AXA UK plc -v- Norris

Nominet UK Dispute Resolution Service

DRS 04712

AXA UK plc –v- Norris

Decision of Independent Expert

1.	Parties:

Complainant:	AXA UK plc
	London
	
Respondent:	Norris
	Malta

2.	Domain Name:

axadirect.co.uk ("the Domain Name")

3.	Procedural Background:

The Complaint was received by Nominet on 21 May 2007.  Nominet validated the Complaint and sent a copy to the Respondent.

No Response was received by Nominet.

On 22 June 2007 the Complainant paid Nominet the required fee for a decision of an Expert pursuant to the Nominet UK Dispute Resolution Service Policy ("the Policy").

Nominet invited the undersigned, Jason Rawkins ("the Expert"), to provide a decision on this case and duly appointed the undersigned as the Expert with effect from 29 June 2007.

4.	The Parties' Contentions:

Complainants:

The Complainant's submissions can be summarised as follows:

1.	The Complainants have rights in trade marks/names which are identical or similar to the Domain Name:

(1)	The Domain Name incorporates:

	(a)	the AXA trade mark in which the Second Complainant has registered rights and in which all of the Complainants have unregistered trade mark rights; and

	(b)	the AXA DIRECT trade mark in which the First and Third Complainants have unregistered trade mark rights, and which is identical to the trading name of the Third Complainant.

(2)	The Second Complainant owns a number of UK and Community trade mark registrations for AXA in respect of, inter alia, financial and insurance services.

(3)	The AXA brand has been used by companies within the AXA Group since 1985.  Since 1998, AXA Group has been doing business under AXA as a single brand with global reach.  AXA is now a household name.  AXA Group currently operates in at least 50 countries worldwide and has more than 51.5 million clients.

(4)	The Complainants have dedicated significant resources to promoting the AXA brand in the UK through poster advertising, television advertising, brochures and sports sponsorship.  As a result, the Complainants attract a great deal of media attention.  For example, between 1998 and 2002 AXA Group spent approximately £40 million sponsoring the FA Cup.  AXA also sponsored the cricket Sunday League from 1993 to 1998.

(5)	The Complainants have a strong UK presence, operating through the AXA UK website, found at www.axa.co.uk, www.axa-direct.co.uk and www.axa-insurance.co.uk.

(6)	The First and Third Complainants, together with numerous other companies in AXA Group, are registered at Companies House under the AXA name.

(7)	The Third Complainant has traded under AXA DIRECT since 1998 at the latest.  From 1998 until the date when the Respondent registered the Domain Name, AXA Group actively promoted the AXA DIRECT brand.

(8)	In addition, the First Complainant owns a number of domains incorporating the AXA DIRECT brand.  

(9)	FINAXA SA (the former ultimate holding company of AXA Group) has successfully demonstrated its ownership of the AXA mark combined with a descriptive word (such as "direct") in two WIPO decisions: Case no. D2002-1098 in respect of the domain name axa-insurance.com and Case no. D2004-0455 in respect of the domain name axacarinsurance.com.

2.	The Domain Name is an Abusive Registration in the hands of the Respondent:

(1)	The Domain Name currently directs to a website containing links to insurance websites directly competing with the Complainants.

(2)	The Complainants' representatives sent three letters to the address given to Nominet by the Respondent.  All of these were returned unopened by the Maltese postal service, marked "gone away".  The Complainants' representatives subsequently contacted Nominet for the Respondent's email address and re-sent the letters by email to gnorris@melitaweb.com (but received no response).  The Complainants believe that the Respondent has previously registered domain names under the name "Gordon".  There are two Nominet decisions against a "Gordon" who provided to Nominet the same address in Malta as provided by the Respondent: Nominet decisions DRS 02464 and DRS 03666.  In addition, the Respondent's email address is gnorris@melitaweb.com.    

(3)	Given the notoriety of the AXA and AXA DIRECT brand, there is no legitimate purpose for which the Respondent has registered the Domain Name.  Given the reputation of the AXA mark, it is inconceivable that the Respondent did not have actual knowledge of the Complainants' rights when the Domain Name was registered.

(4)	It is clear that the Domain Name is being used to funnel customer traffic away from the Complainants' websites.  The Complainants are not aware of any genuine offer of services from the Domain Name.

(5)	The Respondent cannot be commonly known by the Domain Name and is not identified on its website as offering any goods or services.  Accordingly, the Respondent has not acquired any trade mark rights in the Domain Name.

