The Complainant is AXA S.A, France, represented by Cande Blanchard Ducamp Avocats , France.
The Respondent is Contact Privacy Inc. Customer 1246895441, Canada / AXA BANK, Benin. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2020. On May 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 21, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 22, 2020. On May 21, 22, and 25, 2020, the Center received several informal communications from the Respondent. The Center verified that the Complaint together with the amendment to 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 May 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. No Response was filed with the Center. On June 17, 2020, the Center informed the Parties that it would proceed to appoint the Panel. On June 17, 2020, the Center received an informal communication from the Respondent’s communication. The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on July 2, 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. On July 2, 2020, the Respondent sent another informal communication to the Center. 4. Factual Background The Complainant is the holding company of the AXA group. After a series of mergers of several insurance companies, the AXA trade name was adopted in 1985. The Complainant defines itself as a world leader in insurance, saving and asset management. The Complainant is the owner of many trademark registrations for or including the word AXA, amongst others, of the following: - International Trademark Registration No. 490030 AXA, registered on December 5, 1984 and successively renewed, covering many jurisdictions, for services in classes 35, 36 and 39; - European Union Trade mark Registration No. 008772766 AXA, registered on September 7, 2012 and duly renewed, for services in classes 35 and 36; - French Trademark Registration No.1270658 AXA, registered on January 10, 1984 and duly renewed, in classes 35, 36 and 42; and - European Union Trade mark Registration No. 008535361 AXA BANK (+ design), registered on March 8, 2010 and duly renewed in classes 35 and 36. The Complainant is the owner the following domain names which include the trademarks AXA or AXA BANK: The disputed domain name The AXA Group enjoys a worldwide reputation and is famous for its numerous activities in three major lines of business: property and casualty insurance, life insurance and savings and asset management, serving 108 million customers around the world and employing 160,000 people. The group is present in 57 countries and does business in diversified regions and markets across notably in Europe, Africa, North America and Asia-Pacific. In Belgium, the Complainant offers a wide range of banking solutions, through its affiliate company Axa Bank Belgium – under the trademark AXA BANK – which was elected Bank of the Year in 2006 and won two Bank Awards in 2017 and 2018. In essence, the Complainant claims that the disputed domain name is confusingly similar to the AXA and AXA BANK trademarks in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is used in bad faith. The Complainant’s trademarks AXA and AXA BANK enjoy a very good reputation, are well protected and well known in numerous countries in the world. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks. There is no relationship whatsoever between the Parties. It should be noted that the Respondent also used a fake name “Axa Bank” and fake contact details in order to hide its identity. Prior to this proceeding, the Complainant sent three notices to the Respondent on April 10, 20 and 28, 2020 which were never answered by the Respondent. The Respondent registered the disputed domain name using a fake identity. Indeed, Axa Bank does not exist in Benin. The postal address provided for the registration of the disputed domain name does not seem to correspond to an existing address. Furthermore, the email address provided for the registration of the disputed domain name does not seem to be under the control of the Respondent as, after sending the Complaint to the Respondent by mail, the Respondent sent several emails indicating: “We don’t know what is it!”; “We don’t know what domain is it and for which reason you are writing to us” and “We think that it must be an error. Because we don’t have any domain like this”. Such behavior demonstrates the Respondent’s bad faith in registering the disputed domain name. Passive holding of a domain name does not constitute “legitimate noncommercial use” of it, and in these circumstances shows the disputed domain name was registered and is being used in bad faith. Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. However, the Respondent sent several informal communications indicating that it had not registered the disputed domain name and had no information relevant to the present dispute. 6. Discussions and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that: (i) the disputed domain name is identical or confusingly similar with 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has proved that it has rights in the trademarks AXA and AXA BANK. As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In this case, the disputed domain name contains the Complainant’s trademarks AXA and AXA BANK in their entirety. The Panel considers that the addition of the dictionary terms “bank” and “mail” do not suffice to avoid a finding of confusing similarity with the trademark AXA. As set forth in section 1.7 of WIPO Overview 3.0 in cases where the domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar with that mark. Furthermore, as stated in section 1.8 of WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity the Panel shall disregard the gTLD “.com” included in the disputed domain name. The Panel finds that the disputed domain name is confusingly similar with the trademarks AXA and AXA BANK in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein. Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other to prove that the Respondent has legitimate interests or that it has established rights in the disputed domain name. Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name – which is confusingly similar with the Complainant’s AXA and AXA BANK trademark – but rather that it intends to use the disputed domain name for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name may relate is the official site of the Complainant. As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry […] Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.” As indicated in paragraph 6.A above, the disputed domain name is confusingly similar with the AXA and AXA BANK trademarks. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled. C. Registered and Used in Bad Faith The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademarks mentioned in section 4 above (Factual Background) when it registered the disputed domain name on April 10, 2020. The Complainant has submitted evidence to support its claim that the trademarks AXA and AXA BANK are widely known and enjoy good reputation. In a previous UDRP case concerning the domain name The disputed domain name was registered many years after the Complainant had registered and used its trademarks AXA and AXA BANK and also the domain names that include them: The Respondent when registering the disputed domain name on April 10, 2020 has targeted the Complainant’s trademark by adding two non-distinctive words thereto, “bank” and “mail”, with the intention to confuse Internet users and capitalize on the fame of the Complainant’s name and trademarks for its own monetary benefit. The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0). Panelists have found that non-use of a domain name does not prevent a finding of bad faith under the doctrine of “passive holding” when circumstances exist such as the distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the disputed domain name may be put. The Panel finds that all these circumstances are relevant to this administrative proceeding and therefore that a finding of bad faith lies under the doctrine of “passive holding” (section 3.3 of WIPO Overview 3.0). The Panel finds that the Respondent has registered and uses the disputed domain intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s widely used marks as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) 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 Miguel B. O’Farrell
Sole Panelist
Date: July 16, 2020
Full & Egal Universal Law Academy