WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Frank Van
Case No. D2014-0863
1. The Parties
The Complainant is AXA SA of Paris, France, represented by Selarl Candé Blanchard Ducamp Avocats, France.
The Respondent is Frank Van of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <axacorporatetrust.com> is registered with LiquidNet Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2014. On May 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2014.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 14, 2014. 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 founded in 1817 (Annex 5 to the Complaint), through the merger of several insurance companies. The AXA trade name was adopted in 1985 and the group currently serves 102 million customers around the world, employing 157,000 people in 56 countries (Annex 7 to the Complaint).
The Complainant is the owner, amongst others, of the following trademark registrations:
- International Trademark registration No. 490 030 for AXA registered on December 5, 1984 and successively renewed, valid until December 5, 2014, to cover services in classes 35, 36 and 39 (Annex 10 to the Complaint);
- Hong Kong, China Trademark registration No. 199503471AA for AXA registered on May 28, 1993 and successively renewed, valid until May 28, 2024, to cover services in classes 35 and 36 (Annex 14 to the Complaint); and
- Hong Kong, China Trademark registration No. 200106572AA for AXA CORPORATE SOLUTIONS (& design) registered on June 5, 2001 and successively renewed, valid until October 14, 2016, to cover services in classes 35 and 36 (Annex 17 to the Complaint).
The disputed domain name <axacorporatetrust.com> was registered on February 11, 2014. Currently no active website resolves from the disputed domain name.
5. Parties’ Contentions
The Complainant asserts that it is the owner of the well-known AXA trademark, used in various countries in relation to property and casualty insurance, life insurance and savings, and asset management.
The Complainant further asserts that the disputed domain name incorporates entirely its AXA trademark which as itself has no particular meaning and is therefore highly distinctive, what could create a likelihood of confusion regardless of the addition of other expressions. Moreover, the terms “corporate” and “trust” added to it actually increase the likelihood of confusion given that such words are related to the Complainant’s services and might suggest to Internet users that the page relating to the disputed domain name would be an official or authorized page of the Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent has no relationship with the Complainant and has not received any license or permission to register the Complainant’s trademark in the disputed domain name;
(ii) the Respondent has not been commonly known by the disputed domain name – the webpage that once resolved from the disputed domain name stated that it belonged to a company called AXA Corporate Trust Insurance (ACTI), however, no company is registered under this name on Hong Kong, China companies’ registry (Annexes 23 and 25 to the Complaint); and
(iii) the Respondent is not making a fair use of the disputed domain name which was intentionally registered and used in bad faith for a commercial purpose to create a likelihood of confusion as to the source, affiliation or endorsement of its website.
Lastly, the Complainant asserts that the bad faith of the Respondent can also be proved by the fact that it attempted to contact the Respondent without any reply (Annex 24 to the Complaint) and that the Respondent has provided false information to the Registrar, including a false name and contact details what constitutes a breach of its obligations under the Policy and registration agreement.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the well-known AXA trademark, duly registered in several countries around the world (Annexes 10-14 to the Complaint).
The Complainant’s trademark is entirely reproduced in the disputed domain name and the addition of the terms “corporate” and “trust” in this Panel’s point of view does not distinguish the disputed domain name from the Complainant’s well-known trademark. Quite on the contrary, the disputed domain name possibly leads a certain portion of Internet users into thinking that the corresponding website relates to the Complainant or one of its services or subsidiaries.
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not licensed or otherwise permitted the Respondent to use the AXA trademark in the disputed domain name, nor is there any sort of relationship between the Complainant and the Respondent.
Also, the Complainant has proven (Annex 23 to the Complaint) that there is no registered company in Hong Kong, China bearing the name AXA Corporate Trust Insurance (ACTI), as the webpage that once resolved from the disputed domain name stated (Annex 25 to the Complaint), what corroborates with the Panel’s finding of the absence of rights or legitimate interests in the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
In the present case, the bad faith registration and use of the disputed domain name by the Respondent can be found in view of the following circumstances:
(i) the Complainant’s well known trademark, which is indeed distinctive since it has no particular meaning, is entirely reproduced in the disputed domain name, not being the additions made to it sufficient to avoid the likelihood of confusion between the disputed domain name and the Complainant’s trademark;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;
(iii) the Respondent did not reply to the Complainant’s contact attempts (Annex 24 to the Complaint);
(iv) the physical addresses provided by the Respondent appear to be false ones, the Center not having been able to contact the Respondent through such; and
(vi) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
For the reasons stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use.
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 <axacorporatetrust.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: July 17, 2014