Axe falls on Finaxa's claim to 'axamc.com'
A World Intellectual Property Organization (WIPO) panellist has dismissed Finaxa SA's request for the transfer of the domain name 'axamc.com', even though Finaxa owns rights in several AXA marks and has registered a number of domain names incorporating the mark.
Finaxa is a member of the Axa Group, which provides insurance and financial services worldwide under the trademark AXA. The group is the registrant of many domain names incorporating the AXA mark under which it hosts active websites. These domain names include 'axa.com', 'axa-financial.com' and 'axa-im.com'. Vitalie Popa owns Axa-Management Consulting, a company legally established under the laws of the Republic of Moldova. Popa registered the domain name 'axamc.com' on April 13 2004, following which Finaxa filed a complaint with WIPO, alleging that:
- 'axamc.com' is confusingly similar to its AXA mark and Finaxa's various domain names incorporating that mark;
- Popa had no prior rights or legitimate interest in the domain name; and
- Popa registered 'axamc.com' in bad faith as he must have been aware at the time of registration of the existence of the AXA mark.
Sole panellist Bernhard Meyer-Hauser dismissed the complaint. First, he held that Finaxa had failed to prove that 'axamc.com' was identical or confusingly similar to the AXA mark pursuant to Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (UDRP). Meyer-Hauser accepted Popa's evidence that axa means 'axis' in Romanian - the official language of Moldova -, which he held was generic and descriptive.
Secondly, Meyer-Hauser held that all the domain names registered by the Axa Group contain a distinctive hyphen between the component 'axa' and any additional letters. In contrast, Popa's domain name uses no hyphen, dot or other graphic separator between the component 'axa' and the remaining letters. Accordingly, the 'axa' component is not highlighted by any visual aid and is not easily discernable to a third party.
Lastly, Popa's domain name incorporates the letters 'm' and 'c', which stand for the remainder of his company's name (ie, Management Consulting) and neither of these letters has been used by the Axa Group in an identical or similar manner.
With regards to Paragraph 4(c) of the UDRP, Meyer-Hauser held that the fact that Popa registered his company name with the Registration Chamber of the Republic of Moldova before registering the disputed domain name "indicates that [he] was using the disputed domain name in connection with an offering of services as a management consultant prior to any knowledge of this dispute". Bona fide use of the domain name was established through the following findings:
- Popa had chosen the name Axa for his business for the underlying message that the company establishes an axis with its customers;
- the link between the disputed domain name and the AXA trademark is not obvious to the general public;
- Popa's website and presentation of his services is completely different from those of Finaxa; and
- Popa's goods and services only target companies and individuals within the Republic of Moldova and its immediate neighbours (in particular through the exclusive use of the Romanian and Russian languages on the website), in which Finaxa is neither active nor known to the general public.
Accordingly, Meyer-Hauser refused to transfer 'axamc.com'.
Christina Lee, Alban Tay Mahtani & De Silva, Singapore
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