AXA, S.A. v. JGA Sigma Intl.Inc.
Claim Number: FA 1354104
Complainant is AXA, S.A. (“Complainant”), represented by Catherine M. Clayton of Gibbons P.C., New York, USA. Respondent is JGA Sigma Intl.Inc. (“Respondent”), represented by Garabed Jeghelian, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <axamortgage.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
R. Glen Ayers served as as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2010; the National Arbitration Forum received payment on October 25, 2010.
On October 22, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <axamortgage.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@axamortgage.com. Also on October 29, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received on November 18, 2010. The Response was received without the Annexes separated from the response, however, which the Forum does not consider to be in compliance with Forum Supplemental Rule #5(c)(i).
On November 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
AXA, S.A. is the holding company for the AXA Group, which consists of subsidiaries, divisions, and affiliates, providing financial services world-wide with € 90.12 billion in revenues in 2009. This global company claims marks dating back to 1985 for various financial services. It registered its marks concerning financial services related to real estate in 1997. AXA asserts that, “[b]ased on the combination of its worldwide size and reach, the monies under management, the size of its workforce, the arbitrary and coined name under which it operates, and its reputation …, there is no question that … the Marks are extremely well-known and famous and entitled to the broadest protection.”
Complainant states that Respondent registered the domain name, incorporating the Mark, in June of 2003. This domain name, <axamortgage.com> is confusingly similar to the AXA Marks. The domain name directs customers to the Respondent’s wed-side, where it offers services in competition with AXA. AXA also asserts that AXA Equitable has “been involved in the mortgage lending business for more than fifty years.” AXA Equitable hold a portfolio of mortgages valued at $3.765 billion.
As to rights in the name, Complainant asserts that its rights were established before the registration of the domain name and that Respondent’s use has not created any rights or interests in the domain name.
Bad faith is shown, says AXA, by the Respondent’s registration and use of it famous name to attract Internet users by creating confusion. This actual use prompted “cease and desist letters in February and March of 2010. “Respondent refused to comply, and instead suggested that Complainant make an offer to purchase ….” Evidence of this is attached in the form of Respondent’s request.
Complainant asks that the domain name be transferred to it.
B. Respondent
Respondent filed a Response not in compliance with Supplemental Rule 5 (c)(i), for Respondent did not separate Annexes. (The Panelist will waive this defect.)
Respondent’s Response, which is basically a one page letter with Annexes, states as follows:
(1) AXA was selected to honor the initials of the first names of his father, grandmother, and aunt.
(2) AXA did not operate in the U.S. prior to 2005; Respondent did not know of the existence of the Mark AXA when he registered the domain name in 2003.
(3) AXA does not have the right to the exclusive use of the letters of the English alphabet.
(4) Respondent denies that it competes with AXA or AXA Equtable.
(5) Other entities have registered AXA linked names.
(6) Respondent has cancelled one domain name.
(7) Respondent denies bad acts.
(8) Reference to AXA’s history, attached, is requested.
(9) Respondent asserts that he has been in the mortgage business longer than AXA.
(10)AXA is trying to take advantage of the lucrative openings in the mortgage business following the recent collapse “and that is their reason for demanding my domain name.”
AXA has stated a prima facie case under each of the elements as is required. It has shown that the Marks it owns and the domain name are confusingly similar. It has shown that Respondent has no rights in the name. It has shown bad faith.
Respondent has not attempted to rebut the “confusingly similar” allegation. It has asserted that it has as much “right” to the artificial name as AXA. However, it is clear that the name was created by AXA long prior to the use by Respondent.
Respondent denies bad faith. Respondent denies that it competes with AXA. Respondent asserts it registered the name prior to knowledge of AXA.
Respondent does not deny that it offered to sell the domain name to AXA. The offer was made in response to cease and desist letters and is not particularly strident and suggests no price.
As noted above, the Panel finds that the defect in Respondents pleading will be waived.
See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[the] Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The domain name and Marks are certainly confusingly similar. Respondent made no attempt to rebut the prima facie case set out by Complainant.
These USPTO trademark registrations provide sufficient evidence to conclude that Complainant possesses rights and legitimate interests in the AXA mark for the purposes of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <axamortgage.com> domain name is confusingly similar to Complainant’s AXA mark because the disputed domain name begins with Complainant’s mark and then combines it with the descriptive term “mortgage” and the generic top-level domain name (“gTLD”) “.com.” The addition of a descriptive word to Complainant’s mark does not transform the disputed domain name into a distinct product that is not confusingly similar to Complainant’s mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). The Panel may also find that a gTLD is irrelevant to the analysis of confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel may find that Respondent’s <axamortgage.com> domain name is confusingly similar to Complainant’s AXA mark pursuant to Policy ¶ 4(a)(i).
While Respondent attempted to rebut the prima facie case made by Complainant, Respondent fails to show that it has some sort of rights in the name. Respondent is not generally known by the name and admits that the AXA portion of the name is composed of the initials of family members (in other words, the name is a merely a collection of letters with some meaning to Respondent).
The Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden shifted to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The WHOIS information for the <axamortgage.com> domain name identifies the registrant as “JGA Sigma Intl Inc.” This name has no apparent relation to the disputed domain name, which supports a finding that Respondent is not commonly known by the disputed domain name and lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant has shown that Respondent’s <axamortgage.com> domain name resolves to Respondent’s commercial website offering financial services relating to the real estate mortgage origination and processing services also offered by Complainant. The infringing domain name is used to direct Internet users away from Complainant and to Complainant’s competitor and that is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Because Respondent does not deny, and appears to admi,t that the domain name competes at least to a certain extent with the business of AXA, the Panel has determined that the registration and use is in bad faith.
Respondent uses the infringing <axamortgage.com> domain name in connection with Respondent’s own commercial website offering mortgage and financial services that compete with Complainant. Respondent’s registration and use of the disputed domain name indicates that Respondent is attempting to disrupt the business of a competitor, which demonstrates bad faith under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Even though AXA may not have been particularly active in the U.S. at the time of the registration of the name by Respondent, the AXA name is so well-known that Respondent’s denials of notice or knowledge should be rejected.
Respondent’s <axamortgage.com> domain name is being used in connection with Respondent’s commercial website that offers financial and mortgage related services. Complainant asserts that Respondent is using the disputed domain name that includes Complainant’s mark to capitalize on the fame and goodwill of Complainant’s mark. Complainant alleges that Respondent aims to attract Internet users seeking financial and mortgage-related services using the AXA mark in order to promote Respondent’s own competing business. Respondent’s registration and use of the disputed domain name is intended to attract Complainant’s customers, create a likelihood that such consumers will become confused about an affiliation between Respondent and Complainant, and subsequently result in commercial gain to Respondent. These actions represent bad faith registration and use according to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Had Respondent not offered to sell the domain name, the Panel might have ruled otherwise. Had Respondent offered evidence of the history of the domain name and its use prior to the entry of AXA as an active player in the U.S. markets, the result might have been different. Had Respondent demonstrated that the domain was actually in active use, generating income for its owner, the result might have been different.
As this matter stands, however, Respondent has failed to rebut a prima facie case, and it offered the domain name for sale.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <axamortgage.com> domain name be TRANSFERRED from Respondent to Complainant.
R. Glen Ayers, Panelist
Dated: December 7, 2010
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