AXA SA v Privacy Service Provided by Withheld for Privacy ehf / John Sicot

WIPO Case No. D2022-0963

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

AXA SA v. Privacy Service Provided by Withheld for Privacy ehf / John Sicot

Case No. D2022-0963

1. The Parties

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

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / John Sicot, France.

2. The Domain Name and Registrar

The disputed domain name <bureau-finance-axa.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 18, 2022.

On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on the same day, 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 March 24, 2022. In accordance with the Rules,

paragraph 5, the due date for Response was April 13, 2022. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on April 19, 2022.

The Center appointed Elise Dufour as the sole panelist in this matter on April 25, 2022. 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.

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4. Factual Background

The Complainant AXA SA is the holding company of the Axa group, a French company with a history dating back to the 18th century. The Complainant is one of the world leaders in insurance, savings, and asset management, employing 153 000 people in 54 countries and serving 105 million customers.

The Complainant owns several trademark registrations, including the following:

- International trademark AXA, No. 490030 registered on December 5, 1984, duly renewed for services in

classes 35, 36 and 39.

- International trademark AXA (+design), No. 1519781 registered on May 29, 2019, duly renewed for

services in classes 35, 36, 37, 39, 44 and 45.

- European trademark AXA (+design), No. 373894 registered on July 29, 1998, and duly renewed for

services in classes 35 and 36.

- French trademark AXA, No. 1270658 registered on January 10, 1984, and duly renewed for services in
classes 35, 36 and 42.

In addition to the trademarks previously cited, the Complainant owns numerous domain names that contain the trademark AXA, notably the following ones:

<axa.com> registered on October 23, 1995.

<axa.fr> registered on May 19, 1996.

<axa.net> registered on November 2, 1997.

<axa.info> registered on July 30, 2001.

The disputed domain name is <bureau-finance-axa.com>. It was registered on September 30, 2021.

According to the evidence that was submitted by the Complainant, the Respondent was using the disputed domain name as a parking page, hosting sponsored pay-per-click (PPC) links presenting services in

competition with the Complainant’s activity such as insurance and investment.

Currently the disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is (i) confusingly similar to its earlier trademarks, (ii) that the Respondent has no rights or legitimate interests in the disputed domain name, and (iii) that the disputed domain name has been registered and is being used in bad faith.

(i) The Complainant claims that the disputed domain name is confusingly similar to its trademarks, since the
disputed domain name reproduces its AXA trademarks, which has no particular meaning and is distinctive.

The Complainant also claims that the addition of the terms “bureau” and “finance” to the disputed domain name, terms that are commonly used in the Complainant’s business field, causes a risk of confusion that may lead Internet users to believe that the disputed domain name is one of the Complainant’s websites.

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(ii) The Complainant asserts that the Respondent has no rights or legitimate interests in respect to the as a parking site, the Respondent was not making a legitimate noncommercial or fair use of it.

disputed domain name since the Parties have no relationship and the Complainant has not permitted the
(iii) The Complainant alleges that the disputed domain name was registered and used in bad faith by the

Respondent. According to the Complainant, the incorporation of the whole AXA trademarks in the disputed

domain name proves the Respondent’s bad faith because of the reputation and distinctiveness of the

Complainant’s trademarks. The Complainant further asserts that the use that was made of the disputed

domain name, as a parking page hosting commercial links for similar services, is evidence that it was used in
bad faith. Moreover, the Complainant states that the fact that the disputed domain name is not operated
anymore does not prevent to conclude that the Respondent is acting in bad faith and may be regarded as

passive holding in accordance with previous Panel decisions.

B. Respondent

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

6. Discussion and Findings

In the absence of a formal Response, the discussion and findings will be based upon the contentions in the
Complaint and any reasonable position that can be attributable to the Respondent.

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

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

Complainant has rights; and

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

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

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Complainant submitted evidence, which incontestably and conclusively establishes rights on the AXA trademarks and on the ownership of domain names which contain those trademarks.

The AXA trademarks are well known, used in various countries in relation to property and casualty insurance, life insurance, savings and asset management.

The disputed domain name wholly incorporates the Complainant’s trademark AXA, which, as it has been

long established by previous UDRP panels, typically is sufficient to determine that a disputed domain name

is identical or confusingly similar to the Complainant’s trademarks.

Furthermore, previous UDRP panel decisions have found that the incorporation of the AXA trademark, which as itself has no particular meaning, could create a likelihood of confusion regardless of the addition of other expressions (see AXA SA v. Frank Van, WIPO Case No. D2014-0863).

Lastly, the Panel finds that the addition of the terms “bureau” and “finance” in French, which are commonly used in the Complainant’s industry, do not prevent a finding of confusing similarity under the first element. Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks

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and that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that indicate the Respondent’s

rights to 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

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, in spite of not having acquired 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.

The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it

considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on

the Complainant to make a prima facie case against the Respondent.

In that sense, the Complainant states that it has not licensed or otherwise permitted the Respondent to use
the AXA trademark in the disputed domain name, nor is there any sort of relationship between the
Complainant and the Respondent.

Furthermore, the Complainant states that the Respondent is not 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 at issue.

Indeed, previous UDRP panel decisions have found that the use of a domain name incorporating the entirety of a trademark to point to a parking PPC website containing links to financial activities related to the complainant’s activity could not be considered either a bona fide offering of goods or services or a legitimate

noncommercial or fair use of the disputed domain name since the respondent was benefiting by misleading
Internet users to its website (see Zions Bancorporation v. Domain Administrator, Fundacion Private Whois
WIPO Case No. D2014-0465).

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent’s bad faith in registering the disputed domain name is made clear by the incorporation of

the whole AXA trademark, which has acquired a worldwide reputation.

Besides, the Complainant has demonstrated that the term AXA has no particular meaning and is therefore distinctive.

Furthermore, the addition of the terms “finance” and “bureau” are clear references to the Complainant’s

activity which consists of banking and financial services.

The Panel therefore finds that the Respondent registered the disputed domain name in bad faith in order to

take advantage of the Complainant’s reputation.

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As to the use that has been made of the disputed domain name, the Panel finds that the Respondent’s use of the domain name for a parking page containing PPC commercial links which relate to the Complainant’s

business activity is evidence that the Respondent was using the disputed domain name in bad faith.

Furthermore, the Panel finds that the fact that the website currently is inactive, and thus is no longer being exploited by the Respondent, does not prevent to conclude that the Respondent is acting in bad faith. Indeed, previous UDRP panel decisions have established that passive holding may be considered, in certain circumstances, as use in bad faith.

As to the circumstances which lead to the conclusion that the Respondent is acting in bad faith, the Panel finds that the AXA trademark is highly distinctive and enjoys a worldwide reputation. In addition, the

Respondent’s identity was masked by a privacy proxy registration service, concealing the Respondent’s

identity. As previous panels have established, such use of privacy services can be an indication of a

respondent’s bad faith. Given the elements of the present case, and the Respondent’s absence of

response, the Panel considers that the use of a privacy service is an indication of the Respondent’s bad

faith.

The Panel finds that the Complainant successfully fulfilled the requirements of 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 name, <bureau-finance-axa.com> be transferred to the Complainant.

/Elise Dufour/

Elise Dufour

Sole Panelist
Date: May 9, 2022