WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Mohamed Awad
Case No. D2020-0066
1. The Parties
The Complainant is AXA SA, France, represented by Selarl Candé Blanchard Ducamp Avocats, France.
The Respondent is Mohamed Awad, Egypt.
2. The Domain Name and Registrar
The disputed domain name <insuranceaxa.net> 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 January 13, 2020. On January 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2020, 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 January 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2020.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on February 21, 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.
4. Factual Background
The Complainant asserts that the AXA Group has a strong, long-standing history in the field of insurance services, and its roots go back to the 18th century. 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.
Further, since 1988 AXA is traded on the Paris Stock Exchange and in 1996 it became listed on the New York Stock Exchange. Employing 171,000 people worldwide, AXA is a world leader in insurance, savings and asset management, serving 105 million customers. The AXA Group is famous for its numerous activities in three major lines of business: property and casualty insurance, life insurance and savings, and asset management. The AXA group is present in 64 countries and does business in diversified geographic regions and markets across Europe, Africa, North America and Asia-Pacific.
Presently, AXA SA is the holding company of the AXA Group. The awareness of the trademark AXA is wide (as demonstrated with the evidence submitted as Annex 6 of the Complaint).
The Complainant has secured ownership of numerous trademark registrations in many jurisdictions that include the house mark AXA as detailed in the copies of said trademark registrations included in Annex 10 through Annex 14, attached to the Complaint. For example, international trademark No. 490030, registered December 5, 1984.
The Complainant is also the owner of the following domain names, which reproduce the AXA trademark:
- <axa.com> registered on October 23, 1995;
- <axa.net> registered on November 01, 1997;
- <axa.info> registered on July 30, 2001; and
- <axa.fr> registered on May 20, 1996.
This disputed domain name <insuranceaxa.net> was registered on April 17, 2019. The disputed domain name resolves to a registrar parking page.
5. Parties’ Contentions
The Complainant states that the disputed domain name <insuranceaxa.net> is identical or confusingly similar to the trademark AXA in which the Complainant has rights.
The Complainant owns several trademarks including the term AXA, such as the following:
- United States of America trademark AXA (design mark) No. 2,072157 filed on August 5, 1994, and registered on June 17, 1997, in class 36 duly renewed.
- International trademark AXA No. 490,030 registered on in December 5, 1984, in classes 35, 36, and 39, duly renewed.
- European Union trademark AXA No. 373,894 filed on August 28, 1996, and registered on July 29, 1998 in classes 35 and 36, duly renewed;
- European Union trademark AXA No. 008,772,766 filed on December 21, 2009, and registered on September 7, 2012 in classes 35 and 36;
- French trademark AXA No. 1,270,658 registered on January 10, 1984, in classes 35, 36 and 42, and duly renewed; and,
- Egyptian trademark AXA REDEFINING / INSURANCE (design mark) No. 322,578, filed on September 1, 2015, and registered January 19, 2017 in class 36.
The disputed domain name is identical or confusingly similar to the trademark AXA, owned by the Complainant, in accordance with paragraph 4(a)(i) of the Policy.
The disputed domain name <insuranceaxa.net> reproduces entirely the trademark AXA, which as itself has no meaning and is therefore highly distinctive. Accordingly, the disputed domain name is identical to the Complainant’s trademark, apart from the addition of the word “insurance”, and that difference is not enough to prevent the public from being confused. Associated with the term “insurance”, the disputed domain name undoubtedly refers to AXA’s activities in the field of insurance services.
The Complainant also states that the Respondent has no rights or legitimate interests in the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. The Complainant never authorized the Respondent to use its trademark, the Respondent is not commonly known by the disputed domain name, and the Respondent is not making a fair use of the disputed domain name.
Lastly, noting the strength of AXA trademark, adding of its name and the parking of the disputed domain name, allow to conclude that the disputed domain name was registered and is being used in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel considers that the information provided by the Complainant attests that the disputed domain name <insuranceaxa.net> can be considered confusingly similar to the Complainant’s trademarks AXA and AXA REDEFINING / INSURANCE.
In this regard, the Panel agrees with the Complainant’s contentions that the addition to the trademark AXA of the dictionary term “insurance” does not distinguish the disputed domain name from the Complainant’s trademark.
