AXA SA v Marco Rinaldi

WIPO Case No. D2024-4960

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

AXA SA v. Marco Rinaldi

Case No. D2024-4960

1. The Parties

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

The Respondent is Marco Rinaldi, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <axainvests.com> is registered with 1API GmbH (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 disclosing registrant and contact information for the disputed
domain name which differed from the named Respondent (REDACTED FOR PRIVACY) and contact
information in the Complaint. The Center sent an email communication to the Complainant on December 3,
2024, 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 December 3, 2024.

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 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, 2025.

The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on January 13, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is a holding company of the AXA Group, which has a long-standing history, and its roots go
back to the 18th century. The trade name AXA was introduced in 1985. Employing 110,447 people
worldwide, the AXA Group is one of the world leaders in insurance, saving and asset management, serving
93 million customers. The AXA Group is famous for its numerous activities in three major lines of business,
i.e., property and casualty insurance, life insurance and savings (retirement products, personal, protection
and healthcare products) as well as asset management (involves investing and managing assets), proposed
both to individuals and to business companies. The AXA Group is present in 51 countries and does
business in diversified geographic regions and markets across notably Europe, Africa, North America and

Asia-Pacific.

The Complainant is the owner of several trademarks for AXA (“AXA trademark”), including:

- International Trademark Registration No. 490030, registered on December 5, 1984, designating inter alia, Italy, Viet Nam, and Morocco;

- European Union Trademark Registration No. 008772766, registered on September 7, 2012; and

- French Trademark Registration No. 1270658, registered on October 10, 1984.

The Complainant is also the owner of domain names including the AXA trademark, such as the domain name <axa.com>, registered on October 23, 1995.

The disputed domain name was registered on February 19, 2024. At the time of the Decision and when the

Complaint was filed, the disputed domain name resolved to an inactive webpage.

5. 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.

On the first element of the Policy, the Complainant claims that the disputed domain name is confusingly
similar to the AXA trademark. The disputed domain name reproduces identically the AXA trademark,
which as itself has no particular meaning and is therefore highly distinctive. The AXA trademark is
well-known around the world in the field of insurance and financial services. When a domain name
incorporates the entirety of a complainant's trademark – and a notorious and famous trademark – it is
difficult, if not impossible, regardless of added terms to distinguish adequately the mark from the domain
name. The addition of the term “invests” does not prevent the likelihood of confusion between the disputed
domain name and the AXA trademark as it’s a generic and non-distinctive term that Internet users would
certainly not remember comparing to the well-known and distinctive term, “axa”. On the contrary, the
association of this term with the trademark AXA reinforces the likelihood of confusion since it’s referring to
one of the Complainant’s activities. Indeed, the Complainant is famous for its numerous activities in three
major lines of business property and casualty insurance, life insurance and savings and asset management,
proposed both to individuals and to business companies. Then, there are strong chances that Internet users
may believe that the website under the disputed domain name is another official website of the Complainant
dedicated to investments.

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On the second element of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Firstly, the Complainant has never licensed or otherwise permitted the Respondent to use the AXA trademark or to register any domain name including the AXA trademark and then to register the disputed domain name. As evidence of this, the Complainant has sent three letters of formal notice to the Respondent to obtain the cessation of use of the disputed domain name and never got any answer. Therefore, there is obviously no relationship whatsoever between the involved parties. For this first reason, the Respondent has no prior rights and/or legitimate interests to justify the use of the AXA trademark. The Respondent has clearly adopted the AXA trademark, which has acquired a substantial reputation around the world, for its own use and incorporated it into the disputed domain name without the Complainant’s authorization. Secondly, the Respondent has not been commonly known by the disputed domain name or even associated with the name AXA, whereas the AXA trademark appears to be well-known. Indeed, even if the Respondent’s identity is not accessible on the WhoIs database, if he were known by the disputed domain name, the Complainant would have been able to mention his identity in the present proceedings. Thirdly, the disputed domain name is not used in connection with a bona fide offering of goods or services. Indeed, the disputed domain name is passively held as it redirects to a page which is not active. Passive holding of a domain name does not constitute “legitimate non-commercial use” of it.

On the third element of the Policy, the Complainant asserts that the Respondent has registered and used the disputed domain name in bad faith. The Respondent was aware of the AXA trademark at the time that he acquired the disputed domain name. The Complainant has submitted ample evidence to support its claim that the trademark AXA has become internationally famous and enjoys worldwide good reputation. The Respondent purposely chose and registered the disputed domain name using the term “axa” from the AXA trademark in its entirety. Chances that Internet users will associate the disputed domain name with the AXA trademark are even greater as the AXA trademark is associated with the term “invests” which directly refers to one of the Complainant’s main activities. Further, the disputed domain name is passively held as it leads to a page which is not active. Passive holding may be considered, in certain circumstances, as used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the Complaint, namely that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii)      the disputed domain name has been registered and is being used in bad faith.

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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 trademark and the disputed domain name. 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. WIPO Overview 3.0, section 1.7.

Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements. WIPO Overview 3.0, section 1.8.

The applicable TLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration
requirement and as such is disregarded under the first element confusing similarity test.

WIPO Overview 3.0, section 1.11.

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

The entirety of the AXA trademark is reproduced within the disputed domain name and the Panel finds the mark is recognizable within the disputed domain name. The disputed domain name differs from the AXA trademark by the addition of the term “invests”, which does not prevent a finding of confusing similarity.

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.

The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the AXA trademark. The Panel finds on the record that there are no indications that the Respondent is commonly known by the disputed domain name or otherwise has any rights to or

legitimate interests in the disputed domain name. Further, there are no evident preparations for the use of
the disputed domain name for a bona fide offering of goods or services.

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.

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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.

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.

Considering the public presence of the Complainant, it is unlikely that the Respondent had no knowledge of the AXA trademark. The incorporation of the AXA trademark within the disputed domain name, with the addition of the generic term “invests”, demonstrates the Respondent’s actual awareness of the Complainant and intent to target the Complainant, particularly given that asset management including investing is one of the Complainant’s major fields of activity.

Having reviewed the available record, the Panel notes the distinctiveness and reputation of the well-known AXA trademark, the composition of the disputed domain name, including the entire AXA trademark and the generic term “invests” as a reference to the Complainant’s field of activity, as well as the Respondent’s

failure to submit a response and finds that in the circumstances of this case the non-use 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.

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 <axainvests.com> be transferred to the Complainant.

/Christian Gassauer-Fleissner/
Christian Gassauer-Fleissner
Sole Panelist
Date: January 24, 2025