WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Axa SA v. WhoisGuard Protected, WhoisGuard, Inc. / Thomas David, ANS Corp.
Case No. D2020-0013
1. The Parties
Complainant is Axa SA, France, represented by Selarl Candé - Blanchard - Ducamp, France.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Thomas David, ANS Corp., United States of America.
2. The Domain Name and Registrar
The disputed domain name <axapay.net> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2020. On January 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name and the domain name <axapay.org>. On January 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name and the domain name <axapay.org> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 8, 2020, providing the registrants and contact information disclosed by the Registrar, including particular information relating to multiple underlying registrants, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 10, 2020, removing the domain name <axapay.org> from this proceeding.
The Center verified that the Complaint together with the amendment to 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 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. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 5, 2020.
The Center appointed Marina Perraki as the sole panelist in this matter on February 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
Per Complaint, Complainant’s group has a strong, long-standing history and its roots go back to the 18th century. Employing 171,000 people worldwide, Complainant is a leader in insurance, saving and asset management, serving 105 million customers. Complainant is listed in the Paris Stock Exchange since 1988 and in New York Stock Exchange since 1996. Complainant’s group is present in 64 countries across Europe, Africa, North America and Asia-Pacific. Complainant has been using the AXA brand since 1985.
Complainant owns several trademark registrations throughout the world for the AXA mark, including:
- United States of America trademark registration No. 2072157 for AXA (figurative), filed on August 5, 1994 and registered on June 17, 1997, for services in International class 36; and
- European Union Trade Mark registration No. 008772766 for AXA (word), filed on December 21, 2009 and registered on September 7, 2012, for services in International classes 35 and 36.
Complainant owns the domain names <axa.com> registered on October 23, 1995 and <axa.net> registered on November 1, 1997.
The Domain Name was registered on August 9, 2019. Per Complaint, Respondent was using the Domain Name for phishing purposes to attract internet users by proposing a fake website similar to that of Complainant’s. The Domain Name does not currently resolve to an active webpage, following a takedown notice of Complainant.
Complainant sent three cease and desist letters on September 27, 2019, on October 8, 2019 and on October 16, 2019, to which Respondent did not reply.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use of the AXA mark.
The Panel finds that the Domain Name <axapay.net> is confusingly similar with the AXA trademark of Complainant.
The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The word “pay” which is added in the Domain Name is disregarded as it is non-distinctive (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.net” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (see Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the AXA mark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, per Complainant, the Domain Name was used to host a website similar to that of Complainant’s, for phishing purposes by making Internet users believe that it was an official website of Complainant.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As Complainant demonstrated, Complainant’s AXA trademark is well known. Because the AXA mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had significant goodwill and reputation when the Domain Name was registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s use of AXA mark on the Internet (“www.axa.com”) (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Respondent could have searched the United States Intellectual Property Office’s registry and would have found Complainant’s prior registration in respect of AXA (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
Furthermore, the Domain Name incorporates in whole Complainant’s mark with the additional word “pay” which corresponds to the insurance and financial services of Complainant. The Domain Name therefore creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name. This further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry.
Lastly, as Complainant has demonstrated, the Domain Name was initially registered with a privacy shield service to hide the holder’s identity, which further supports an inference of bad faith (WIPO Overview 3.0, section 3.6).
The Panel considers the following factors: (i) the reputation of Complainant’s mark, which has been repeatedly recognized (AXA SA v. Frank Van, WIPO Case No. D2014-0863), (ii) the failure of Respondent to submit a response, (iii) the initial concealment of the Domain Name holder’s identity through use of a privacy shield, and (iv) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that as per Complainant, the corresponding website was a website similar to that of Complainant, used for phishing purposes by making internet users believe that it was an official website of Complainant.
Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <axapay.net> be transferred to Complainant.
Date: February 27, 2020