(6)	The Respondent has made no legitimate, non-commercial or fair use of the Domain Name.  Therefore the Respondent has no rights or legitimate reason for registration and cannot demonstrate that the registration of the Domain Name is not abusive.

(7)	The Complainants have not consented to the Respondent's use of the Domain Name.  

(8)	The following circumstances further support the argument that the Domain Name is an abusive registration by the Respondent and is contrary to paragraph 3 (i), (ii), (iii) and (iv) of the Policy.

(9)	With regard to paragraph 3 (i) of the Policy:

	(a)	The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.  Rather, the Respondent is using it to offer links to health insurance services which compete with the Complainants' business.  A number of the websites accessed by the Domain Name link to competitor health insurance sites, including tescofinance.com, quotelinedirect.co.uk, hastingsdirect.com and legalandgeneral.com.  

	(b)	Legitimate customers of the Complainants who visit the Domain Name in error may choose instead to go to a competitor's website.  The Respondent is using the Domain Name to trade off the Complainants' reputation, to unfairly disrupt the Complainants' business and to prevent the Complainants from making fair and legitimate use of the Domain Name.

(10)	With regard to paragraph 3 (ii) of the Policy, as the Domain name links to websites offering insurance services, the Respondent has and is continuing to use the Domain Name in a way that will confuse people or businesses into believing the Domain Name is registered, operated, authorised by, or otherwise connected to the Complainants.  This causes direct damage to the Complainants.

(11)	With regard to paragraph 3 (iii) of the Policy:

	(a)	The Respondent has over 140 .co.uk UK domains registered in the name of "Norris" or "Gordon" which are registered to the same address in Malta.  

	(b)	An individual called "Gordon", or "Gordon Norris" trading as "Gordon", provides a different address in Malta.  This individual is a registrant of a further 79 .co.uk domain names.  Because of the identical name, the Maltese address and pattern of registering domain names, the Complainants consider that "Gordon" is likely to be the same individual as the Respondent.

	(c)	Many of the domain names registered by "Gordon" or "Norris" or "Gordon Norris trading as Gordon" are or incorporate well-known marks belonging to third parties, or marks very similar to third party marks.  These are, amongst others, acsessorize.co.uk, toysaurus.co.uk, nationalgeographical.co.uk, suzukimotors.co.uk and channel4learning.co.uk.  Such activity has already triggered two successful DRS complaints against the Respondent (see above).

	(d)	The Domain Name is one of a series of registrations owned by the Respondent which, because of their number, type and pattern, prove that the Respondent is in the habit of making registrations of domain names in which the Respondent has no apparent interest.

(12)	With regard to paragraph 3 (iv) of the Policy, the Complainants consider that the address provided by the Respondent to Nominet is not accurate, as verified by the Maltese postal service (see above).

(13)	The Respondent's registration of the Domain Name also gives rise to a claim in passing off.  The Domain Name is identical to AXA DIRECT, the trade mark in which the Complainants own the goodwill, amounting to a misrepresentation which will result in third parties associating the Domain Name registered by the Respondent with the Complainants and the Complainants' business.  This will cause the Complainants damage and accordingly a claim of passing off lies against the Respondent.

Respondent:

No Response has been filed by the Respondent.
5.	The Facts:

	The Nominet Records show that the Domain Name was registered on 2 June 2004.  

	Based on the Complainants' submissions and a review of the materials annexed to the Complaint, set out below are the main facts which I have accepted as being true in reaching a decision in this case:

(1)	The Second Complainant is the proprietor of several UK and Community trade mark registrations for AXA for (amongst other things) financial and insurance services.

(2)	The AXA name has been extensively used and promoted by the AXA Group for many years.  

(3)	The AXA DIRECT name has been used and promoted by the Complainants since around 1998.  

(4)	The Domain Name directs to a website containing links to insurance services which directly compete with the Complainants, including tescofinance.com, quotelinedirect.co.uk, hastingsdirect.com and legalandgeneral.com.

(5)	In the light of (2) above, the Respondent would have been aware of the Complainants' rights at the time when the Domain Name was registered.

(6)	The Respondent is the same person as "Gordon", a registrant with the same listed address in Malta.

(7)	The Respondent, whether in the name of "Norris" or "Gordon", owns in excess of 100 .co.uk domain names, including toysaurus.co.uk, nationalgeographical.co.uk, channel4learning.co.uk, carfonwarhouse.co.uk, diseneychannel.co.uk and fullhamfc.co.uk (the last three of which were not expressly set out in the Complaint, but are listed in one of the annexes).

