WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA SA v. Perfect Privacy, LLC / Julien Dubois
Case No. D2017-1702
1. The Parties
The Complainant is AXA SA of Paris, France, represented by Selarl Candé - Blanchard - Ducamp, France.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“United States”) / Julien Dubois of Nice, France.
2. The Domain Name and Registrar
The disputed domain name <axa-banque-assurance.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2017. On September 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2017, 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 18, 2017, 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 19, 2017.
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 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2017.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on October 25, 2017. 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 is one of the biggest insurance companies in the world and the trade name AXA was created in 1985. The AXA group is present in 64 countries and employs 165.000 people worldwide.
The Complainant relies on the following trademarks:
- International Trademark Registration AXA No. 490030, registered on December 5, 1984, in classes 35, 36 and 39;
- European Union Trademark Registration AXA (figurative) No 373894, filed on August 28, 1996, and registered on July 29, 1998, in classes 35 and 36;
- European Union Trademark Registration AXA No. 008772766, filed on December 21, 2009, and registered on September 7, 2012, in classes 35 and 36;
- United States Trademark Registration AXA No 2072157 (figurative), filed on August 5, 1994, and registered on October 10, 1995, in class 36;
- French Trademark Registration AXA No 1270658 filed on January 10, 1984, and in force since said date, in classes 35, 36 and 42;
- French Trademark Registration AXA BANQUE No 1282656, filed on August 7, 1984, and in force since said date, in, inter alia, classes 35 and 36;
- French Trademark Registration AXA ASSURANCES No 1282654, filed on August 7, 1984, and in force since said date, in, inter alia, classes 35 and 36.
These trademarks are valid and are protected for “insurance and finance” services.
The Complainant also relies on the domain names <axa.net>, <axa.info> and <axa.fr> respectively registered in 1997, 2001 and 1996.
The domain name <axa.com>, registered in 1995, is in the name of another entity of the AXA group.
The domain names <axa-banque.fr> and <axabanque.fr>, respectively registered in 1998 and 1999, are in the name of the company AXA BANQUE, which is also belonging to the AXA group.
The disputed domain name was registered on August 15 2015, using a Privacy shield service. It does not resolve to any website.
5. Parties’ Contentions
The Complainant relies on the reputation of the AXA trademark and asserts that the disputed domain names entirely reproduce this coined trademark, adding the descriptive terms “banque” and “assurance”.
These descriptive terms designate the activity of the Complainant and the services for which the AXA trademark is protected.
The disputed domain name is therefore confusingly similar with the AXA trademark, as well as with the French AXA BANQUE and AXA ASSURANCE trademarks.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name, since he has no prior rights, has no relation with the Complainant and has never be authorized to use the AXA trademark
Moreover he is passively holding the disputed domain name, what cannot constitute a fair use.
Concerning bad faith registration, the Complainant explains that, given the reputation of the AXA trademark, the Respondent was well aware of the Complainant’s trademark rights when he decided to register the disputed domain name. The addition of the descriptive terms “banque” and “assurance” / ”bank” and “insurance” deliberately attempts to create a confusion with the Complainant’s trademark and services as to the source, sponsorship, affiliation, or endorsement of the website connected with the disputed domain name.
The Complainant explains that the contact details mentioned on the WhoIs are incomplete and false: the name of the street at “12 rue” is not provided and the postal code for Nice is 033200. This postal code using 6 numbers does not exist. The postal code for Nice is not 033200, but 06000.
The Complainant asserts that the passive holding of the disputed domain names is equivalent to bad faith use and therefore relies on Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000−0003, explaining that the requested criteria are met to prove the bad faith use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has clearly established its registered rights in the AXA trademark, as well as in the French AXA BANQUE and AXA ASSURANCE trademarks. The Panel also recognizes that the AXA trademark is a well-known trademark.
The disputed domain name <axa-banque-assurance.com> is composed of the Complainant’s AXA trademark, to which the terms “banque” and “assurance” are added.
It can also be considered that the disputed domain name <axa-banque-assurance.com> is composed of the Complainant’s AXA BANQUE or AXA ASSURANCE trademarks.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The condition of paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
As set forth by paragraph 4(c) of the Policy, 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 the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s absence of rights or legitimate interests in the disputed domain name.
The Respondent did not respond to the Complaint. Consequently he did not provide any evidence or circumstances to establish that he has rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy.
The Respondent has not been licensed or authorized to use the AXA trademark or the AXA BANQUE and AXA ASSURANCE trademarks to register the disputed domain name.
The Respondent did not make a fair or noncommercial use of the disputed domain name. In addition, the Respondent used a privacy shield service to register the disputed domain name and provided a false address in the WhoIs data.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name. It provides that:
“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 on-line 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.”
The Complainant has demonstrated the well-known character of its AXA trademark.
The Respondent, who is domiciled in France, could not ignore the Complainant’s rights in the AXA trademark when he registered the disputed domain name.
The Panel finds that the disputed domain name was registered in bad faith with the Complainant in mind, to make a commercial gain and disrupting the Complainant’s activity.
It has long been generally held in previous UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark, without obvious actual or contemplated good faith use, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, supra).
The Panel finds that the criteria set out in the Telstra Corporation Limited v. Nuclear Marshmallows, supra, on passive holding are met in view of the following circumstances:
(i) the Complainant’s trademark has a strong reputation and is well-known;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the domain name;
(iii) the Respondent has taken active steps to conceal his true identity;
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of his registration agreement; and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
Moreover, the Panel notes that any registered domain name enables the registrant to create email addresses. In the present case, the disputed domain name might be used for creating email addresses and notably for spamming or phishing purposes, to obtain banking and personal data from the Complainant’s customers and to misuse these data, especially considering the similarities between the disputed domain names and the domain names <axa-banque.fr> and <axabanque.fr>, registered by the AXA group.
In light of these particular circumstances, the Panel is of the opinion that the Respondent’s passive holding of the disputed domain name satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name “is being used in bad faith” by the Respondent.
Therefore, the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.
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 <axa-banque-assurance.com> be transferred to the Complainant.
Date: November 8, 2017