circumstances and unless the Complainant can establish the applicable criteria under the Policy are satisfied, it should pursue other measures (if available) to seek to obtain the Disputed Domain Name.
7. Decision
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Sole Panelist
Date: February 12, 2018