Furthermore, the disputed domain name <insuranceaxa.net> reproduces almost identically the AXA REDEFINING / INSURANCE trademark. The only difference being the deletion of the word “REDEFINING” and the inversion of the terms AXA and INSURANCE. As the disputed domain name incorporates this sign almost entirely, it is established that the disputed domain name is confusingly similar to it.
Accordingly, this Panel finds that the disputed domain name <insuranceaxa.net> is confusingly similar to the Complainant’s trademarks AXA and AXA REDEFINING / INSURANCE. Therefore, this requisite has been satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint, and the record is void of any possible rights or legitimate interests he may have in the disputed domain name. Neither has the Respondent refuted the allegations made by the Complainant. Thus, the Panel shall decide based on the statements and documents submitted and in accordance with the Policy.
In this sense, the Panel has not found the concurrence of any of the circumstances mentioned by paragraph 4(c) of the Policy. Quite the contrary, the Complainant has effectively demonstrated to be the holder of registered trademarks and associated domain names, which are prior to the Respondent’s registration of the disputed domain name, and that it has not licensed the use or exploitation of the AXA and AXA REDEFINING / INSURANCE trademarks to the Respondent.
The Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its AXA and AXA REDEFINING / INSURANCE trademarks in a domain name or otherwise. Moreover, the Respondent cannot credibly claim to be commonly known by the disputed domain name, or a name corresponding to the disputed domain name, within the meaning of paragraph 4(c)(ii) of the Policy, given the Complainant’s notoriety.
There is no relationship whatsoever between the involved parties. Thus, the Respondent has no rights or legitimate interests to justify the use of the Complainant’s trademarks. The Respondent has clearly adopted the Complainant’s trademark AXA for its own use and incorporated it into the disputed domain name without the Complainant’s authorization.
Therefore, in view of the unrebutted prima facie case made out by the Complainant, the Panel considers that the Complaint has fulfilled the second element required by the Policy.
C. Registered and Used in Bad Faith
This third element requires the Complainant to prove that (1) the disputed domain name was registered in bad faith and (2) is being used in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith.
The disputed domain name incorporates the Complainant’s trademarks AXA and AXA REDEFINING / INSURANCE. The disputed domain name consists of the Complainant’s trademark AXA with the addition of the word “insurance”; which is also included in the Complainant’s trademark AXA REDEFINING / INSURANCE.
The Panel finds the Respondent must have had knowledge of the Complainant’s trademarks and its rights therein at the time the Respondent registered the disputed domain name. These findings are based on: (i) the Complainant’s trademarks having a strong reputation and being widely known in many countries in the field of insurance services; (ii) the disputed domain name incorporates the dictionary word “insurance” and is clearly confusingly similar to the Complainant’s trademarks; and (iii) the above finding of the Respondent having no rights or legitimate interests in the disputed domain name.
Further, prior UDRP panels have repeatedly recognized the strength and renown of the Complainant’s trademark AXA, as for example in AXA SA v. Frank Van, WIPO Case No. D2014-0863.
Finally, with reference to the passive holding of the disputed domain name, given the similarity of the disputed domain name to the Complainant’s AXA and AXA REDEFINING / INSURANCE trademarks, and in light of the Complainant’s long-standing use of the same, the Panel agrees that the Respondent’s motives to register the disputed domain name can only have been to create a likelihood of confusion with the Complainant’s mentioned trademarks.
Passive holding may be considered, in certain circumstances, as use in bad faith. On this point, in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel held that:
“The significance of the distinction is that the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. It is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith. […] That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behavior. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith”.
The Respondent in this case is not interested in actively using the disputed domain name, as the litigious site is inactive. More so, it is used as a parking site displaying a link redirecting to the Registrar GoDaddy’s website in order to purchase the disputed domain name.
According to the Policy paragraph 4(b)(i), the above circumstances (among others) are deemed to provide evidence of bad faith in registering and using the disputed domain name, in that they provide evidence of:
(i) circumstances indicating that [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 trade mark or service mark, 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.
Consequently, for all the above reasons, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(iii) of the Policy.
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 <insuranceaxa.net> be transferred to the Complainant.
Rodrigo Velasco Santelices
Date: March 6, 2020