The Complainant is AXA SA of Paris, France, represented by Selarl Candé - Blanchard - Ducamp, France.
The Respondent is AXA Management Consulting of Chisinau, Republic of Moldova, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with MoldData, SC (the “Registry”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2017. On July 5, 2017, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On July 7, 2017, the Registry 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 sent an email communication to the parties in both English and Romanian on July 11, 2017 regarding the language of the proceedings, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Romanian. The Complainant confirmed its request for English to be the language of the proceedings on July 11, 2017. The Respondent submitted a request in English for Romanian to be the language of the proceedings on July 16, 2017.
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 in English and Romanian, and the proceedings commenced on July 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2017. The Response was filed with the Center on August 7, 2017.
The Center appointed Marilena Comanescu as the sole panelist in this matter on August 21, 2017. 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. Language of the Proceedings
As the Complaint had been submitted in English, on July 11, 2017 and the Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement is Romanian, the Center forwarded a notice to the Parties regarding the language of the proceedings stating that the Complainant should either (a) provide evidence of an agreement between the parties that proceedings should be in English; (b) translate the Complaint into Romanian; or (c) submit a request for English to be the language of the proceedings. The Complainant requested the language of proceedings to be English, providing in its response several arguments such as: the website corresponding to the disputed domain name is available in English, Romanian, Russian; the registration agreement applied by the Registrar is available both in English and Romanian; and that the Respondent is well aware of the English language, using this language in their previous correspondence and in the previous UDRP procedure conducted between the same parties.
The Respondent requested the language of the proceedings be Romanian mainly because: the registration agreement for the disputed domain name was in Romanian; and there is no agreement between the Parties to the contrary.
Under paragraph 11 of the Rules, the language of the proceeding is the language of the registration agreement of the disputed domain name, unless both parties agree otherwise, or the Panel determines otherwise based on one party’s request in order to ensure a fair and equitable procedure for all parties involved. The Panel decides that proceedings should be conducted in another language generally when it is necessary due to different nationalities of the parties and when the complainant does not understand the language of the registration agreement and it would therefore be unfairly disadvantaged by the fact that it must translate all the documents involved in such proceedings but it must also submit evidence that the respondent understands the language requested by the complainant.
Therefore, this Panel determines according to Rules, paragraph 11(a), that the language of these proceedings be English for the following reasons:
- from the case file documents, particularly the correspondence between the Parties prior to commencing these proceedings and the Respondent’s communications to the Center, the Respondent seems to have a good knowledge of English;
- the content of the website under the disputed domain name is also available in English, together with Romanian and Russian;
- a previous UDRP dispute between a company of the Complainant’s AXA Group and the Respondent’s Vice-Director (see FINAXA Societe Anonyme v. Vitalie Popa,WIPO Case No. D2004-0873) was decided in English;
- the Panel is familiar with both languages and took into consideration the Parties’ submissions in both languages; and
- it would be unfair for the Complainant to be asked to incur further costs to translate the Complaint and annexes. 5. Factual Background
The Complainant, AXA SA, is part of the AXA Group, a French multinational insurance firm headquartered in Paris that engages particularly in insurance, savings and asset management services proposed to both individuals and to business companies. Currently the AXA Group has 166,000 employees worldwide, serving 103 million customers from 64 countries across Europe, North America and Asia-Pacific regions.
The trade name Axa was first used in 1985 and the Complainant owns trademark registrations worldwide for AXA, such as the following:
- the International Registration No. 490030 for the word mark AXA filed on December 5, 1984 covering services in International Classes 35, 36 and 39, designating, inter alia, Romania and Ukraine;
- the European Union trademark AXA with design Registration No. 373894 filed on August 28, 1996, covering services in International Classes 35, 36 and 37.
Also, the Complainant holds domain names including the mark AXA, such as , , and .
The Complainant provided evidence of extensive use and recognition of its trademark AXA in many jurisdictions worldwide particularly in relation to financial and insurance services.
The disputed domain name was registered on May 24, 2006 and, at the time of filing of the Complaint, it was used to promote the Respondent’s business in relation to training and consultancy services for companies and organizations in the fields of (i) marketing, sales and customer services, (ii) human resources management, (iii) organization management, and (iv) professional skills development.
The Respondent AXA Management Consulting is a commercial consultancy company duly registered with the relevant body of the Republic of Moldova on June 23, 2003.
The Respondent holds a registration for the trademark AXA MANAGEMENT CONSULTING (with design) in the Republic of Moldova, Registration No. 13279 filed on December 1, 2004, covering services in International Classes 35, 41 and 42. Such trademark registration has non-exclusivity disclaimer for the words “management” and “consulting”.
