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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AXA SA v. Duffet Orlene

Case No. D2020-1102

1. The Parties

The Complainant is AXA SA, France, represented by SELARL CANDÉ - BLANCHARD - DUCAMP, France.

The Respondent is Duffet Orlene, France.

2. The Domain Names and Registrar

The disputed domain names <web-axaconnect.com> and <webaxaconnect.com> are registered with One.com A/S (the “Registrar”).

3. Procedural History

The Complaint related to the disputed domain names and other domain names <connect-axa.com>, <connectaxa.com>, <axawebn-connect.com> and <axaconnect-web.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2020. On May 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names and the other domain names <connect-axa.com>, <connectaxa.com>, <axawebn-connect.com> and <axaconnect-web.com>. On May 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing the registrants and contact information for the disputed domain names and <connect-axa.com>, <connectaxa.com>, <axawebn-connect.com> and <axaconnect-web.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 13, 2020 providing the registrants and contact information disclosed by the Registrar, and requesting the Complainant to submit an amended Complaint or file a separate Complaint for any domain name for which it was not possible to demonstrate that all domain names are under common control. The Complainant filed an amendment to the Complaint limiting the Complaint to the disputed domain names on May 14, 2020. On May 26, 2020, the Center confirmed that the administrative proceeding of the domain names <connect-axa.com>, <connectaxa.com>, <axawebn-connect.com> and <axaconnect-web.com> was terminated.

The Registrar also indicated that the language of the registration agreement for the disputed domain name <webaxaconnect.com> is English and the language of the registration agreement for the disputed domain name <web-axaconnect.com> is French. The Complaint was filed in English. The Center sent an email communication to the Complainant on May 26 2020, inviting the Complainant to provide sufficient evidence of an agreement between the Parties, a Complaint translated into the language of the corresponding registration agreements, or a request for English to be the language of proceedings with respect to the domain name <web-axaconnect.com>. The Respondent was also invited to submit its comments. The Complainant filed a request for English to be the language of proceedings on May 27, 2020. The Respondent did not submit any arguments.

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 in English and in French, and the proceedings commenced on June 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2020.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on July 7, 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, AXA SA, is the holding company of the AXA Group, which is a world leader in insurance, saving and asset management, serving 108 million customers and employing 160 000 people over 57 countries.

The trade name AXA was introduced in 1985 and AXA is traded on the Paris Stock Exchange since 1988 and listed on the New-York Stock Exchange since 1996.

The Complainant is the owner of several trademark registrations:

- International word trademark AXA Number 490030 registered on December 5, 1984 in classes 35, 36 and 39, duly renewed;
- United States of America figurative trademark AXA Number 2072157 registered on August 5, 1994 in class 36, duly renewed;
- European Union figurative trademark AXA Number 000373894 registered on August 28, 1996 in classes 35 and 36, duly renewed;
- European Union word trademark AXA Number 008772766 registered on September 7, 20012 in classes 35 and 36, duly renewed;
- French trademark AXA Number 1270658 registered on January 10, 1984 in classes 35, 36 and 42, duly renewed.

The Complainant is also the owner of several domain names reproducing the AXA trademark:

- <axa.com>, registered on October 23, 1995;
- <axa.net>, registered on November 1, 1997;
- <axa.info>, registered on July 30, 2001;
- <axa.fr>, registered on May 20, 1996.

The disputed domain names <webaxaconnect.com> and <web-axaconnect.com> were registered on April 7 and 8, 2020 respectively and, at the time of the decision are inactive.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First of all, the Complainant asserts that the disputed domain names are confusingly similar to prior trademarks of the Complainant, pointing out that the disputed domain names wholly reproduce the AXA trademark, which as itself has no particular meaning and is therefore highly distinctive.

The Complainant, underlining that the AXA trademark is well known around the world in the field of insurance and financial services as already stated in previous UDRP decisions, considers that the addition of the words “connect” and “web” is not sufficient to prevent the public from believing that the disputed domain names are other official websites of the Complainant allowing its customers to log in to their personal accounts.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names, since the Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including its trademarks.

Moreover, the Complainant argues that the Respondent has not been commonly known by the disputed domain names or even associated with the name “axa”, whereas the AXA trademark is well known.

Additionally, the Complainant asserts that the Respondent is not making a fair use of the disputed domain names without intent for commercial gain and is misleadingly diverting consumers, using the disputed domain names for phishing purposes, targeting the Complainant’s customers.

