WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Finaxa S.A. v. Spiral Matrix
Case No. D2005-1044
1. The Parties
The Complainant is Finaxa S.A., Paris, France, represented by Selarl Marchais De Cand�, France.
The Respondent is Spiral Matrix, Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October�3,�2005. On October�4,�2005, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On October�5,�2005, Intercosmos Media Group d/b/a directNIC.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October�19,�2005. 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”), 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 October�25,�2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November�14,�2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November�16,�2005.
The Center appointed Christian Pirker as the sole panelist in this matter on November�29,�2005. 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 FINAXA SA, the holding company of the AXA Group, whose main business is in the field of insurances and financial services. The group is widely known under the trade name AXA. The AXA Group has numerous subsidiaries and/or offices in many countries around the world such as in Europe, in America and in Asia. In Africa, Complainant has proven to have subsidiaries and/or offices in Cameron, Gabon, Guinea, Ivory Coast, Senegal, Togo and Morocco.
The awarness of the Trademark is widely known according a study report provided by Complainant.
The Group belongs also a company called AXA PRIVATE EQUITY which is dedicated exclusively to investment in different financial vehicules.
The Complainant has registered numerous trademarks containing the terms AXA or AXA and EQUITY, inter alia :
- American Trademark AXA PRIVATE EQUITY and device N� 2�942�802 filed on March 13,�2001 in class 38
- International Registration AXA EQUITY LAW and device N� 603477 filed on July 1,�1993 in classes 16-, 35 and 36 designating Germany, Benelux and Spain
- Community Trademark AXA PRIVATE EQUITY N� 002383438 filed on September�12,�2001 in classes 36 and 38
- The community trademark “AXA” No.373 894 registered on July�29,�1998 in classes 35 and 36 in Germany, Austria, Benelux, Denmark, Spain, Finland, France, Great Britain, Greece, Ireland, Italy, Portugal, Sweden;
- The USA trademark “AXA” No. 1 679 597 registered on March�17,�1992 in classes 35 and 36 namely for “advertising agency services; namely, the preparation and placement of newspaper, magazine, radio, movie and television advertisements; and business management assistance and consulting services rendered to firms and companies; financial analysis and consulting services”;
- Kenyan Trademark “AXA” N� 41793 filed on October�18,�1994 and renewed in class 16
- Kenyan Trademark “AXA and device” N� 1028 filed on April 4,�1997 in class 36
The Complainant has also registered numerous domain names containing the word “AXA” to present the companies of the Group and their services, among other :
- AXAPRIVATEEQUITY.COM, registered on January�16,�2001;
- AXAPRIVATEEQUITY.INFO, registered on November�10,�2003
- AXA.COM, registered on October�24,�1995;
- AXA.FR registered on March�16,�1998;
- AXA.US, registered on April�24,�2002;
The Respondent is located in Eldoret, Kenya.
Moreover, Spiral Matrix has been involved lately in at least two other domain name disputes. As far as the Panel is aware, Spiral Matrix has also been in default, and the disputed domain names have been transferred to the relevant complainants (inter alia WIPO Case No. Case No. D2005-0890).
Registered in July 2005, the domain name was inactive when the complaint was filed. During the proceeding, the site nevertheless became active and is currently used for a website directory in order to redirect consumers to numerous other websites offering the same type of products and services as those provided by the AXA Group.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the disputed domain name is identical or confusingly similar to the trademarks AXA PRIVATE EQUITY, AXA EQUITY LAW and AXA and the different domain names owned and used by the Complainant all over the world. Complainant further alleges that the Respondent has no prior rights and /or legitimate interest to justify the use of these Trademark. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name incorporating the above-mentioned trademarks. Further, the Complainant declares that there isn’t any relationship between the parties. Consequently, the absence of any permission and the lack of connection between the choice of the domain name and the Respondent’s website prove that the Respondent has neither rights nor legitimate interest in respect of the domain name. Finally, the Complainant alleges that the Respondent was undoubtedly aware at the time of the registration of the litigious domain name of the existence of the trademarks AXA and the domain names , ; and . Accordingly, the Respondent should have obviously registered its domain name in order to abusively take benefit from the Complainant’s notoriety. It is Complainant’s view, that the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith since the Complainant’s trademarks have strong reputation and are widely known. Accordingly, there should be no doubt that the disputed domain name was registered and is used in bad faith with the purpose to benefit from the goodwill and the renown of the trademarks AXA, AXA PRIVATE EQUITY and AXA EQUITY LAW and to attract Internet users interested in Complainant’s services.
Accordingly, the Complainant contends that the Respondent has registered a domain name that is confusingly similar to the trademarks registered and used by it, that the Respondent has no rights or legitimate interests in the domain name at issue, and that the Respondent has registered this domain name in bad faith.
B. Respondent
As noted above, the Respondent is in default pursuant to Paragraph�5(e) and�14 of the Rules, and Paragraph�7(c) of the Supplemental Rules, as no Response was submitted in due time.
It is further noted that the Respondent did not give any response nor communicated any message at any time during the present proceedings.
