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FINAXA Sociйtй Anonyme v. Vitalie Popa
Case No. D2004-0873
1. The Parties
The Complainant is Finaxa Sociйtй Anonyme (“Complainant”), Paris, France, represented by Selarl Marchais De Candй, France.
The Respondent is Vitalie Popa (“Respondent”), Chsinau, Republic
2. The Domain Name and Registrar
The disputed Domain Name <axamc.com> is registered with Go Daddy Software,
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2004. On October 25, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On the same date, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 2, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 22, 2004. The Response was filed with the Center on November 22, 2004.
The Center appointed Bernhard Meyer-Hauser as the Sole Panelist in this matter
on December 9, 2004, and he submitted his Statement of Acceptance and Declaration
of Impartiality and Independence as required by the Center to ensure compliance
with the Rules, Paragraph 7. The Panel thereupon found that it was properly
4. Factual Background
Complainant FINAXA SA is a member of the AXA Group whose main business is in the fields of insurance and financial services. The Group is known under the trade name AXA. The companies belonging to the AXA Group are established in many countries around the world.
Complainant is the owner of numerous trademarks all over the world containing the word AXA, and in particular of the following trademarks:
• French trademark AXA and design No. 1 472 008, registered on May 4, 1988, and renewed on April 10, 1998, in classes 35 and 36, especially for “insurances and financial affairs”.
• Community trademark AXA and design No. 373 894, registered on July 29, 1998, in classes 35 and 36, especially for “insurances; personal insurances, life-insurance; financial and monetary affairs”.
• Community trademark AXA INVESTMENT MANAGERS No. 721 928, registered on April 8, 1999, in classes 16, 35, 36, 38, 41 and 42, especially for “financial affairs; financial analyses; capital investment, consulting in the fields of finance”.
• Community trademark AXA ASSISTANCE and design No. 1 224 294, registered on July 31, 2000, in classes 35, 36, 37, 38, 39 and 42, especially for “advertising, business information or advices, business management. Insurances, finances, services of assistance in relation to insurance contracts; services of assistance in the financial domain”.
• International trademark AXA No. 490 030, registered on December 5, 1984, in classes 35, 36 and 39, especially for “insurances and finance”, designating Algeria, Austria, Egypt, Spain, Hungary, Italy, Morocco, Monaco, Portugal, Rumania, Sudan, Ukraine, Viet-Nam, Yugoslavia, Benelux, Switzerland, Liechtenstein.
The group AXA is also the owner of many domain names that correspond to active websites including but not limited to: <axa.fr>, <axa.com>, <axa-financial.com>, <axa-im.com>, <axa-im.be>, <axa-re.com>, <axa-reim.com> and <axa-rem.de>.
Respondent is the legal owner of “AXA Management Consulting”, a legally limited company under the laws of the Republic of Moldova. The company was registered with the Registration Chamber of Republic of Moldova on June 23, 2003.
Respondent registered the disputed Domain Name on
April 13, 2004.
5. Parties’ Contentions
Complainant alleges that:
• The Domain Name <axamc.com> is confusingly similar to Complainant’s trademark “AXA” and the different domain names owned and used by Complainant.
• Respondent has no prior rights or legitimate interests which would justify the use of the term “AXA”, and he is and was not authorized to use this term.
• Respondent registered the Domain Name in bad faith as he must have been aware at the time of registration of the existence of the trademark “AXA”. He registered and currently uses the Domain Name with the purpose of benefiting from the reputation of the trademark of Complainant.
Complainant therefore requests a decision that the Domain Name <axamc.com> should be transferred to Complainant.
Additional contentions of Complainant may be contained in the following discussions and findings.
Respondent disputes the above contentions. As a result, the Domain Name <axamc.com> should remain with Respondent.
Additional contentions of Respondent may be contained in the following discussions
6. Discussion and Findings
Paragraph 4(a) of the policy directs that the Complainant must prove each of the following points:
“(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.”
A. Identical or Confusingly Similar
The Domain Name at issue is <axamc.com>. Complainant alleges that this Domain Name is confusingly similar to Complainant’s above mentioned trademarks as it allegedly fully reproduces the mark. Furthermore, numerous other domain names, using “AXA” in combination with letters, have been registered by Complainant in several countries such as <axa-im.be>, <axa-re.com>, <axa-rem.de> etc.
Respondent’s company “AXA Management Consulting” is situated in the Republic of Moldova and provides management and consulting services to costumers in this country. Respondent explains its Domain Name <axamc.com> to be a combination of the generic word “AXA” and the letters “mc”, the latter standing for “Management Consulting”. In this connection, Respondent explains that in the Romanian language, which is the official language of the Republic of Moldova, the term “axă” means “a straight line” or “an axis”, and therefore has a generic and descriptive meaning. The component “AXA” is intended to draw a line to potential clients of Respondent’s company (see Annex 2 and 3 of the Response for excerpts from “The Explanatory Dictionary of Romanian Language” and from “The Big Romanian-English Dictionary”).