In a past UDRP dispute between a company of the Complainant’s AXA Group and the Respondent’s Vice-Director (FINAXA Societe Anonyme v. Vitalie Popa, supra)for the domain name , the panel concluded that the “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.” Currently, the domain name seems to be available for registration. 6. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name particularly for the following arguments:
- the Complainant’s AXA trademark is well-known worldwide and is highly distinctive;
- the word “axa” itself has no meaning;
- the disputed domain name is identical to the Complainant’s trademark as it reproduces it entirely, the country-code Top-Level Domain (“ccTLD”) suffix does not serve to distinguish the disputed domain name from the registered mark but, to the contrary, Internet users may be confused and believe that the website is the Complainant’s official website in Moldova;
- the Respondent has no right or legitimate interests in respect of the disputed domain name as the Complainant never authorized the Respondent to use its AXA mark, the Respondent has not been commonly known by the name AXA but by the trademark AXA MANAGEMENT CONSULTING;
- the Respondent is not making a fair use of the disputed domain name as it acknowledged to have known the Complainant and its trademark before registering the disputed domain name, due to the previous UDRP case, FINAXA Societe Anonyme v. Vitalie Popa, supra.;
- the “Respondent chose in 2006 to let the domain name which corresponds to its trademark and company name AXA MANAGEMENT CONSULTING for using the domain name ”;
- the logo chosen by the Respondent for its trademark AXA MANAGEMENT CONSULTING has some similarities with the Complainant’s logo for AXA such as the square shape, colors, form of letters;
- the blue color used and the presentation of the websites (the Complainant’s website under the domain name and the one under the disputed domain name) are similar;
- the Respondent offers services identical to those offered by the Complainant, i.e., financial services and therefore is intentionally seeking to exploit user confusion by diverting Internet users searching for the Complainant;
- the Respondent registered and is using the disputed domain name in bad faith;
- the Respondent was aware of the Complainant’s mark when registering the disputed domain name. The AXA mark is well protected and well-known worldwide, including in Russian Federation, Ukraine and Austria where the Respondent has clients;
- the Respondent firstly registered the domain name to present its activity, but after the decision in the case FINAXA Societe Anonyme v. Vitalie Popa, supra, the Respondent abandoned such domain name and registered the disputed domain name in a deliberate attempt to create confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website connected with the disputed domain name;
- the Respondent’s company name and trademark is AXA MANAGEMENT CONSULTING and not solely AXA;
- the word “axa” in Romanian language has a generic meaning (axis or straight line) and the Respondent has no interest for registering a domain name comprising this sole non-distinctive element, except if he wants to create confusion with the Complainant’s AXA mark; and
- the Respondent’s registration of the disputed domain name prevents the Complainant from reflecting its mark in the corresponding “.md” domain name. B. Respondent
The Respondent requests the rebuttal of the Complainant’s requested remedies since none of the three elements of the Policy are met in the present case for the following main arguments:
- it has the trade name Axa Consulting Management registered with the relevant body in the Republic of Moldova as of June 23, 2003 and carries its activity in accordance with the applicable regulations of the Republic of Moldova;
- it holds trademark registration in the Republic of Moldova for the trademark AXA CONSULTING MANAGEMENT, Registration No. 13279, filed on December 1, 2004 and registered on February 8, 2006 for services in International Classes 35, 41, 42. Its trademark registration is exclusive for the distinctive element “axa”, since there is a disclaimer for the elements “management” and “consulting”;
- the disputed domain name was registered in 2006 and the corresponding website displays the Respondent’s official website. Such website prominently displays the Respondent’s trade name and trademark, services are provided only for the territory of the Republic of Moldova and these services are different from those offered by the Complainant;
- the disputed domain name reflects the distinctive and exclusive element in the Respondent’s mark, i.e.,“axa”;
- the Respondent is known in the Moldavian market for services in relation to training, consulting, coaching, research and assessment services for local private and state companies;
- the Respondent’s services are different from those provided by the Complainant and cannot create confusion with regards to their nature or provider;
- the Respondent’s clients are only Moldavian local entities, government institutions or non-governmental organizations with an activity area which does not exceed the territory of the Republic of Moldova;
- the Complainant does not hold any officially registered business with a name comprising the mark AXA in the Republic of Moldova and does not enjoy any reputation in this area;
- there are other 17 companies legally registered in the Republic of Moldova with the word “axa” contained in their trade names and providing various services. Some of such entities hold trademark registrations comprising the word “axa”;
- the Complainant does not hold any trademark registration in the Republic of Moldova, its trademark is not known in this territory and the Complainant is not making any advertisement to its AXA mark in this territory;
- for the above the Respondent has rights to register and use the disputed domain name and there is no need to require any approval or license from the Complainant;
- the Respondent acknowledges its awareness with regard to the Complainant’s business and AXA mark worldwide but also that the Complainant does not hold marks nor offers services in the Republic of Moldova;
- the Parties’ trademarks are different, particularly the Respondent’s mark is rectangular whereas the Complainant’s mark is square and it has no red color claimed;
- although the previous decision in the case FINAXA Societe Anonyme v. Vitalie Popa, supra, was favorable to the Respondent, it “has manifested goodwill” towards the Complainant and abandoned the domain name , choosing the disputed domain name particularly in order to underline the local area of services provided by the Respondent and to avoid other potential similar litigations;
- the website corresponding to the disputed domain name is different in colors, style and design than the Complainant’s websites available at “www.” and “www.”;
- the Complainant’s assertions regarding the Respondent’s foreign clients are inaccurate, all the Respondent’s clients are entities registered in the Republic of Moldova and the services are provided only in this territory. The Respondent’s experts have professional experiences in countries like Russian Federation, Austria or Ukraine;
- the disputed domain name reflects the dominant element of the Respondent’s trade name, the exclusive element in the Complainant’s mark and is registered for the ccTLD corresponding to the Republic of Moldova, territory in which the Respondent provides services in a legal manner and where the Complainant has no business nor trademark registration for the word “axa”;
- the word “axa” in Romanian language (which is the official language in the Republic of Moldova) has a meaning which provides a strong sense of marketing and promotion, i.e., axis or straight line; and
- the Complainant presented the facts in a tendentious manner and attempts to obtain the disputed domain name in an unfriendly manner. 7. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are cumulatively met:
(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 the disputed domain name; and
(iii) the disputed domain name has been 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 holds trademark registrations for AXA.