Under Paragraphs 5(e) and 14(a) of the Rules, the effect of a default by the Respondent is that the Panel shall proceed to a decision on the Complaint. Under Paragraph 14(b), the Panel is empowered to draw such inferences from Respondent’s default as it considers appropriate under the circumstances.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy states that the Complainant must prove that each of the three following elements are present:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant have rights;
(ii) that the Respondent has no rights nor 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 AXA trademarks are registered in numerous countries, among others with the Kenyan Registry of Trade Mark Office, classes 16 and 36, mainly for insurances and bank services.
The AXA name in its entirety is included in the disputed domain name. Moreover, if the two terms are read separately, the adjunction of the term “equity” to the name AXA in the domain name does not diminish the confusing similarity between the domain name and the AXA Trademark. Accordingly, the distinctive part of the disputed domain name is the term AXA and the term “equity” is a descriptive term. Domain names that combine a descriptive term with another’s trademark have been held to be confusingly similar to the trademark. See, e.g., AT&T Corp. v. WorldclassM, WIPO Case�No.�D2000-0553; Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627. One could consider that, since there is no hyphen between the two vowel “a” and “e”, the pronunciation of the disputed domain name could diminish the confusing similarity. Nevertheless it is Panels opinion that, as stated in previous cases (WIPO Case N� D2002-1098), since the Domain name reproduces entirely the term AXA, which has, so far the Panel knows, no particular meaning and is accordingly distinctive, the disputed domain name is confusingly similar to the Complainant’s AXA trademark.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy a Respondent can establish its rights or legitimate interests in its Domain Name if it shows the presence of any of the following circumstances:
(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 noncommercial 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.”
It is for the Complainant to demonstrate that this condition is met prima facie. Provided that the Complainant is successful in establishing such prima facie condition, it is for the Respondent to answer thereon. Accordingly, the main burden of proof is on the Respondent.
The Complainant alleges that the Respondent has no connection whatsoever with it and that the Respondent has no right or legitimate interest in the domain name.
Taking into consideration the fact that this condition consists of furnishing evidence of the non-existence of a material fact, the Panel considers that the Complainant has fulfilled its obligations under this paragraph.
As stated above, the Respondent failed to respond to the Complaint. The Panel will therefore draw such inferences as it considers appropriate under the circumstances (paragraphs 5(e) and 14 (a) of the Rules).
The Respondent has not challenged the Complainant’s contention. The Panel finds it credible.
Moreover, there is no evidence in the file that the Respondent has any right or legitimate interest in the domain name.
Accordingly, the Panel considers that the Respondent does not have any right or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
The third element to be established by the Complainant is that the Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name.
(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name.; or
(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or your location.”
The Panel notes that some panelists in certain default cases have accepted credible allegations from a complainant as true, particularly under Paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, regarding the factors that make out illegitimacy of a respondent’s use or the presence or absence of bad faith, e.g., Luis Cobos v. West, North (Nick Handle: JNMTOKTCQD), WIPO Case No. D2004-0182; Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039; Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939.
The Complainant’s allegations in this case that the disputed domain name has been registered and is used in bad faith could be accepted as true. That being said, the Panel further states the following.
The domain name must not only be registered in bad faith, but it must also be used in bad faith (e.g. World wrestling Federation Entertainment, Inc. v. Michael Bosman WIPO Case No D1999-0001). The inactivity of the Respondent’s domain name at issue would not necessarily exclude this element. A passive holding of a domain name may satisfy the requirement of paragraph 4(a)(iii) that the domain name is being used in bad faith, when considered in conjunction with other circumstances (Advanced Comfort Inc. v. Frank Grillo, WIPO Case No. D2002-0762 - ; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368 - ; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 - ). Examples of circumstances that can indicate bad faith include Complainant having a well-known trademark, no response to the Complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration and vice versa.
In the present case, one should examine all the factual elements in order to deduct, possibly, the overall impression of bad faith registration and use.
The Panel considers that the evidence submitted establish that the AXA trademark is a worldwide well-known trademark for insurance and financial services. Further, the Complainant’s trademark is included, in its entirety, in the disputed domain name. Moreover, the Respondent added the term “equity” to the trademark AXA, which shows a knowledge of the services commercialised by the Complainant. Therefore, the choice of the domain name by the Respondent could hardly be a coincidence. Further, the Respondent, Spiral Matrix, has been involved as respondent in other cases, in which the disputed domain names were eventually transferred to the relevant complainants. Finally, the Respondent did not actively participate in the proceedings. In light of the above, the Panel finds that the circumstances in this case lead to the conclusion of bad faith use and registration.
Moreover, the Panel noticed that the domain name became active during the proceedings. Indeed, the disputed domain name currently revert to a website directory. Accordingly, the Panel considers that the disputed domain name is used for “click-through” revenue generating site which provides income to the Respondent by inducing Internet users to click through sponsored links. It is the Panel’s opinion that the purpose of the Respondent’s use of a domain name containing the Complainant’s famous trademark is merely to capture the Complainant’s customers who are seeking the Complainant’s services, and to re-direct them to other websites. Such use of domain is neither legitimate, nor of good faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration and use under the Policy, Paragraph 4(b)(iv) (e.g. Compagnie G�n�rale des Etablissements Michelin CGEM - Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc., WIPO Case No. D2004-0752).
As a result, the Panel holds that both elements of paragraph�4(a)(iii) of the Policy have been met. The Panel thus concludes that the Complainant has established that the Respondent registered and is using the disputed domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Christian Pirker
Sole Panelist
Date: January�16,�2005
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