Thirdly, the Complainant considers that the disputed domain names were registered and used in bad faith, since the Respondent was obviously aware of the Complainant’s trademarks at the time of the registration of the disputed domain names, given the worldwide reputation of the Complainant’s trademarks that has already been recognized in previous UDRP decisions.

The Complainant claims that the Respondent is engaged in a phishing scheme to divert the Complainant’s customers to the Respondent’s website by proposing a fake website that is similar to the Complainant’s one, and that the Complainant’s team has requested the disabling of this fake website before the filing of this Complaint.

The Complainant finally indicates that the websites to which the disputed domain names used to point had been notified as being phishing websites, reminding that phishing attacks constitute proof of both bad faith registration and use.

Given all these elements, the Complainant requests that the disputed domain names be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the proceedings

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise. The Registrar indicated that the language of the registration agreement for the disputed domain name <webaxaconnect.com> is English, and that the one of the registration agreement for the disputed domain name <web-axaconnect.com> is French.

The Complainant has requested English to be the language of the proceeding. The Complainant considers that even if the Respondent has his address in France, the fact that the Respondent has registered one of the disputed domain names using a registration agreement written in English is sufficient to demonstrate that the Respondent has a good understanding of this language, that thus should remain the language of the proceeding.

UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement.

Therefore, taking into consideration the Complainant’s argument, added to the facts that having to translate the Complaint in French would lead to extra-costs for the Complainant and that the Respondent did not comment on the language of the proceedings and did not submit any response, the Panel decides that the language of the proceedings is English.

B. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights in the AXA trademark.

Then, the Panel notices that the disputed domain names are both composed of (i) the AXA trademark in its entirety , to which have been added the terms “web” and “connect”, with a slight difference between the two disputed domain names, consisting in a hyphen separating the terms “web” and “axaconnect” within one of them, and (ii) the generic Top-Level Domain (“gTLD”) “.com”.

The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. 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 the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

Moreover, the Panel concurs with the opinion of several prior UDRP panels which have considered that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive or meaningless, would not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0).

Regarding the disputed domain names, the Panel finds that the addition of the terms “web” and “connect” to the AXA distinctive trademark does not exclude confusing similarity.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain names are confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain names, since there is no relationship whatsoever between them, the Respondent having never been licensed or otherwise permitted by the Complainant to use the “AXA” sign or to register any domain name including it, and since the Respondent has not been commonly known by the disputed domain names or associated with the well-known AXA trademarks.

Moreover, it appears that the disputed domain names have been used for phishing purposes, which does not represent either a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain names.

Finally, the Respondent did not reply to the Complainant’s contentions.

Therefore, the Panel considers that the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain names.

D. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(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; or

(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 the respondent’s website or location.”

First of all, the Panel notes that the disputed domain names were registered long after the registration of the AXA trademarks, that have furthermore been recognized as well known in previous UDRP decisions (see AXA SA v. Frank Van, WIPO Case No. D2014-0863).

Thus, the Panel finds that the Respondent knew, or should have known, at the registration stage, that the disputed domain names would be confusingly similar to the Complainant’s AXA trademarks, given the reputation of the Complainant’s trademark and the fact that the disputed domain names reproduce the AXA trademark in its entirety. The addition of the terms “web” and “connect” are likely to lead Internet users to think that they are facing official websites on which they can log in to their personal accounts.

According to previous UDRP decisions, “the registration of a domain name that is identical or confusingly similar (…) to a famous trademark by an unaffiliated entity can by itself create a presumption of bad faith” (see Section 3.1 of the WIPO Overview 3.0).

Furthermore, the Panel notes that the Respondent has not submitted any reply to the Complaint.
The Panel is not able to confirm that the Respondent is engaged in a phishing scheme to divert the Complainant’s customers by proposing a fake website that is similar to the Complainant’s one, as claimed by the Complainant, since the Complainant has not provided evidence in this regard to support such allegations. The Panel notes that the disputed domain names are inactive at the time of this decision.

Nevertheless, the Panel finds 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.

Consequently, the Panel considers that the disputed domain names have been registered and used in bad faith according to Policy, paragraph 4(a)(iii).

7. Decision

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 names <web-axaconnect.com> and <webaxaconnect.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: July 21, 2020

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