Having thoroughly studied the annexed documents, this Panel finds that indeed the term “axă” seems to be a generic or descriptive term in the Romanian language. However, this conclusion - by itself - does not rule out a confusing similarity to Complainant’s trademarks.
Taking into consideration that Complainant appears to have a practice of using “AXA” as a domain name in combination with certain letters, it may be possible that Complainant and certain of its customers could read the trademark AXA into the Domain Name <axamc.com>. However, in this connection, it is to be noted that all domain names presented by Complainant in this case contain a distinctive hyphen (“-”) between the component “AXA” and the additional letters used (i.e. “im”, “re”, “rem”). Respondent’s Domain Name, on the other hand, is using no hyphen, dot or other graphic separator between the component AXA and the remaining letters. Accordingly, the component AXA is not pronounced by any visual aid and not easily discernible to a third party. Under these circumstances, it seems rather unlikely that the general public will recognize or associate Complainant’s trademark AXA with Respondent’s Domain Name. Moreover, the particular letters used by Respondent in the Domain Name to describe its business (i.e. “mc” for Management Consulting) do not seem to have been used by Complainant in the same or any similar manner in the past. In an overall assessment, this Panel, therefore, finds it hard to see a confusing similarity between Complainant’s trademark “AXA” and Respondent’s Domain Name <axamc.com>.
Accordingly, Complainant has not sufficiently established the elements of the Policy’s Paragraph 4(a)(i).
B. Rights or Legitimate Interests
It is first convenient to recall that, according to Paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate non-commercial 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.”
As rightly stated in Infinity2 Incorporated v. Total Health Wellness, NAF Claim No. FA0094867, “the purpose of UDRP Sub Paragraph 4(c)(i) is to exclude from the UDRP process cases of entities who use or prepare to use a Domain Name without knowledge that their doing so was or would be disputed”. The fact that on June 23, 2003, Respondent registered the business name “AXA Management Consulting” with the Registration Chamber of Republic of Moldova (see Annex 1 to Response) indicates that Respondent was using the disputed Domain Name in connection with an offering of its services as a management consultant prior to any knowledge of this dispute.
Prior use of the Domain Name being established, the question remains whether
Respondent was also acting in good faith (“bona fide”). Not
every use prior to a notice of the dispute qualifies as bona fide use.
As stated in Madonna Ciccone v. Dan Parisi, WIPO
Case No. D2000-0847, “use which intentionally trades on the fame of
another cannot constitute a bona fide offering or service” and
“to conclude otherwise would mean that a Respondent could rely on intentional
infringement to demonstrate a legitimate interest, an interpretation which is
obviously contrary to the intent of the Policy”.
In the case at hand, Respondent’s Domain Name <axamc.com> does not seem clearly similar to Complainant’s trademark. As seen above, the component AXA which is the link between the Domain Name and the trademark is not obvious, at least not to the general public. Another argument in this regard is the fact that the design of Respondent’s website and the presentation of its services is completely different from the several websites used and services offered by Complainant. A comparison of the various websites does not support Complainant’s contention that Respondent banks on the AXA trademark and/or provokes confusion between its own services and the ones of Complainant. The same can be said regarding the “logo” used by Respondent, the design of which is clearly distinguishable from Complainant’s “logo”.
Furthermore, Respondent points out that its offerings of goods and services only target companies and individuals within the Republic of Moldova, a country in which Complainant is neither active nor known to a greater public. Indeed, Complainant fails to establish or provide proof of any trademark registration and/or business activity in this market, or in any of its neighbouring countries. Additionally, the fact that Respondent’s website is drawn up in the Romanian and Russian languages, but not in English, seems to support Respondent’s assertion that its business is limited to the markets of the Republic of Moldova and possibly any neighbouring countries, but is not targeted to Complainant’s home territory.
Finally, it must be recalled that the word “axă” in the Romanian language indeed has a generic meaning (see above). Respondent’s business name, “AXA Management Consulting”, has intentionally been chosen for its marketing message by establishing a “straight line” or “axis” between Respondent and its customers for management and consultancy services. If this is true - which at least appears to be quite likely - then there is no intent by and indeed hardly any possibility of Respondent to misleadingly divert consumers or tarnish Complainant’s trademarks in any manner.
In conclusion, the Panel finds that Respondent has established its rights or legitimate interests in the contested Domain Name within the meaning of the Policy.
C. Registered and Used in Bad Faith
Under these circumstances, registration and use in bad faith, as required by
Paragraph 4(b) of the Policy can also be excluded.
In view of the circumstances and facts discussed above, the Panel finds that Complainant has not sufficiently proven its case to succeed in this UDRP proceeding. Respondent has sufficient rights or legitimate interests in respect of the Domain Name, and Respondent’s Domain Name has not been registered and is not being used in bad faith.
Accordingly, this Panel concludes that the remedy requested by Complainant pursuant to Paragraph 4(i) of the Policy must be denied. Of course, this holding does not in any way prejudice ordinary court proceedings commenced before competent courts.
Dated: December 19, 2004