WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Richard Lim
Case No. D2020-0749
1. The Parties
Complainant is AXA SA, France, represented by Selarl Candé - Blanchard - Ducamp, France.
Respondent is Richard Lim, Philippines.
2. The Domain Name and Registrar
The disputed domain name is <axa-imglobal.com>, which is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2020. On March 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 24, 2020.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on May 22, 2020. This Panel finds that it was properly constituted. This 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
Complainant is the holding company of the AXA group, which is engaged in property and casualty insurance, life insurance and savings, and asset management.
Complainant has rights over the AXA trademark for which it holds several trademark registrations, such as registration No. 1270658 in classes 35, 36, and 42, registered on January 10, 1984, with the National Institute of Industrial Property of France; International registration No. 490030 in classes 35, 36, and 39, registered on December 5, 1984; and registration No. 1290037 in classes 35 and 36, registered on April 15, 2016, with the Intellectual Property Office of the Philippines.
Complainant also has rights over the AXA and design trademark for which it holds several trademark registrations, such as registration No. 61002 in class 36, registered on June 22, 1995, with the Intellectual Property Office of the Philippines; and registration No. 373894 in classes 35 and 36, registered on July 29, 1998, with the European Union Intellectual Property Office.
Complainant is the registrant of several domain names containing the term “axa”, such as <axa.fr> created on May 19, 1996, and <axa.net> created on November 1, 1997. AXA Investment Managers SA, a subsidiary of Complainant, is the registrant of the domain names <axa-im.fr> created on February 14, 1999, and <axa-im.com> created on December 28, 1997.
The disputed domain name was registered on January 14, 2020. Before the Complaint was filed, the disputed domain name was used as email address. By the time the Complaint was filed the website associated with the disputed domain name was shut down by the Registrar as per Complainant’s request.1
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows.
The AXA group is present in 64 countries and does business in diversified geographic regions and markets, such as Africa, Asia-Pacific, Europe and North America, employing 171,000 people worldwide and serving 105 million customers.
The trade name AXA was introduced in 1985 and is well known around the world in the field of insurance and financial services. The AXA trademark has no particular meaning and is therefore highly distinctive.
The disputed domain name is confusingly similar to the AXA trademark in which Complainant has rights. The disputed domain name entirely reproduces the trademark AXA with the addition of “-imglobal” which is not sufficient to prevent the public from being confused. Internet users may believe that the website associated with the disputed domain name is another official website of Complainant referring to the activities of AXA lnvestment Managers and would expect to find content related to Complainant or its subsidiary.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has never licensed or otherwise permitted Respondent to use its trademarks or to register any domain name including such trademarks and there is no relationship whatsoever between the Parties. Respondent has not been commonly known by the disputed domain name nor even associated with the name “axa”.
Respondent is not making a fair use of the disputed domain name without intent for commercial gain and is misleadingly diverting consumers.
The letters “im” associated with the trademark AXA make reference to “AXA IM”, that is, to the company AXA Investment Managers and to Complainant’s activities in the field of investment. Further, the term “global” suggests the scope of the activity of AXA IM. Thus, the mere addition of “-imglobal” to the trademark AXA in the disputed domain name increases the likelihood of confusion and can make believe to Intemet users that the corresponding website is an official website of Complainant when actually it is not. Respondent was using the disputed domain name for phishing purposes, targeting Complainant’s customers. Complainant asked the Registrar to suspend the disputed domain name.
The trademark AXA has become internationally famous and enjoys worldwide reputation. Respondent was aware of Complainant’s AXA trademark at the time it acquired the disputed domain name. AXA Investment Managers currently uses the domain names <axa-im.fr> and <axa-im.com>. Respondent chose and registered the disputed domain name in bad faith in order to take predatory advantage of Complainant’s reputation.
Respondent is engaged in a phishing scheme to divert Complainant’s customers to its website. Respondent tried to attract Internet users to its website by proposing a fake website similar to that of Complainant’s. Complainant requested a takedown of Respondent’s website before the filing of the Complaint and thus said website is no longer available.
