The Complainant is AXA SA of Paris, France, represented by Cande Blanchard Ducamp Avocats, France.
The Respondent is Henk Bierslo of Rotterdam, Netherlands. 2. The Domain Name and Registrar
The disputed 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 October 16, 2018. On October 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2018, 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 October 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2018.
The Center appointed Torsten Bettinger as the sole panelist in this matter on November 22, 2018. 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 French insurance, savings and asset management company, and the owner of a number of trademark registrations for AXA, including:
- United States Patent and Trademark Office (“USPTO”) Trademark Registration No. 3938187 AXA EQUITABLE REDEFINING/STANDARDS (fig), filed on October 29, 2008, and registered on March 29, 2011 for services in classes 36, 39, 41 and 44.
- International Registration No. 490030 AXA (word), registered on December 5, 1984, for services in classes 35, 36 and 39, designating more than 20 countries.
- European Union Trademark Registration No. 373894 AXA (fig), filed on August 28, 1996, and registered on July 29, 1998 for services in classes 35 and 36.
- European Union Trademark Registration No. 8772766 AXA (word), filed on December 21, 2009, and registered on September 7, 2012 for services in classes 35 and 36.
- European Union Trademark Registration No. 008535361 AXA BANK (+design), filed on September 8, 2009, and registered on March 8, 2010 for services in classes 35 and 36.
The disputed domain name was registered on April 25, 2018. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
The Complainant informed the Respondent by email on September 19 and 26, 2018 that the registration and use of the disputed domain name was infringing its trademark rights in the term AXA. The Respondent did not reply to these emails.
The Complainant requests that the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant has a long business history, dating back to the 18th century. The name AXA was introduced in 1985. The Complainant claims to be famous and world leader for its numerous activities in three major lines of business: property and casualty insurance, life insurance and savings, and asset management, proposed both to individuals and to business companies.
The Complainant is present in 62 countries, employs 160,000 people worldwide and serves 105 million customers.
In addition to the registered AXA trademarks, the Complainant is also the holder of four domain name registrations reproducing the AXA trademark: , and all registered prior to the disputed domain name .
With regard to the requirement of identity or confusing similarity between the trademark and the domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant submits that the disputed domain name is confusingly similar to a trademark in which it has rights as it incorporates the Complainant’s AXA trademark in its entirety and only differs from the Complainant’s trademark by the addition of the descriptive term “bank”.
The Complainant further argues that the generic Top-Level Domain (gTLD) “.email” is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:
- it has never licensed or otherwise permitted the Respondent to use the trademark or to register any domain name including the AXA trademarks and that therefore the Respondent has no prior rights or legitimate interest that justifies the use of the domain name;
- the domain name resolves to a website which has been identified a dangerous content by Google Safe Browsing and shows the following warning message:
“Malicious individuals at work on the site could incite you to perform dangerous operations”.
- the Respondent presumably intended to use the domain name for “phishing” that is the fraudulent attempt to obtain sensitive information such as usernames, passwords and credit card details by disguising as a trustworthy entity;
- there is no indication that the Respondent has the intention to make a legitimate noncommercial or fair use of the disputed domain name;
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:
- the trademark AXA was internationally famous at the time of registration of , notably in the Netherlands where the Respondent is located; and that therefore the Respondent was obviously aware of the Complainant’s trademark at the time of acquiring the disputed domain name;
- the Respondent chose and registered the disputed domain name in bad faith in order to take advantage of the Complainant’s situations and interests;
The Complainant argues that the passive holding of the disputed domain name equals use of the domain name in bad faith under the Policy as:
(1) the Complainant' s trademarks have strong reputation and are widely known;
(2) the Respondent did have a malicious intention as the website under the disputed domain name is qualified by Google Safe Browsing as a phishing website;
(3) the Respondent is not seriously interested in actively using the disputed domain name;
(4) the Respondent chose not to answer to the two notices sent on September 19 and 26, 2018 by the Complainant to the Respondent;
(5) the Respondent chose to register the disputed domain name via a privacy proxy registration services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In this case, the disputed domain name only differs from the Complainant’s trademark AXA by the addition of the dictionary term “bank”.
