The Complainant is AXA SA, France, represented by Selarl Candé Blanchard Ducamp Avocats, France.
The Respondent is Vo Quang Hung, Ico Gala, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2020. On January 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2020, 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 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2020. The Center appointed Cherise Valles as the sole panelist in this matter on February 17, 2020. 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. The Complainant employs 171,000 people worldwide and is a leader in insurance, saving and asset management, serving 105 million customers globally. The AXA Group is present in 64 countries and does business in several geographic regions and markets, notably across Europe, Africa, North America and Asia-Pacific. The trade name AXA was introduced in 1985. The Complainant has been listed on the Paris Stock Exchange since 1988 and on the New York Stock Exchange since 1996. The AXA Group operates in three major lines of business: property and casualty insurance, life insurance and savings, and asset management, serving both individuals and corporations. The Complainant owns a number of trademarks in jurisdictions around the world for the term AXA, including the following: - United States of America trademark No. 2072157 for AXA and the AXA logo, registered on August 5, 1994, in class 36; - International trademark No. 490030 for AXA, registered on December 5, 1984, in classes 35, 36 and 39; - European Union Trade Mark No. 373894 for AXA and the AXA logo, registered on July 29, 1998 in classes 35 and 36; - European Union Trade Mark No. 008772766 for AXA, registered on September 7, 2012 in classes 35 and 36; and - French trademark No. 1270658 for AXA, registered on 10 January, 1984, in classes 35, 36 and 42. The Complainant also owns and operates numerous domain names incorporating the term AXA, including The disputed domain name was registered on September 22, 2019. The website to which the disputed domain name previously resolved was presented in a very similar manner to the Complainant’s own website, and used similar logos in the same colors as the Complainant’s logos (blue, white and red). That website is no longer accessible following brand abuse takedown action by the Complainant. 5. Parties’ Contentions A. Complainant The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that: The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. - The disputed domain name is confusingly similar to the Complainant’s registered trademark, AXA, in light of the fact that it wholly incorporates the Complainant’s mark. The Respondent lacks rights or legitimate interests in the disputed domain name. - The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks. The disputed domain name has been registered and is being used in bad faith. - The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. The Complainant requests transfer of the disputed domain name to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements: (i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name was registered and is being used in bad faith. The Complainant has the burden of proof in establishing each of these elements. The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Identical or Confusingly Similar To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark. The Complainant is the sole and exclusive owner of multiple registrations worldwide for the term AXA and AXA logos, as indicated in Section 4 above. The disputed domain name wholly incorporates the Complainant’s AXA trademark. Previous UDRP panels have recognized that the Complainant has established rights in the name AXA. See, AXA SA v. Frank Van,WIPO Case No. D2014-0863. The disputed domain name incorporates the Complainant’s AXA trademark in its entirety, alongside the descriptive term “pay”. Previous UDRP panels have established that adding a descriptive term to a complainant’s mark does not prevent the confusing similarity between a trademark and a domain name. See Finaxa SA v. Spiral Matrix,WIPO Case No. D2005-1044, in which the panel found that a domain name comprising the name AXA alongside the descriptive word “equity” was confusingly similar to the AXA trademark. Similarly, the addition of the term “pay” to the Complainant’s AXA trademark in the disputed domain name, does not prevent a finding of confusing similarity. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Previous UDRP panels have held that the Top-Level Domain (“TLD”) “.org” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark. In the light of the foregoing, the Panel finds that the disputed domain name Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent): “[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate non-commercial 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 did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established a prima facie case and he Respondent has not satisfied this burden. In the absence of a Response or assertion that any such right or legitimate interest exists, this must lead to a presumption that the Respondent is unable to show that such a right or legitimate interest exists. To the best of the Complainant’s knowledge, the Respondent is not commonly known under the name “axapay.org”. The term “axa” is not descriptive in any way and to the best of the Complainant’s knowledge, the Respondent does not make use of a business name which includes the term “axa” nor has the Respondent registered any trademarks incorporating this term. Moreover, there has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s trademarks in any manner whatsoever, including in, or as part of, the disputed domain name. There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name, nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. Based on the layout and contents of the website to which the disputed domain name previously resolved, and their similarity to the Complainant’s own website, the Panel concludes that the Respondent is deliberately seeking to confuse Internet users who arrive at the website to which the disputed domain name resolves by seeking to cause them to believe such website is the Complainant’s website or is associated with the Complainant’s website. Previous UDRP panels have held that such use does not confer rights or legitimate interests on a respondent. As noted under Factual Background, the website is no longer accessible following brand abuse action filed by the Complainant. Finally, the Respondent’s failure to respond either to three cease and desist notices sent by the Complainant on October 29, November 6 and 14, 2019 or to the Complaint indicates a lack of legitimate interest in the disputed domain name. In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. 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 documented out-of-pocket costs directly related to the domain name; (ii) the respondent has 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; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 Respondent cannot claim not to have had knowledge of the Complainant’s AXA trademarks at the time of registration of the disputed domain name given that the website to which the disputed domain name previously resolved (prior to its takedown) imitated that of the Complainant, including by making use of logos that are similar to the Complainant’s AXA logos. The imitation of the Complainant’s website suggests that the Respondent registered the disputed domain name in bad faith in order to take predatory advantage of the Complainant’s reputation. Furthermore, the overall “look” of the website to which the disputed domain name previously resolved being very similar to that of the Complainant’s AXA websites suggests that the Respondent is (or was, until the Complainant secured the takedown of the website) potentially engaged in phishing activity. Previous UDRP panels have held that phishing attacks constitute proof of both bad faith registration and use in bad faith. See, e.g., Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa,WIPO Case No. D2006-0614. Moreover, the Panel finds that the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or affiliation of the Respondent’s website. Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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 Cherise Valles
Sole Panelist
Date: March 3, 2020
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