AXA SA v Leonardo Blockchain

WIPO Case No. D2024-4959

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

AXA SA v. Leonardo Blockchain

Case No. D2024-4959

1. The Parties

The Complainant is AXA SA, France, represented by Selarl Candé - Blanchard - Ducamp, France.

The Respondent is Leonardo Blockchain, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <axa-insurance-fr.com> is registered with PDR Ltd. d/b/a

PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2024. On December 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2024, 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 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2024.

The Center appointed Rebecca Slater as the sole panelist in this matter on January 9, 2025. 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

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4. Procedural Issue

Paragraph 10(b) of the Rules requires the Panel to ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case. Paragraph 10(c) requires that the administrative proceeding takes place with due expedition.

The Respondent’s mailing address is in Ukraine, which is subject to an international conflict at the date of this decision. These circumstances may impact case notification and it is appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should continue.

The Panel is of the view that the proceeding should continue, having considered all the circumstances of the case.

The Panel notes that the courier was not able to deliver the Written Notice to the Respondent’s address in proceedings.
Ukraine; however, the Complaint was delivered to the Respondent’s email address provided by the

The Complainant has specified in the Complaint that any challenge made by the Respondent to any decision to transfer the disputed domain name will be submitted to the jurisdiction of the courts of India (being the location of the concerned registrar).

Additionally, as set out below, the Panel has formed the view that the Respondent registered and has used the disputed domain name in bad faith.

5. Factual Background

The Complainant is a multinational insurance company headquartered in France. The Complainant has
been using the trade name AXA since 1985. It has traded on the Paris Stock Exchange since 1988 and the
New York Stock Exchange since 1996. The Complainant is a world leader in insurance, savings, and asset
management, with over 93 million customers worldwide. It operates in 51 countries and employs over
110,000 people.

The Complainant has a portfolio of registrations for the AXA trade mark, including: International Trade mark Registration No. 490030 for AXA (word mark, registered December 5, 1984, with Ukraine (among others) as a designated jurisdiction), European Union Trade Mark No. 008772766 for AXA (word mark, registered

September 7, 2012), and French Trade mark Registration No. 1270658 for AXA (word mark, registered

October 12, 1984) (collectively referred to as the “Trade Mark”).

The Complainant is also the registrant of the following domain names which incorporate the Trade Mark:
<axa.com> (registered October 23, 1995), <axa.fr> (registered May 20, 1996), <axa.net> (registered

November 1, 1997), and <axa.info> (registered July 30, 2001).

The Respondent is an individual named Leonardo Blockchain apparently located in Ukraine. The
Respondent did not submit a formal response, and consequently little information is known about the

Respondent.

The Respondent registered the disputed domain name on December 28, 2023.

The disputed domain name does not currently resolve to an active website.

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6. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

- The disputed domain name is confusingly similar to the Trade Mark. The disputed domain name

incorporates the entirety of the Trade Mark followed by the generic and descriptive terms “insurance” and “fr”, separated by hyphens. The addition of these terms does not prevent a finding of confusing similarity. The additional terms reinforce the likelihood of confusion as “insurance” is the Complainant’s main activity and “fr” is a common abbreviation for France, where the Complainant is headquartered.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The

Respondent has not received any license from the Complainant to use the Trade Mark and there is no relationship between the Complainant and the Respondent. The Respondent is not commonly known by the Trade Mark. In fact, the Respondent’s name appears to be fake. The disputed domain name is not used in connection with a bona fide offering of goods or services. The disputed domain name displays a page that is inactive. Passive holding does not constitute a legitimate noncommercial use of a domain name.

- The Respondent was obviously aware of the Trade Mark at the time that it registered the disputed domain name, given the worldwide reputation of the Trade Mark. The Respondent registered a domain name incorporating the Trade Mark to take predatory advantage of the Complainant’s reputation. In the circumstances, the passive holding of the disputed domain name amounts to bad faith use. Additionally, the

Respondent did not reply to a cease-and-desist letter from the Complainant.

B. Respondent

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

7. Discussion and Findings

To succeed, the Complainant must demonstrate that all the elements enumerated in paragraph 4(a) of the
Policy have been satisfied, namely:

- the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

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The Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the Trade Mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the Trade Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here “insurance” and “fr”, separated by hyphens) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the Trade Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 a prima facie case 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel notes that the composition of the disputed domain name carries a high risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. The Complainant has not authorized the Respondent to use the Trade Mark and there is no evidence that the Respondent has ever been commonly known by the disputed domain

name.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The Panel finds it highly unlikely that the disputed domain name was registered without knowledge of the the disputed domain name. The Respondent’s goal in registering and using the disputed domain name

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appears to be to attract Internet users for taking unfair advantage of the Complainant’s well-known Trade
Mark. This amounts to “opportunistic bad faith” in violation of the Policy.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Trade Mark, the composition of the disputed domain

name, and the Respondent’s failure to reply to the Complainant’s cease and desist letter or to file a
response. The Panel finds that, in these circumstances, the passive holding of the disputed domain name

does not prevent a finding of bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

8. 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 <axa-insurance-fr.com> be transferred to the Complainant.

/Rebecca Slater/
Rebecca Slater
Sole Panelist
Date: January 23, 2025