The addition of merely descriptive wording to a trademark in a domain name does not prevent a finding of confusing similarity between a domain name and a complainant’s trademark under the first element of the UDRP. (See, for instance, Facebook, Inc. v. Sleek Names, SL Names, VSAUDHA,WIPO Case No. D2015-0547 (“The disputed domain names contain as a first and/or dominant element the Complainant’s famous trademark FACEBOOK, combined with a variety of descriptive terms, for example, ‘account’, ‘password’, ‘hacker’, ‘analytics’, ‘survey’ et cetera. The addition of these terms do not serve to distinguish the disputed domain names in any material way.”); see also, for instance, Dropbox, Inc. v. Mohd Shariq, Techinspire,WIPO Case No. D2016-1194 (“The domain name consists of the Complainant’s registered mark DROPBOX plus the generic words ‘support’ and ‘number’ separated by hyphens. The addition of these generic words and hyphens do not serve to distinguish the domain names from the Complainant’s DROPBOX marks and the Panel finds that the domain names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.”); see also section 1.8 of WIPO Overview 3.0).
Finally, it has been long established under the UDRP that the specific gTLD designation such as “.com”, “.net” and “.org” is typically not to be taken into account when assessing the issue of identity or confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).
For the foregoing reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark AXA in which the Complainant has exclusive rights. B. Rights or Legitimate Interests
A respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] 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 Complainant has asserted that it never licensed or permitted the Respondent to use its AXA trademark, that the Respondent has no trademark rights that correspond to the disputed domain name and that the Respondent has not been commonly known by that name nor has the Respondent made any attempt to establish an Internet presence using the disputed domain name.
Furthermore, the Complainant provided evidence that the disputed domain name resolved to a website which had been identified by Google Safe Browsing as a phishing website.
These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
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 disputed domain name. 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.
Given that the Respondent has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests, the Panel concludes that the Complainant has satisfied the second element of the Policy set forth by paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Although the circumstances listed in paragraph 4(b) are all phrased in terms of affirmative actions by the Respondent, it is by now well accepted that the passive holding of a domain name, in certain circumstances, can constitute bad faith use under the Policy. See, e.g., Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483; Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3.
While panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include:
(i) the degree of distinctiveness or reputation of the complainant’s mark,
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use,
(iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and
(iv) the implausibility of any good faith use to which the domain name may be put. (See Telstra Corporation Limited v. Nuclear Marshmallows, supra; see also WIPO Overview 3.0, section 3.3.)
The circumstances of the present case are sufficiently similar to those present in Telstra to establish bad faith passive holding of the disputed domain name.
The Complainant’s trademark AXA is long established and widely known, also in the Respondent’s location. The trademark AXA is distinctive and has no generic or descriptive meaning. This and the fact that the disputed domain comprises the Complainant’s trademark AXA in its entirety with the addition of the term bank which describes the Complainant’s business area make it inconceivable that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademarks AXA.
Given that the Complainant’s AXA mark is solely connected with the Complainant and does not have any generic or descriptive meaning, the disputed domain name is also not susceptible to be used in a good faith generic or descriptive sense. On the contrary, the fact that Google Safe Browsing identified the website as a phishing page justifies the conclusion that the Respondent intends to use the domain name for fraudulent purposes.
Finally, the Respondent did not reply to the Complainant’s correspondence prior to the filing of the Complaint and failed to submit a response or to provide any evidence of actual or contemplated good-faith use.
One difference between this case and the Telstra decision is that, unlike as in Telstra, in this case, the Respondent has supplied registration information, which does not prima facie appear to be false. However, the Telstra holding does not turn on the use of false contact information; rather, the central holding of that case is that passive holding of a well-known mark can itself suffice to establish bad faith registration and use. See,e.g., Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, supra (“The provision of false contact information or operation under a false identity is not a prerequisite for a finding of bad faith registration and use based on respondent inaction”).
Having found that the Respondent’s registration and passive holding of the domain name constitutes bad faith registration and use, the Complainant has satisfied its burden on 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 be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Date: December 5, 2018
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