WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AXA SA v. WhoisGuard Protected, WhoisGuard, Inc. / Jurgita Ozelyte, AXATECHVIEWOU LTD

Case No. D2021-0959

1. The Parties

The Complainant is AXA SA, France, represented by Cande Blanchard Ducamp Avocats, France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. / Jurgita Ozelyte, AXATECHVIEWOU LTD, United Kingdom (“UK”).

2. The Domain Name and Registrar

The disputed domain name <axaimbest.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2021. On March 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 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 April 7, 2021 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 April 7, 2021.

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 April 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2021.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on May 5, 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 is the holding company of the AXA group, which roots go back to the 18th century, having a strong, long-standing history in the field of insurance and that after a succession of mergers, acquisitions and name changes, adopted the trade name AXA in 1985. Since 1988, AXA is traded on the Paris Stock Exchange, and in 1996, it became listed on the New York Stock Exchange. Presently, the Complainant’s group is present in 54 countries and employs 153,000 people, providing insurance, saving and asset management products and services. The Complainant’s group includes the company AXA Investment Managers, which operates in the field of global assets investment and management.

The Complainant holds numerous trademark registrations in many jurisdictions that comprise the term “axa”, including the following:

- International Trademark Registration No. 490030, AXA, word, registered on December 5, 1984, in Classes 35, 36 and 39;

- European Union Trade mark Registration No. 373894, AXA, figurative, registered on July 29, 1998, in Classes 35 and 36;

- European Union Trademark Registration No. 8772766, AXA, word, registered on December 21, 2009, in Classes 35 and 36; and

- UK Trademark Registration No. UK00001272911, AXA, word, registered on September 30, 1988, in Classes 35 and 36, (collectively the “AXA mark”).

Prior decisions under the Policy have recognized the well known character of the AXA mark¹.

The Complainant is also the owner of various domain names comprising the AXA mark, including <axa.com> (registered on October 23, 1995) and <axa.fr> (registered on May 20, 1996), which are linked to its corporate websites.

The company AXA Investment Managers uses the domain names <axa-im.fr> (registered on February 14, 1999) and <axa-im.com> (registered on December 29, 1997) for its corporate websites.

The disputed domain name was registered on March 4, 2021, and it is currently redirecting to a parked website containing various links to third parties’ websites in different sectors, including financial. According to the evidence provided by the Complainant, the disputed domain name was linked to a website, in English language, allegedly offering “Marketing Solutions” (such as advertising strategies, website promotion, search engine optimization (“SEO”), reputation management, etc.), under a heading that included the terms “AXAIM LTD”. This website included a copyright at the bottom dated 2023, an address in Sheffield (UK) but a telephone number with a different country code (in Lithuania), and the contact details included in this website further included a Gmail address. This website did not included any section related to its privacy policy or its general terms and conditions.

The Respondent’s company AXATECHVIEWOU LTD has been registered in the UK since June 5, 2020. On June 17, 2020, the Complainant applied for its change of name before the UK Company Names Tribunal. This proceeding was notified to the Respondent’s company on July 27, 2020, not filing any defense, and, on March 18, 2021, the UK Company Names Tribunal condemned this company to change its name. The Complainant has further filed an application for the change of the name of the company mentioned in the Respondent’s website (AXAIM, LTD), which is still pending.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

The term “axa” has no particular meaning being highly distinctive, and the AXA mark is well known around the world in the field of insurance and financial services.

The disputed domain name incorporates the AXA mark in its entirety, adding the letters “im” that may refer to the acronym of the company AXA Investment Managers increasing the likelihood of confusion, which does not prevent the addition of the term “best”. The association of the term “best” and the acronym “im” undoubtedly refers to AXA and AXA Investment Managers, which operates in the field of investment.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademark, there is no relationship between the Parties, and the Respondent is not commonly known by the terms included in the disputed domain name. The company mentioned on the Respondent’s website (AXAIM LTD) was incorporated on August 13, 2020 in the UK, and the Complainant filed immediately an action before the UK Company Names Tribunal to force the change of this company name, not filing the Respondent any defense in these proceedings. On February 10, 2021, the UK Company Names Tribunal notified the Respondent its right to request a hearing, however, without doing so, it registered the disputed domain name in bad faith. Furthermore, the Respondent’s website was suspended a few days after the disputed domain name registration. There is no evidence of the use of the disputed domain name in connection with a bona fide offering off goods or services, as the Respondent’s website contains only three pages, with various errors, and it may have provided false contact details, not looking genuine and professional. This website further includes an address that is used by various other companies’ headquarters.

Due to the reputation and distinctiveness of the AXA mark, and the similarity of the disputed domain name with the acronym of the company AXA Investment Managers, it is clear that the Respondent chose and registered the disputed domain name in bad faith targeting the AXA mark with the intention to mislead Internet users. The Respondent has not filed any defense before the UK Company Names Tribunal in relation to the Complainant’s actions to force the change of its companies’ names, and this Tribunal has already condemned the Respondent to change the name of one of its companies. The Respondent’s website did not look like a genuine professional website for a marketing company containing obvious errors and inconsistencies, and it is no longer being accessible. Further circumstances that corroborate the Respondent’s bad faith are the use of a privacy proxy registration service, and the fact that the Parties maintained an exchange of emails prior to the Complaint, where the Respondent showed its indifference to the Complainant’s requests. Furthermore, the Respondent’s company name Axatechviewou Ltd. was used for fraudulent purposes related to a domain name incorporating the AXA trademark (where the domain name was used in phishing scams, impersonating the Complainant to advertise LIBRA cryptocurrency products), being that domain name the object of another proceeding under the UDRP resulting in the transfer of the domain name. The Complainant also refers to various UDRP cases regarding the domain names <axatechviewou.com>, <techviewouaxa.com>, <techviewou-axa.com>, <axatechviewou-ltd.com>, <axatechviewou.com>, and <axatechview.com>. ² The disputed domain name was registered and used in bad faith, intentionally attempting to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant and its trademark, and it disrupts the Complainant’s business.

