WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Contact Privacy Inc. Customer 1243937279 / Franck Duprey, AXAASSURANCE
Case No. D2020-0269
1. The Parties
The Complainant is AXA SA, France, represented by Selarl Candé - Blanchard - Ducamp, Paris, France.
The Respondent is Contact Privacy Inc. Customer 1243937279, Canada / Franck Duprey, AXAASSURANCE, United States of America.
2. The Domain Name and Registrar
The disputed domain name <axaassurance.biz> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2020. On February 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 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 February 18, 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 February 19, 2020.
The Center sent an email communication to the parties on February 18, 2020, in English and French, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is French. The Complainant submitted a request for English to be the language of the proceeding on February 19, 2020. The Respondent did not submit any communication regarding the language of the proceeding.
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 February 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2020.
The Center appointed Daniel Peña as the sole panelist in this matter on April 1, 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.
The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be English. Although the language of the registration agreement is French, the Panel notes the circumstances of this case, in particular, the location of the Respondent, the Respondent’s absence of objections or comments to the Center’s communication about the language of the proceedings, even though communicated in French and in English, and the absence of response to the Complaint. The Panel notes that the Respondent was given the opportunity to respond in English or French and that this opportunity remained unused by the Respondent. Consequently, the Panel is convinced that the Respondent will not be prejudiced by the Decision being rendered in English.
4. Factual Background
The Complainant is the holding company of the AXA Group. The Complainant employs 171,000 people worldwide and is a leader in insurance, saving and asset management, serving 105 million customers globally.
The AXA Group is present in 64 countries and does business in several geographic regions and markets, notably across Europe, Africa, North America, and Asia-Pacific. The trade name AXA was introduced in 1985.
The Complainant has been listed on the Paris Stock Exchange since 1988 and on the New York Stock Exchange since 1996.
The AXA Group operates in three major lines of business: property and casualty insurance, life insurance and savings, and asset management, serving both individuals and corporations.
The Complainant owns a number of trademarks in jurisdictions around the world for the term AXA, including the following:
- United States of America trademark No. 2072157 for AXA (figurative), registered on June 17, 1997, in class 36;
- International trademark No. 490030 for AXA, registered on December 5, 1984, in classes 35, 36, and 39;
- European Union Trade Mark No. 373894 for AXA (figurative), registered on July 29, 1998, in classes 35 and 36;
- European Union Trade Mark No. 8772766 for AXA, registered on September 7, 2012, in classes 35 and 36; and
- French trademark No. 1270658 for AXA, registered on January 10, 1984, in classes 35, 36, and 42.
The Complainant also owns and operates numerous domain names incorporating the term “axa”, including <axa.com>, registered on October 23, 1995, <axa.net>, registered on November 1, 1997, <axa.info>, registered on July 30, 2001, and <axa.fr>, registered on May 20, 1996.
The disputed domain name was registered on February 18, 2019. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant asserts that the AXA mark is a well-known mark that has been registered in numerous jurisdictions prior to the registration of the disputed domain name.
The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
The Complainant argues that the Respondent lacks any rights or legitimate interests in the disputed domain name because the Respondent (a) does not own a trademark registration or application for any AXA mark, (b) is not authorized or licensed by the Complainant to use the AXA mark, (c) is not commonly known by the disputed domain name, and (d) is not making a legitimate business noncommercial or fair use of the disputed domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and are being used in bad faith.
Considering these requirements, the Panel rules as follows:
A. Identical or Confusingly Similar
The Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
The Respondent’s incorporation of the Complainant’s trademark AXA in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks.
The addition of the dictionary term “assurance” to the Complainant’s mark does not prevent a finding of confusing similarity. The addition of other terms (whether descriptive, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. The nature of such term(s) may however bear on assessment of the second and third elements. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain “.biz” to the disputed domain name does not prevent a finding of confusing similarity for purposes of the Policy (see Carlsberg A/S v. Xu Guo Xing, WIPO Case No. D2017-0301; Philip Morris USA Inc. v. Shimei Wang, WIPO Case No. D2016-2517; Livelle v. Martijn Noordermer, WIPO Case No. D2016-2524).
The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.
Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name.
The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Respondent by not answering to the Complaint did not argue why it incorporates in the disputed domain name not only the registered trademark AXA but also the expression “assurance” that corresponds in French language to one of the most recognized commercial activities of the Complainant. Such composition cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1).
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.
In the Panel’s view a finding of bad faith may be made where the Respondent “knew or should have known” of the trademark prior to registering the disputed domain name. In this case, the worldwide commercial recognition and notoriety of the Complainant’s marks is such that the Respondent, must have had knowledge of the mark AXA before registering the disputed domain name.
As to use in bad faith, the Complainant says that, the disputed domain name has not been put to any use in connection with an active website. It has long been held in UDRP decisions that the passive or inactive holding of a domain name that incorporates a registered trademark, without a legitimate purpose, may indicate that the domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574. The WIPO Overview 3.0, at section 3.3, describes the circumstances under which the passive holding of a domain name will be considered to be in bad faith: “While panelists 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 Andrey Ternovskiy dba Chatroulette v. WhoisGuard Protected, WhoisGuard, Inc. / Armando Machado, WIPO Case No. D2018-0082.
In this regard, the Panel notes the worldwide commercial recognition of the Complainant’s AXA mark, the fact that the Respondent has failed to provide any evidence of actual or contemplated good faith use, and the implausibility of any potential good faith use to which the disputed domain name may be put to use in these circumstances.
The Panel finds that the evidence produced in this case taken as a whole clearly supports a finding that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Panel concludes that the requirement of paragraph 4(a)(iii) of the Policy has been met.
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 <axaassurance.biz> be transferred to the Complainant.
Date: April 15, 2020