WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Hamada Hilal
Case No. D2020-3276
1. The parties
The Complainant is AXA SA, France, represented by Selarl Candé - Blanchard - Ducamp, France.
The Respondent is Hamada Hilal, France.
2. The Domain Name and Registrar
The disputed domain name <connect-axa.com> is registered with One.com A/S (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 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 December 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2021.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on January 20, 2021. 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, AXA SA, is one of the world’s leading insurances, saving and asset management company. While having French roots, it is present in nearly sixty countries, serves over a hundred million customers and employs 160.000 people.
The trade mark AXA was first registered in 1984, and it is subject to numerous registrations worldwide. In particular, the following trade marks are relied upon as a basis for this Complaint:
- International trade mark No. 490030 AXA (word) registered on December 5, 1984;
- European Union trade mark No. 373894 AXA (fig.) registered on July 29, 1998;
- European Union trade mark No. 8772766 AXA (word) registered on September 7, 2012;
- French trade mark No. 1270658 AXA (word) registered on January 10, 1984.
The Complainant also operates a number of domain names in order to promote its services, including the domain name <axa.com>.
The disputed domain name was registered by the Respondent on April 2, 2020.
The Complainant indicates that, at least for some time, the disputed domain name was used by the Respondent for phishing purposes. It refers to internal exchanges during which the phishing scheme was described as follows: “The fraudster copied connect.axa.fr page to mislead clients and transfer money away since Friday. The fraudsters have conducted very sophisticated attacks that had to connect to our infrastructure and bypass Dual Identification successfully.” The Complainant further indicates in this respect that its “phishing team has requested the disabling of the Respondent’s website before filing this complaint”, and that “the site is not directly accessible from the web and was notified as being ‘phishing’ a website by the web explorer”.
The disputed domain name currently resolves to an inactive webpage.
5. Parties’ Contentions
The Complainant states in particular the following:
On the issue of the confusing similarity between the trade mark AXA and the disputed domain name, the Complainant indicates that the latter reproduces its early and highly distinctive trade marks.
Regarding the lack of rights or legitimate interests of the Respondent, the Complainant provides a threefold argument: first, it has not licensed or otherwise authorized the Respondent to register the disputed domain name; second, the Respondent is not commonly known by the disputed domain name and it is not remotely associated with the sign AXA; third, the Respondent is not making a fair use of the disputed domain name, having allegedly used it for phishing purposes.
On the registration and use in bad faith, the Complainant submits, first, that its trade mark AXA enjoys a strong reputation internationally and that the Respondent chose the disputed domain name <connect-axa.com> precisely to take unduly advantage of it. Second, the Complainant argues that the addition of the element “connect” in the disputed domain name creates a confusion to the detriment of Internet users. Finally, it refers to the phishing scheme operated by the Respondent, which was disabled by its dedicated service before the filing of the complaint.
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 trade mark 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, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trade mark or a service mark in which it has rights.
It is generally accepted that the test of confusing similarity is quite straightforward and functions primarily as a standing requirement. As indicated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Overview 3.0”), section 1.7, “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
This test is satisfied here, as the disputed domain name <connect-axa.com> does reproduce in its entirety, the famous trade mark AXA of the Complainant. It is worth noting, in particular, that the elements “connect” and “axa” are separated by a hyphen.
Therefore, the Panel finds that the first element of the Policy is satisfied.
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 disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant has sufficiently argued that the Respondent is not commonly known by the disputed domain name, and has not been authorized by the Complainant to register and use the disputed domain name. The Panel also notes that, at least presently, the disputed domain name does not appear to be used. Therefore, a finding of legitimate use by the Respondent cannot be made.
Accordingly and absent specific allegations of the Respondent, the Panel finds that the Complainant has 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 trade mark 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.
The Panel notes the Complainant’s claim of the operation of a fraudulent phishing scheme as described above under section 4 of this decision. However, the Complainant has not provided relevant evidence in this respect in this case. .
In any event, there are sufficient elements in this case to consider that the disputed domain name <connect-axa.com> was registered and is being used - at least passively – in bad faith.
Indeed, the Respondent, who is apparently domiciled in France, could not ignore the reputation of the trade mark AXA of the Complainant. This presumption of knowledge is confirmed by the addition in the disputed domain name of the element “connect”, which clearly refers to the access online to the services of the Complainant. Internet users will believe that it hosts a webpage that enables clients to access their services, be they insurance contracts, accounts, investments, etc. The combination of the words “connect” and “axa” creates therefore a likelihood of confusion, which cannot be avoided. One cannot contemplate a fair use of the disputed domain name. In AXA SA v. Duffet Orlene, WIPO Case No. D2020-1102 the domain names <web-axaconnect.com> and <webaxaconnect.com>, the panel considered that “the abovementioned elements, together with the fact that the Respondent added the terms ‘web’ and ‘connect’ to the ‘AXA’ well-known trademark in the disputed domain names, which can be considered as referring to Complainant’s official websites on which the Complainant’s customers could log in to their personal accounts, are sufficient to demonstrate that the disputed domain names have been registered and used in bad faith”.
Finally, the Respondent has apparently provided false contact details when registering the disputed domain name (incorrect email and physical addresses).
Accordingly, the Panel finds that the third criteria 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 <connect-axa.com> be transferred to the Complainant.
Date: February 3, 2021