AXA SA v Eduardo Enrique Farina Zalazar

WIPO Case No. D2024-1063

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

AXA SA v. Eduardo Enrique Farina Zalazar

Case No. D2024-1063

1. The Parties

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

The Respondent is Eduardo Enrique Farina Zalazar, Paraguay.

2. The Domain Name and Registrar

The disputed domain name <axagrupo.com> 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 11, 2024. connection with the disputed domain name. On March 12, 2024, 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 March 18, 2024. In accordance with the Rules, paragraph
5, the due date for Response was April 7, 2024. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 8, 2024.

The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on April 15, 2024. 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.

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4. Factual Background

The Complainant is the French holding company, which is active in the fields of insurance, saving, and asset management, serving 93 million customers and employing over 110,000 people worldwide. The Complainant’s group is present in 51 countries and does business in diversified geographic regions and markets across notably Europe, Africa, North America, and Asia-Pacific.

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.

In 2023, the Trademark AXA is rank 43rd among the 100 best global brands according to the Interbrand ranking.

The Complainant own several registered trademarks for AXA, among others:

- International trademark AXA n°490 030 filed on December 5, 1984 in classes 35, 36 and 39

- International trademark AXA (+design) n°1 519 781 filed on May 29, 2019 in classes 35, 36, 37, 39, 44
and 45

- European Union trademark AXA (+design) n°373 894 filed on August 28, 1996 in classes 35 and 36

The Complainant also owns several “axa” domain names, including:

- <axa.com> registered on October 23, 1995.

- <axa.fr> registered on May 20, 1996.

- <axa.net> registered on November 01, 1997.

- <axa.info> registered on July 30, 2001.

The disputed domain name was registered on July 19, 2023, and according to the evidence provided by the blog about philosophy”, and stating “Sample Page”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

1.      the domain name reproduces identically the trademark AXA which as itself has no particular meaning and is therefore highly distinctive.

2.      as already stated in the previous AXA SA v. Frank Van, WIPO Case No. D2014-0863 the trademark AXA is well-known around the world in the field of insurance and financial services.

3.      the adjunction of the generic term “grupo”, which means in Spanish “group”, to the trademark AXA in the Disputed Domain Name does not diminish the confusing similarity between the Disputed Domain Name and the Complainant’s trademark.

4.      there are strong chances that Internet users may believe that the Disputed Domain Name is another official website of the Complainant related to its activities.

5.      the disputed domain name is confusingly similar to the trademarks in which the Complainant has prior rights.

6.      the Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including the trademark AXA.

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7.      the Respondent does not seems commonly known by the domain name or even associated with the name AXA, whereas the AXA trademark appears to be well-known.

8.      the disputed domain name is not use in connection with a bona fide offering of goods or services.

9.      the Respondent has no rights or legitimate intertest in respect of the domain name.

10.    the Respondent was aware of the Complainant’s AXA trademarks at the time that he acquired the disputed domain name due to the undeniable reputation of AXA and its trademarks.

11.    the Respondent purposely chose and registered the Disputed Domain Name using the term “AXA” from the Complainant’s trademark in its entirety.

12.    did not receive any answer to the three letters of formal notice sent to the Respondent in order to stop the use of the domain name.

13.    it clearly appears that the disputed domain name was registered intentionally and is being used in bad faith by the Respondent without any rights or legitimate interest.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of the term “grupo”, which means in Spanish “group” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

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Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel considers that previous UDRP panels have found the Complainant’s AXA trademark to be famous (e.g., AXA SA v. WhoisSecure / Emeka Nwonye, WIPO Case No. D2022-0904; and AXA SA v. Lieselotte Hildebrandt, WIPO Case No. D2023-0800), and the evidence in the present case supports such finding of the Complainant’s AXA trademark’s reputation indeed. The Panel notes the composition of the disputed domain name (where “axa” combined with “grupo” does not seem to be a common combination except probably to refer to the Complainant’s group of companies), and that it has been used for some sort of a website coming soon without any reasonable explanation for its selection. The Panel infers that the Respondent must have had the Complainant’s AXA trademark in mind when it registered the disputed domain name, registering and holding the disputed domain name likely to take an unfair advantage of its similarity with the Complainant’s AXA trademark, which makes the registration and use of the disputed domain name in bad faith.

The Panel finds that the Complainant has established 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 <axagrupo.com> be transferred to the Complainant.

/Gonçalo M. C. Da Cunha Ferreira/
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: April 29, 2024