WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AXA SA v. Privacy Protect, LLC (PrivacyProtect.org) Domain Admin / Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd

Case No. D2019-2137

1. The Parties

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

The Respondent is Privacy Protect, LLC (PrivacyProtect.org) Domain Admin, United States of America (the “United States”) / Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd, Panama.

2. The Domain Name and Registrar

The disputed domain name <oneaxa.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 September 2, 2019. On September 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2019, 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 September 4, 2019 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 September 9, 2019.

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 the Respondent of the Complaint, and the proceedings commenced on September 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2019.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on October 7, 2019. 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

AXA is a French multinational insurance company with its headquarters in Paris, France engaging in global insurance, investment management and financial services. It is a world leader in insurance, saving and asset management. 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 (“the AXA Group”).

The AXA Group is present in 64 countries and employs 171,000 people worldwide. AXA was listed on the Paris Stock Exchange in 1988 and on the New York Stock Exchange in 1996.

The Complainant is the owner of the trademark AXA across various jurisdictions. These registrations include:

- United States trademark AXA with registration No. 2072157, registered on June 17, 1997, in International class 36;

- International trademark AXA with registration No. 490030, registered on December 5, 1984, in International classes 35, 36, and 39;

- European Union trademark AXA with registration No. 373894, registered on July 29, 1998, in International classes 35 and 36;

- European Union trademark AXA with registration No. 008772766, registered on September 7, 2012, in International classes 35 and 36;

- French trademark AXA with registration No. 1270658, registered on January 10, 1984, in International classes 35, 36 and 42.

Additionally, the Complainant is also the registrant of numerous domain names such as <axa.com>, <axa.net>, <axa.info> and <axa.fr>, respectively created in 1995, 1997, 2001 and 1996.

The disputed domain name <oneaxa.com> was registered on September 15, 2017, well after the Complainant secured rights to the trademarks. The disputed domain name currently resolves to a parking website which contains a selection of links to goods and services competing with the Complainant’s activities and which offersthedisputeddomainnameforsale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain name is confusingly similar to a trademark or a service in which the Complainant has rights.

The Complainant contends that by incorporating the Complainant’s AXA trademark in its entirety, the disputed domain name is confusingly similar to the Complainant’s trademark.

The Complainant makes reference to a previous UDRP decision recognizing the well-known character through the world of the AXA trademark (see AXA SA v. Frank Van, WIPO Case No. D2014-0863) and claims that the incorporation of a well-known trademark into a domain name is sufficient ground for finding a likelihood of confusion.

Additionally, the Complainant alleges that the mere adjunction of the term “one” does not negate the confusingly similarity between the disputed domain name and the Complainant’s trademark. Taken in combination with the Complainant’s trademark, the term “one” can infer to Internet users that the corresponding website makes a direct reference to the Complainant’s slogan “One AXA” and is an official AXA’s website.

Finally, the Complainant also maintains that the generic Top-Level Domain (“gTLD”) “.com” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant states that it has never licensed or otherwise permitted the Respondent to use the Complainant’s trademark or to register any domain name including the Complainant’s trademark. There is no relationship between the parties. The Respondent has no prior rights and/or legitimate interests to justify the use of the Complainant’s trademark.

Furthermore, the Complainant states that the Respondent has not demonstrated any active interest in using the disputed domain name because several years after registration, the disputed domain name is currently being used as a parking website with advertising provided by a “pay-per-click” service, as evidenced by screenshots annexed to the Complaint. The Complainant asserts that this use constitutes an attempt to unfairly capitalize or otherwise take advantage of the Complainant’s trademark and so cannot create a right or legitimate interest with respect to the disputed domain name (see Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).

Finally, the disputed domain name is linked to another website where the disputed domain name can be purchased for the price of USD 3,434.

(c) The disputed domain name was registered and is being used in bad faith.

With respect to bad faith, the Complainant states that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name because the Complainant is well-known throughout the world (see AXA SA v. Frank Van, WIPO Case No. D2014-0863). The adjunction of the term “one” proves that the Respondent undoubtedly knew both the Complainant’s trademark and slogan.

Accordingly, the Respondent chose and registered the disputed domain name in bad faith in order to take predatory advantage of the Complainant’s reputation.

The Complainant further alleges that by using the disputed domain name in connection with a parking website that provides links to other insurance services providers which compete with the Complainant, the Respondent is attempting to attract Internet users, for commercial purposes, to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark.

The Complainant also contends that the disputed domain is pointed to a third party website where the disputed domain name is offered for sale.

Finally, the Complainant argues that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Relying on AXA SA v. Zhong Jinzhang, WIPO Case No. D2018-1342, the Complainant asserts that failure to respond to a cease-and-desist may be considered as a factor in finding bad faith registration and use of a domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in AXA.

Secondly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the disputed domain name is viewed as a standard registration requirement and as such is to be disregarded.

Thirdly, the disputed domain name fully incorporates the Complainant’s AXA trademarks in which the Complainant has exclusive rights.

Fourthly, this Panel finds that the addition of the term “one” does not constitute an element so as to avoid confusing similarity for purposes of the Policy.¹

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s AXA trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii); or

(i) before any notice to you 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 (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 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.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

It is a well-established view of the UDRP Panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors:

- there is no evidence that the Respondent has been licensed or authorized to use the disputed domain name by the Complainant;

- there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place.

In fact the evidence shows that the Respondent uses the disputed domain name to divert Internet users to a parking website in order to redirect users to competing insurance services providers and thus capitalizing on Complainant’s trademark. Therefore the Respondent can have no rights or legitimate interests in the disputed domain name.

The evidence further shows that the disputed domain name also resolves to a page indicating the disputed domain name for sale. Under the Policy, registering a domain name primarily for the purpose of selling it to a complainant or the complainant’s competitors for sums in excess of out-of-pockets costs do not serve to create any rights or legitimate interests in a disputed domain name.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, 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 you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.

A registration in bad faith occurs, inter alia, where the Respondent knew or should have known of the registration and use of the trademarks prior to registering the disputed domain name. This Panel finds, similarly to other UDRP panels, that the Complainant’s AXA trademarks are well known and have acquired worldwide recognition and reputation with regard to its services. It is therefore extremely unlikely that the Respondent was unaware of the Complainant’s AXA trademarks at the time of registration of the disputed domain name. Such is true in the present case, where the Respondent registered the disputed domain name after the Complainant obtained its trademark registrations for the AXA trademark.

As for the use of the disputed domain name, based on the evidence submitted the Respondent is using it in order to obtain click-through-revenue from the pay-per-click parking site and such circumstance is a clear indication of bad faith. The confusingly similarity between the disputed domain name and the Complainant’s AXA trademark is in fact further enhanced by the inclusion of a term that relates to the slogan of the Complainant.

Moreover, the disputed domain name also indicates that the disputed domain name is for sale. This shows that the Respondent further registered the disputed domain name for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant in excess of the Respondent’s out-of-pocket expenses for registering and transferring the disputed domain name, which is clearly indicative of bad faith registration and use under paragraph 4(b)(i).

Finally, the Panel also finds that the Respondent’s failure to reply to the Complainant’s cease-and-desist letter and to submit a Response amount to additional circumstances evidencing the Respondent’s bad faith.

In light of the above this Panel finds that the disputed domain name was registered in bad faith and is being used by the Respondent in bad faith under 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 <oneaxa.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: October 21, 2019

¹ See also WIPO Overview of WIPO Panel and Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.