The disputed domain name reproduces the Complainant’s trademark AXA in its entirety.
Further, it is well established in decisions under the UDRP that extensions for generic Top-Level Domains (“gTLDs”) or ccTLDs (e.g., “.credit”, “.com”, “.biz”, “.md”, “.ro”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.
The Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark AXA, noting that the first element functions primarily as a standing requirement. B. Rights or Legitimate Interests. Registration and use in bad faith.
The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under this second element, once the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. As provided under paragraph 4(c) of the Policy, the following circumstances may demonstrate such rights or legitimate interests:
(i) before any notice to the Respondent of the dispute, its 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 has been commonly known by the disputed domain name, even if it did not acquire trademark 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.
According to the case file evidence, the Panel finds that the Respondent demonstrated rights and legitimate interests in the disputed domain name for the following arguments:
- the Respondent holds a trade name and carries on training and business consulting activities in the Republic of Moldova under the name Axa Management Consulting since June 2003;
- the Respondent holds trademark registration in the Republic of Moldova for AXA MANAGEMENT CONSULTING trademark since December, 2004 for services in International Classes 35, 41 and 42. The dominant and exclusive element in this trademark is “axa”, the words “management” and “consulting” being generic in relation to the services claimed and therefore disclaimed;
- the Respondent registered the disputed domain name in May, 2006 in the ccTLD “.md” corresponding to the Republic of Moldova;
- the disputed domain name reflects the dominant element in the Respondent’s trademark and trade name which was available for registration in the relevant ccTLD;
- in the Romanian language, the official language of the Republic of Moldova, “axa” is a dictionary word, meaning inter alia “axis or straight line that is considered to be oriented in a certain sense”. According to the case file evidence, there is no indication that the Respondent’s trade name, trademark and particularly disputed domain name were registered targeting the Complainant’s mark or in order to create confusion with the Complainant’s AXA trademark; and
- the current state of UDRP panel decisions in relation to the question if a Respondent holding a trademark registration corresponding to the disputed domain name automatically has rights or legitimate interests under paragraph 4(c) of the Policy, summarized in section 2.12 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) is that panels “have recognized that a respondent’s prior registration of a trademark which corresponds to a domain name will ordinarily support a finding of rights or legitimate interests in that domain name for purposes of the second element”.
The Panel agrees that the Complainant’s AXA trademark is well-known in many jurisdictions worldwide particularly in relation to insurance and financial services.
However, in this present case, the Respondent has demonstrated strong rights in the territory of the Republic of Moldova prior to registering the disputed domain name in relation to its trade name and trademark. According to the case file documents, the Respondent is providing services different from those offered by the Complainant under its AXA mark, the website corresponding to the disputed domain name presents the Respondent’s trademark, slogan and services without indications or references to the Complainant’s trademark or business and therefore the registration and use of the disputed domain name is made in good faith for promoting the Respondent’s business.
Further, the Complainant failed to prove that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name as there is no evidence to support it was engaged in a pattern of conduct as provided by paragraph 4(b)(ii) of the Policy. Furthermore, when the Panel searched the WhoIs for the domain name involved in the previous dispute FINAXA Societe Anonyme v. Vitalie Popa, supra, this domain name was available to be acquired by any interested third party.
Consequently, the Panel finds that the Respondent has rights or legitimate interests in the disputed domain name and that the Respondent did not register nor use the disputed domain name in bad faith. 8. Decision
For the foregoing reasons, the Complaint is denied.
Marilena Comanescu
Sole Panelist
Date: September 4, 2017
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