Respondent chose not to answer to the three notices Complainant sent to Respondent on March 4, 12, and 20, 2020, which provides strong support for a determination of bad faith registration and use.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 and section 4.3 of the WIPO Overview 3.0). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the AXA trademark.
Since the addition of a generic Top-Level Domain (“gTLD”), in this case “.com”, after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a trademark (see section 1.11.1 of the WIPO Overview 3.0). Furthermore, the disputed domain name identically reproduces the AXA trademark, followed by the additional term “-imglobal”. It is clear to this Panel that “axa” is recognizable in the disputed domain name, and that the addition of such term in the disputed domain name does not avoid its confusing similarity with said trademark (see sections 1.7 and 1.8 of the WIPO Overview 3.0).
Thus, this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is undisputed that Complainant and its AXA trademark are well known internationally. Complainant contends that it has no relationship with Respondent, that it has not authorized Respondent to use its trademark, and that Respondent is not commonly known by the AXA trademark.
The evidence in the file shows that Complainant’s subsidiary, AXA Investment Managers SA, appears as the registrant of the domain names <axa-im.fr> and <axa-im.com> and that the latter resolves to an active website which features the activities of such subsidiary. The disputed domain name is highly similar to said domain names. Although there appears to be no active website currently associated with the disputed domain name, it seems to this Panel that the nature of the disputed domain name carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).
This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.2 In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
Taking into consideration Complainant’s international presence, that the registration and use of its AXA trademark preceded the registration of the disputed domain name, that said trademark has become well known and is composed of a coined term, this Panel is of the view that Respondent must have been aware of the existence of Complainant and its AXA trademark at the time it obtained the registration of the disputed domain name.
Although there is no evidence provided as to whether there was an active website associated with the disputed domain name, the concept of a domain name “being used in bad faith” is not limited to a domain name with an active website on the Internet.3 Complainant submitted evidence that shows that an email was sent from “[…]@axa-imglobal.com” on January 29, 2020. In the case at hand, Respondent’s bad faith may be deduced from the following facts: (i) Complainant and its subsidiary, AXA Investment Managers SA, are well-established companies; (ii) Respondent is using Complainant’s trademark in the disputed domain name without Complainant’s authorization; (iii) the substantial similarity of the disputed domain name with the domain names <axa-im.fr> and <axa-im.com> which belong to Complainant’s subsidiary mentioned above; (iv) Respondent’s use of the disputed domain name as an email address through which Respondent effectively impersonates Complainant’s subsidiary; (v) the lack of any bases in the file to conceive a legitimate use of the disputed domain name by Respondent; (vi) Respondent’s lack of response to Complainant’s cease-and-desist communications; and (vii) Respondent’s failure to respond in this proceeding.
In sum, the overall evidence indicates that Respondent’s choice of the disputed domain name was deliberate for its substantial similarity with, and with the likely intention to benefit from the reputation and goodwill of, Complainant’s AXA trademark and potentially disrupt Complainant’s business or deceive third parties, which denotes bad faith.
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <axa-imglobal.com> be transferred to Complainant.
Date: June 5, 2020
1 Complainant supplied no evidence on the content of such website at that time. On May 28, 2020, this Panel tried to access the disputed domain name and noticed that it did not resolve to an active website since an error message was displayed showing, among others, that the server IP address could not be found. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
2 See Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400: “There is no evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent”. See also section 2.1 of the WIPO Overview 3.0.
3 See sections 3.3 and 3.4 of the WIPO Overview 3.0. See also Accenture Global Services Limited v. Patel Holdings, WIPO Case No. D2016-0367: “[A]lthough the disputed domain name does not resolve to an active website, the Panel accepts the Complainant’s allegation and proof that the Respondent is making an illegitimate use of the disputed domain name through an email address associated with the same”.