WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AXA SA v. Bastien, Obambu SARL

Case No. D2020-0884

1. The Parties

The Complainant is AXA SA, France, represented by Selarl Candé - Blanchard - Ducamp, France.

The Respondent is Bastien, Obambu SARL, France.

2. The Domain Name and Registrar

The disputed domain name <axafinancialgroup.com> is registered with NameWeb BVBA (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2020. On April 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 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 April 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2020.

The Center appointed Alexandre Nappey as the sole panelist in this matter on May 13, 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 a company providing insurance, saving and asset management services. It employs approximately 160,000 people and serves around 108 million customers. It has a presence in 57 countries and its principal markets are in Europe, North America, and Asia-Pacific.

The Complainant trades as AXA and it has registered many trademarks incorporating such term. These include, by way of example only, International Trademark No. 490030 for AXA, registered on December 5, 1984 in classes 35, 36 and 39 and designating over 25 countries. The Complainant is also the registrant of a number of domain names which incorporate its mark, including <axa.com> and <axa.fr>.

The disputed domain name was registered on November 7, 2019 and it is not active at the time of the decision.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements listed 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 include its trademarks.

- The Respondent was using the disputed domain name for phishing purposes, targeting the customers of the Complainant.

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 the 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

Notwithstanding the lack of a response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(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.

However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having consideration to the Parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above-mentioned elements are the following:

A. Identical or Confusingly Similar

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 trademark AXA. See for instance, AXA SA v. Frank Van, WIPO Case No. D2014-0863.

The disputed domain name contains the Complainant’s distinctive trademark in full. It is merely followed by the descriptive words “financial” and “group”. Neither of these words has any impact on an assessment of confusing similarity between the disputed domain name and the Complainant’s trademark.

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 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. S Managing Trustee/MeridianGlobal, WIPO Case No. D2004-0509, in which the panel notably found that a domain name comprising the name AXA alongside the descriptive words “financial” and “group” (as in the present case) was confusingly similar to the AXA trademark.

Previous UDRP panels have held that the generic Top-Level Domain (“gTLD”) “.com” 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 is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

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 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 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 the 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 by “axafinancialgroup”, or variations thereof. 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.

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 further to a takedown notice filed by the Complainant.

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 sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.

It provides that:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your 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 and feel” 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., ArcelorMittal (Société Anonyme) v. El Manuel Es Pura Bellesa, Acero, WIPO Case No. D2020-0868.

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 <axafinancialgroup.com> be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Date: May 27, 2020