The Complainant is AXA SA of Paris, France, represented by Selarl Candé - Blanchard - Ducamp, France.
The Respondent is Ceming Lin of Lishui, Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2019. On January 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 January 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2019.
The Center appointed William R. Towns as the sole panelist in this matter on February 27, 2019. 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 the holding company of the AXA Group, a global provider of insurance, finance and investment services. The Complainant and is the owner of multiple trademark registrations for its AXA mark, including:
- France: Reg. No. 1270658, filed January 10, 1984, registration effective January 10, 1984;
- International trademark Reg. No. 490030, registered December 5, 1984, and designated in 29 countries;
- United States of America: Reg. No. 2072157, filed August 5, 1994, and registered June 17, 1997;
- European Union: Reg. No. 000373894, filed August 28, 1996, and registered July 29, 1998; Reg. No. 008772766, filed December 21, 2009, and registered September 7, 2012;
- China: Reg. No. 1155921, filed January 10, 1997, and registered February 28, 1998.
The Complainant’s AXA mark has been recognized as a distinctive and well-known mark by previous UDRP panelists. See, e.g., AXA SA v. Frank Van,WIPO Case No. D2014-0863; AXA S.A. v. Privacy Protect, LLC (PrivacyP) / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd,WIPO Case No. D2017-1703; AXA SA v. Guiying Wu,WIPO Case No. D2017-2534; AXA SA v. Zhong Jinzhang,WIPO Case No. D2018-1342.
The Complainant has registered the following domain names reflecting its AXA mark as follows: , registered on October 23, 1995; , registered on November 1, 1997; , registered on July 30, 2001; and , registered on May 20, 1996. AXA Investment Managers SA, a French subsidiary of the Complainant, registered the domain name on December 29, 1997, and is the owner of the European Union trade mark AXA INVESTMENT MANAGERS, Reg. No. 000721928, filed December 26, 1997, and registered April 8, 1999.
The Respondent registered disputed domain name on August 31, 2018. The disputed domain name resolves to a website containing pornography and providing sponsored links to other adult content sites. The Complainant issued cease and desist letters to the Respondent on October 29, 2018, November 7, 2018, and November 15, 2018, to which the Respondent did not reply. The Complainant thereafter commenced this proceeding under the Policy. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s AXA mark. According to the Complainant, the highly distinctive AXA mark is reproduced in its entirety in the disputed domain name. The Complainant maintains that the addition of the geographically descriptive term “asia” does not preclude a finding of confusingly similarity. The Complainant further explains that the letters “im” following “axa” in the disputed domain name refer to AXA INVESTMENT MANAGERS, an AXA affiliate company with a strong presence in Asia.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been licensed or otherwise permitted to use the AXA mark in a domain name, and represents that no relationship whatsoever exists between the involved parties. The Complainant maintains that the Respondent’s use of a confusingly similar domain name with a website offering explicit pornographic content and pay-per-click links to third-party pornographic websites constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Complainant submits that the unexpected exposure of Internet users seeking the Complainant’s website to pornographic material may taint their impressions of the AXA brand.
The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent was aware of and had the Complainant’s internationally famous AXA mark in mind when acquiring the disputed domain name. The Complainant contends that the inclusion in the disputed domain name of the letters “im” following the AXA trademark is intended by the Respondent to create a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement in order to deceive or exploit Internet users. The Complainant further submits that the Respondent’s failure to respond to three cease and desist letters sent to the Respondent confirms that bad faith intentions of the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s AXA mark, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
The Complainant’s AXA mark is clearly recognizable in the disputed domain name.2 The combination in the disputed domain name of the letters “im” with the geographically descriptive term “asia” following “axa” does not preclude a finding of confusing similarity,3 and would appear calculated to call to mind AXA Investment Managers, a subsidiary of the Complainant with a presence in Asia. In light of the foregoing, the Panel considers that the Respondent’s registration and use of the disputed domain names reflects targeting of the Complainant.4 Top-Level Domains (gTLDs) generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent have not been authorized to use the Complainant’s AXA mark, which has a strong reputation and is internationally known. Notwithstanding, the Respondent registered the disputed domain name, which is confusingly similar to the Complainant’s well-known mark, and is using the disputed domain name to divert Internet traffic to a website containing sexually oriented content and pornography, and pay-per-click links to other sites offering similar content.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident that the Respondent was aware of the Complainant’s well-known AXA mark when registering the disputed domain name. The Panel concludes that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark, through the creation of Internet user confusion. In the attendant circumstances, the Respondent’s use of the disputed domain name to trade on the Complainant’s goodwill and reputation precludes any bona fide offering of goods or services under paragraph 4(c)(iii) of the Policy. Nor where the Complainant’s well-known mark has been used to divert Internet visitors to a pornographic website, can it be said that a legitimate noncommercial or fair use of the disputed domain name has been made under paragraph 4(c)(iii) of the Policy. See, e.g., Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281. As noted above, the Respondent has not been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s well-known AXA mark in mind when registering the disputed domain name. The record reflects that the Respondent’s motive in relation to the registration and use of the disputed domain names was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, with the ultimate aim to profit from offering pornographic content on the website and generating pay-per-click revenue from links to other sites offering similar content. The Panel further considers the Respondent’s failure to reply to any of the Complainant’s cease and desist letters evocative of bad faith. See AXA SA v. Zhong Jinzhang,WIPO Case No. D2018-1342.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: March 7, 2019
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Third Edition (“WIPO Overview 3.0”), section 1.7 .
2 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
3 See WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
4 See WIPO Overview 3.0, section 1.15.
5 See WIPO Overview 3.0 , section 1.11.2 and cases cited therein.
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