The Complainant is AXA SA, France, represented by Selarl Candé - Blanchard - Ducamp, France.
The Respondent is Asher Ferrell, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2020. On June 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 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 June 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2020. The Center appointed Rodrigo Azevedo as the sole panelist in this matter on July 26, 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 an insurance, saving, and asset management company. The Complainant obtained registrations for the trademark AXA in numerous regions of the world, including: - The International trademark no. 490030 filed on December 5, 1984, and registered on December 5, 1984, designating inter alia Algeria, Austria, Bosnia and Herzegovina, Croatia, Egypt, Spain, Hungary, Italia, Morocco, Monaco, Portugal, Democratic People's Republic of Korea, Romania, Russian Federation, Sudan, Ukraine, Viet Nam, Serbia, Benelux, and Switzerland; - The United States of America trademark no. 2072157 filed on August 5, 1994, and registered on June 17, 1997; The Complainant is also the owner of the several domain names incorporating the AXA trademarks, such as: - The Respondent registered the disputed domain name According to the Complaint, the disputed domain name was used in connection to a fraudulent financial schemes. The Panel accessed the disputed domain name on August 9, 2020, at which time the disputed domain name did not resolve to any active website. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant’s AXA Group has a strong, long-standing history and its roots go back to the 18th century. After a succession of mergers, acquisitions and name changes involving some of the biggest insurance companies around the world, the trade name AXA was introduced in 1985. The disputed domain name reproduces entirely the trademark AXA, which as itself has no particular meaning and is therefore highly distinctive. When a disputed domain name incorporates the entirety of the Complainant’s trademark – and a notorious and famous trademark – it is difficult, if not impossible, regardless of added terms to distinguish adequately the mark from the disputed domain name. The sign AXA is well-known around the world in the field of insurance and financial services, as stated in previous UDRP cases. The word “axa” is perfectly identifiable within the disputed domain name and is its dominant element given its high distinctiveness. The use of the letters “gb” which is the acronym of “Global Broker”, identical to the company name of Axa Global Broker undoubtedly makes reference to the Complainant’s activities in the field of insurance brokerage. This term therefore increases the likelihood of confusion. The disputed domain name can make believe to Internet users that the corresponding website is an Axa Global Broker official website when actually it is not. - The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks. Therefore, there is no relationship whatsoever between the involved parties. The Respondent has clearly adopted the Complainant’s trademark, which has acquired a substantial reputation around the world, for its own use and incorporated it into his disputed domain name without the Complainant’s authorization. Secondly, the Respondent, Asher Ferrell, has not been commonly known by the disputed domain name or even associated with the name “Axa”, whereas the AXA trademark appears to be well-known. Thirdly, the Respondent is not making a fair use of the disputed domain name without intent for commercial gain and is misleadingly diverting consumers. He was using the disputed domain name for scamming purposes for financial gain. The Financial Conduct Authority has published a public warning on its website describing the “clone firm” created by the Respondent and two press articles have also been devoted to the fraud committed by the Respondent. As stated in section 2.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), UDRP panels have categorically held that the use of a domain name for illegal activity (e.g. phishing or other types of fraud) can never confer rights or legitimate interests on a respondent. - The disputed domain name was registered and is being used in bad faith. The Respondent was aware of the Complainant’s AXA trademarks at the time that he acquired the disputed domain name. The Complainant has submitted ample evidence to support its claim that the trademark AXA has become internationally famous and enjoys worldwide good reputation. The Respondent has also copied the Complainant’s trademark AXA and the company name Axa Global Broker on the website previously published at the disputed domain name. The choice of the disputed domain name is intended to mislead Internet users by making them believe that the disputed domain name is associated with the Complainant, and in particular with Axa Global Broker. According to similar UDRP cases, the panel held the respondent’s bad faith when the disputed domain name incorporates the entirety of the Complainant’s trademark – a notorious and famous trademark. The website previously published at the disputed domain name is suspended since May 19, 2020, after Complainant’s request for suspension. The Respondent was using the disputed domain name for scamming purposes, pretending to be one of AXA’s subsidiaries, to encourage people to invest with him. This illegal activity constitutes proof of use in bad faith of the disputed domain name. Furthermore, the Respondent chose not to answer to the three notices sent May 26, June 4, and 12, 2020, by the Complainant to the Respondent. Failure to respond to a complainant’s efforts to make contact provides “strong support for a determination of ‘bad faith’ registration and use”, B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements: (i) the disputed 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 in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Annexes 11 – 17 to the Complaint show trademark registrations for AXA obtained by the Complainant as early as in 1984. The trademark AXA is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark AXA merely by the addition of the suffix “gb”, which is a common acronym for “global broker” in the financial system. Previous UDRP decisions have found that the mere addition of descriptive terms to a trademark in a domain name does not avoid a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S.M.A., Inc.,WIPO Case No. D2000-0927). It is already well established that the addition of a generic Top-Level Domain extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the 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; 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 at issue. Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant brought forward evidence that the disputed domain name has been used in connection with financial fraudulent schemes, trying to impersonate the Complainant. The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any reason to justify why the specific term “axagb” was chosen to compose the disputed domain name. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is 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; or (ii) 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) 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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. When the disputed domain name was registered by the Respondent in 2020, the trademark AXA was already well-known and directly connected to the Complainant’s insurance activities for many decades. The disputed domain name encompasses the trademark AXA. The addition of the suffix “gb” even enhances the risk of confusion in the present case, suggesting that the disputed domain name refers to an official “global broker” of the Complainant. According to section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Complainant also brought forward evidence that a website previously published at the disputed domain name reproduced the specific design of its trademark AXA. Therefore, the Panel concludes that it is highly unlikely that the Respondent was unaware of the Complainant’s trademarks when registering the disputed domain name and that the adoption of the disputed domain name was a mere coincidence. Currently, no active website is linked to the disputed domain name, but this does not change the Panel’s finding that the disputed domain name is also being used in bad faith. In the Panel’s view, the circumstances of this case, including: (a) the Respondent not presently using the disputed domain name; (b) the Respondent not indicating any intention to use the disputed domain name in relation to a bona fide purpose; (c) the Respondent not providing justifications for the registration of a domain name containing a third-party famous trademark; (d) the evidence that the disputed domain name has been used in connection with fraudulent schemes, trying to impersonate the Complainant also through the reproduction of its trademark; and (e) the lack of any plausible good faith reason for the adoption of the term “axagb” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 Rodrigo Azevedo
- The European Union Trade Mark (“EUTM”) no. 373894 filed on August 28, 1996 and registered on July 29, 1998;
- The EUTM no. 008772766 filed on December 21, 2009, and registered on September 7, 2012;
- The Canadian trademark no. TMA452315 filed on February 21, 1992, and registered on December 29, 1995;
- The United Kingdom trademark no. 1272911 filed on October 1, 1986, and registered on September 30, 1988.
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Sole Panelist
Date: August 10, 2020
Full & Egal Universal Law Academy