WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Registration Private, Domains By Proxy, LLC / AXA BANQUE
Case No. D2019-2498
1. The Parties
The Complainant is AXA SA, France, represented by Selarl Candé – Blanchard – Ducamp, France.
The Respondent is Registration Private, Domains By Proxy, LLC / AXA BANQUE, France.
2. The Domain Name and Registrar
The disputed domain name <mybanqueaxa.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2019. On October 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 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 October 14, 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 October 18, 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 October 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2019.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on November 14, 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
The following facts were duly established in the Complaint and its numerous annexes:
The Complainant is AXA SA, a world leader in insurance, saving and asset management, with over 100 million customers. It operates in 64 countries, within which France remains by far its main market, representing a quarter of its total gross revenues (nearly a hundred billion EUR in 2017). Its activities of asset management and banking account for 9 per cent of its revenues. In particular, the Complainant operates banking services in Belgium under the brand AXA BANK, where it offers services to 800 000 customers. While the Complainant was established a couple of centuries ago, it adopted the brand AXA in 1985. The name AXA is very well-known in France and beyond, primarily for insurance services.
The Complainant relies in particular on the following trademark registrations as a basis for its Complaint:
European Union trademark AXA (fig.) No. 373894, registered on July 29, 1998, covering in particular financial and banking services in class 36;
European Union trademark AXA (fig.) No. 8772766, registered on September 7, 2012, covering in particular financial and banking services in class 36;
French trademark AXA (word) No. 1270658, registered on January 10, 1984, covering in particular insurance and financial services in class 36;
European Union trademark AXA BANK (fig.) No. 8535361, registered on March 8, 2010, covering in particular financial and banking services in class 36;
European Union trademark MyAXA (word) No. 11690302, registered on February 19, 2014, covering in particular financial and banking services in class 36.
The Complainant also offers its services online, through webpages hosted in particular at <axa.com>, <axabanque.fr>, <axabank.com> or <axabank.be>.
The disputed domain name <mybanqueaxa.com> was registered on February 14, 2019. The Respondent used a privacy service, which the Complainant contacted on three occasions in February and March 2019 in order to request a voluntary transfer of the domain name. No response was received.
After the Complaint was filed, the Registrar notified the Center that the disputed domain name <mybanqueaxa.com> was held by an entity named Axa Banque, with an alleged address in the city of Paris, France. The contact details available refer to an email address with the name Inès Bertier.
The disputed domain name <mybanqueaxa.com> does not resolve to an active webpage, and no information is available on the file regarding the activities of the Respondent.
5. Parties’ Contentions
On the first element of the Policy, the Complainant indicates that the disputed domain name <mybanqueaxa.com> imitates its earlier trademarks AXA, AXA BANK and MyAXA. It highlights in particular that the element AXA is inherently distinctive, and that the insertion of the elements MY and BANK, does not prevent a finding of confusing similarity.
On the second element of the Policy, the Complainant indicates in particular that it “has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks”. It adds that the mere passive holding of the disputed domain name does not amount to a fair use, or a legitimate noncommercial use, of the domain name.
On the third element of the Policy, the Complainant asserts that the disputed domain name <mybanqueaxa.com> was registered and is being used in bad faith. It claims that the Respondent was necessarily aware of the existence of the Complainant’s trademarks, which enjoy a strong reputation. It refers to a prior decision, AXA SA v. Frank Van, WIPO Case No. D2014-0863 (<axacorporatetrust.com>, in which this reputation was expressly acknowledged. Besides, the addition of the words MY and BANQUE in the disputed domain name indicates that the Respondent specifically targeted the Complainant when registering the domain name. On the bad faith use, the Complainant relies on the doctrine of bad faith passive holding. In this respect, it highlights the strong reputation of the trademark AXA, the lack of attempt to use the disputed domain name, the lack of reaction of the Respondent, the use of a privacy service to conceal its identity, and the indication of false contact details, as no entity is incorporated in France under the name AXA BANQUE at the address provided for in Paris.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) the disputed domain name is identical or confusingly similar to 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 Complainant has established the existence of trademark rights over AXA, AXA BANK and MyAXA, in particular with effect in France where the Respondent is located, as indicated above in the factual background.
First, there undoubtedly exists a confusing similarity between the trademark AXA and the disputed domain name <mybanqueaxa.com>. Indeed, with this disputed domain name the English or French speaking public can easily perceive the expression “my banque axa”, within which AXA is distinctive and dominant. The addition of the elements “my”, which is easily understood by the French public, or “banque” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Second, there also exists a confusing similarity between the trademarks AXA BANK, MyAXA and the disputed domain name <mybanqueaxa.com>. In this configuration, not only does the disputed domain name reproduce the distinctive element AXA, but it also contains the words MY and BANQUE. The first one is incorporated in one of the trademarks of the Complainant, and the second one is highly similar to the word BANK which also appears in the trademark rights of the Complainant. These elements do not appear to be a coincidence and do not prevent confusing similarity.
The disputed domain name <mybanqueaxa.com> is therefore confusingly similar to the trademarks of the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
As indicated by the Complainant, the Respondent does not appear to be known by the disputed domain name, or to have been licensed or otherwise authorized by the Complainant to use its trademark in a domain name or otherwise.
On the contrary, the association of the well-known trademark AXA, to the words “my” and “banque”, resulting in the expression “my banque axa”, can only be perceived as a reference to the Complainant’s trademarks and activities. No legitimate fair use of the disputed domain name <mybanqueaxa.com> can be foreseen.
Besides, the Respondent, who chose not to respond to the Complaint, has not made any such claim anyway.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] 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 complainant from reflecting the complainant’s trademark or service 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 [the respondent’s] website or other online 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.
Regarding, first, the registration of the disputed domain name in bad faith: the Panel has no doubt that the Respondent had specifically in mind the Complainant’s trademark AXA when it registered the disputed domain name: the Respondent is domiciled in France, where the Complainant has its more significant activities, and where its trademark AXA is very well-known. Besides, the Respondent has chosen to register the Complainant’s trademark within the expression “my banque axa”, which is an express recognition of the knowledge of this trademark, with a direct reference to one of its activities.
Regarding, second, the use of the disputed domain name in bad faith: as indicated in section 3.2 WIPO Overview 3.0, “The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include the complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa”.
All the circumstances foreseen above are met here:
– The disputed domain name incorporates the well-known trademark AXA, within the expression “my banque axa”. The use of the French word “banque” indicates that the Respondent, which is allegedly based in Paris, specifically targeted the French-speaking public, be it in France or in Belgium where the Respondent operates in particular under the brand AXA BANK;
– The Respondent failed to respond to the various letters sent by the Complainant in February and March 2019. And it decided not to participate in this proceeding;
– The Respondent chose to hide its identity using a privacy service and, additionally, it provided false contact details. The Panel does not believe that the Respondent’s real identity is “Axa Banque”. Behind this curtain is perhaps the individual whose name is mentioned in an email address, a Ms. Inès Bertier;
– Finally, this Panel finds it implausible to anticipate a good faith use of the disputed domain name <mybanqueaxa.com>. Much to the contrary, there exists a real risk of use of this domain name in support of fraudulent activities against the interests and savings of the customers of the Complainant.
Accordingly, the third element set out in paragraph 4(a) of the Policy is also satisfied.
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 <mybanqueaxa.com> be transferred to the Complainant.
Date: November 27, 2019