6.	Discussion and Findings:

General
Paragraph 2 of the Policy provides that, to be successful, the Complainants must prove on the balance of probabilities that:
i	[they have] Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii	the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainants' Rights

There is no doubt that the AXA name is well-known in the financial/insurance services sector.  For this reason, and since the Complainants own several relevant trade mark registrations for the AXA mark, it is clear that the Complainants have Rights in the AXA name.  Beyond that, since the Complainants have used and promoted the AXA DIRECT name since around 1998, they will have established goodwill, and therefore Rights, in that name too.

Disregarding the generic .co.uk suffix, the Domain Name is identical to the AXA DIRECT name.  Since the "direct" element of the Domain Name is descriptive in nature, I also find that the Domain Name is similar to the AXA name. 

I therefore find that the first limb of paragraph 2 of the Policy is satisfied.

Abusive Registration

Paragraph 1 of the Policy defines an "Abusive Registration" as:

"A Domain Name which either:
i	was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration.  The factors under paragraph 3a on which the Complainants rely in this case are as follows:

"i.	Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

	A	for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

	B	as a blocking registration against a name or mark in which the Complainant has Rights; or

	C	for the purpose of unfairly disrupting the business of the Complainant;

ii.	Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

iii.	The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

iv	It is independently verified that the Respondent has given false contact details to [Nominet]."

The AXA name is well-known, and would have been so on the date when the Respondent registered the Domain Name.  I agree with the Complainants that it is inconceivable that the Respondent did not know of the Complainants' business (and therefore their rights) when he registered the Domain Name.  In light of this, as a general conclusion, I find that, when the Respondent registered the Domain Name it did not have any bona fide intention to make any genuine use of it.  It is also to be noted that the Respondent has not taken the opportunity available to him of answering the Complaint.

Rather than any bona fide use, the Domain Name directs to a website containing links to insurance websites directly competing with the Complainants.  Paragraph 3aii of the Policy (set out above) refers to actual confusion having occurred, namely people or businesses having believed that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainants.  Nevertheless paragraph 3 is a non-exhaustive list of factors; and it has been held in previous Nominet decisions that a likelihood of such confusion arising in the future is also relevant, and I agree with this.  

The question is whether the Respondent's use of the Domain Name has caused such confusion, or is likely to do so in the future.  The fact that the Respondent is using the Complainants' name to direct visitors to competing websites means, on the balance of probabilities, that it will already have caused confusion to occur and/or that it will occur in the future, whether just "initial interest confusion" or also confusion of a more long-lasting nature.  As a consequence, paragraph 3aii of the Policy applies.  Based on the conclusions set out above, I also find that paragraph 3ai applies.  

Because of the findings which I have already made, it is clear to me that the Domain Name was registered, and has been used, in a manner which took unfair advantage of, and/was unfairly detrimental to, the Complainants' Rights; and that it is therefore an Abusive Registration.

The Complainants also seek to rely on paragraph 3aiii and 3aiv.  On the former, the Respondent has registered more than 100 .co.uk domain names and several of these are very similar to well-known third party trade marks.  The Respondent has no apparent rights in such marks and has not availed himself of the opportunity to make submissions to the contrary.  The Respondent has also had two decisions made against him under the Nominet dispute resolution service (DRS 02464 and DRS 03666).  Taking all of this into account, on the balance of probabilities I find that the Respondent is engaged in a pattern of registrations of the nature described under paragraph 3aiii of the Policy, and that the Domain Name is part of that pattern.  

With regard to paragraph 3aiv, the Complainants allege that the Respondent has provided false contact details to Nominet.  The Complainants put forward as evidence the fact that letters which they sent to the Respondents' Nominet address details were returned by the Maltese postal service and marked "gone away".  Whilst this is evidence of the Respondent no longer residing at the address currently recorded by him with Nominet, it does not necessarily follow that the Respondent was not residing at that address at the time when he registered the Domain Name in 2004.  For example, it could be the case that the Respondent has recently moved but has not yet notified Nominet of a change of address.  For the Complainants to prove that paragraph 3aiv applies, they would in my view have needed to put forward evidence that the address recorded by the Respondent is not even a real address or that he did not reside at that address at the time when the Domain Name was registered by him.  

7.	Decision:

Having found that the Complainants have rights in respect of names which are identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent is an Abusive Registration, the Expert directs that the Domain Name axadirect.co.uk be transferred to the Complainants.

___________________________________________________________________

Jason Rawkins	10 July 2007