The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.

A. Identical or Confusingly Similar

The Complainant indisputably has rights in the registered trademark AXA, both by virtue of its various trademark registrations and as a result of its global goodwill and reputation.

The disputed domain name incorporates the AXA mark adding the letters “im” (which, together with the mark AXA, form the acronym of the Complainant’s affiliated company AXA Investment Managers “AXA IM”), and the term “best” (which together with the letters “im”, are phonetically equivalent to the word “invest”). The gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. The AXA mark is recognizable within the disputed domain name. See sections 1.7, and 1.11, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).

Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.

The Complainant’s assertions and evidence effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case.

However, the Respondent has not replied to the Complainant’s contentions, not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as a right or legitimate interest in the disputed domain name.

In the absence of any Response, the Panel notes that the disputed domain name was used, according to the evidence provided by the Complainant, in connection to a website that included in its heading the company “AXAIM, LTD.”. This website allegedly offered marketing services, included various obvious errors and did not comply with the ecommerce regulations, not including any privacy policy and general terms and conditions’ sections, and it has been apparently taken down one month after the registration of the disputed domain name. The disputed domain name is currently redirecting to a parked website that displays various promotional pay-per-click (“PPC”) links to third parties’ websites, some of them related to financial services, which compete with the Complainant and its associated company AXA Investment Managers.

The Panel further notes that, the companies indicated in the Respondent’s website and in the Registrar verification (Axaim, Ltd. and Axatechviewou Ltd.), include the term “axa”. However, according to the evidence provided by the Complainant, these companies were incorporated in the UK only recently, the Complainant filed legal actions to force the change of their names short after their incorporation, not filing these companies any defense against these actions and being one of these companies (Axatechviewou Ltd.) already condemned to change its name.

In order to appreciate that a respondent is commonly known by the terms corresponding to the disputed domain name, concrete credible evidence supporting this fact should be produced by the respondent. However, the Respondent has not refuted the Complainant’s contentions and evidence. See section 2.3, WIPO Overview 3.0.

Therefore, there is no evidence showing that the Respondent is commonly known by the disputed domain name, no indication of any bona fide offering of goods or services under the disputed domain name, and no indication of any legitimate noncommercial or fair use of the disputed domain name.

In addition, the Panel notes that Complainant submitted evidence of a fraudulent email purported to be sent from the company “Axa Techviewou limited” though an email address connected to the domain name <axa-techviewou.com>, where the fraudulent emails were reproducing the Complainant’s logo. The panel in AXA SA v. Jean Ponto, WIPO Case No. D2021-0704 ordered the transfer of the domain name <axa-techviewou.com> to the Complainant.

Furthermore, a core factor in assessing potential fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5.1, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety, adding terms that may point to the Complainant and its associated company AXA Investment Managers, which acronym is AXA IM and operates in the field of investment management. Therefore, the Panel considers that there is a risk of implied affiliation. Additionally, the use by the company AXA Investment Managers of domain names consisting of its acronym, like <axa-im.fr> and <axa-im.com>, in connection to its corporate websites, may increase the likelihood of confusion or affiliation.

All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case, and the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

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

The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.

The Panel considers that the cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:

(i) the disputed domain name incorporates the AXA trademark adding the letters “im” and the term “best”, creating the impression that it refers to the Complainant or its associated company AXA Investment Managers, suggesting affiliation, sponsorship or endorsement by the Complainant;

(ii) the AXA trademark is well known and the Complainant operates internationally including UK (where the Respondent is located according to the Registrar verification);

(iii) the Respondent’s companies were notified of the Complainant’s actions before the UK Company Names Tribunal before the date of the registration of the disputed domain name, not filing any defense in these proceedings;

(iv) the Respondent used a privacy protection service to hide its identity in the WhoIs record of the disputed domain name;

(v) the Respondent’s company name “Axatechviewou Ltd.” was apparently used in a fraudulent email scheme through an email address under the domain name <axa-techviewou.com>, reproducing the Complainant’s logo, and the panel in AXA SA v. Jean Ponto, WIPO Case No. D2021-0704 ordered the transfer of the domain name <axa-techviewou.com> to the Complainant;

(vi) the Respondent showed no willingness to avoid the conflict with the Complainant in the correspondence sent before the Complaint was filed;

(vii) the Respondent’s website has been inactive about one month after the registration of the disputed domain name;

(viii) the disputed domain name is currently resolving to a parked website including PPC links, some of them related to financial services, which compete with the Complainant’s group business; and

(ix) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.

Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered targeting the Complainant and its trademarks with the intention of obtaining a free ride on their established reputation, seeking to mislead and attract Internet users to the Respondent’s website, and disrupting the business of the Complainant and its associated company AXA Investment Managers, which constitutes bad faith. It is further possible, due to the Complainant’s type of business, which requires processing of sensible data, noting the composition of the disputed domain name, and the circumstances of this case, that the disputed domain name may be used in any type of promotional campaign or phishing scam impersonating the Complainant.

Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of the Policy.

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 name, <axaimbest.com>, be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: May 13, 2021

¹ See AXA SA v. Frank Van, WIPO Case No. D2014-0863; AXA SA v. Richard Lim, WIPO Case No. D2020-0749; or AXA SA v. Ahmed Omar, WIPO Case No. D2020-0065.