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FINAXA v. Managing Trustee/MeridianGlobal [2004] GENDND 1089 (31 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

FINAXA v. Managing Trustee/MeridianGlobal

Case No. D2004-0509

1. The Parties

The Complainant is FINAXA, Paris, France, represented by Selarl Marchais De Candé, Paris, France.

The Respondent is Managing Trustee/MeridianGlobal, Downtown Central, Hong Kong, SAR of China.

2. The Domain Names and Registrar

The disputed domain names are:

<axafinancialadvisors.com>

<axafinancialadvisors.net>

<axafinancialgroup.com>

<axafinancialgroup.net>

They are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2004. On July 13, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On July 13, 2004, 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 July 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2004.

The Center appointed Dr. Clive N.A. Trotman as the Sole Panelist in this matter on August 17, 2004. 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

4.1. The 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 widely known under the trade name AXA. The companies belonging to the AXA Group are established in many countries on several continents.

4.2. The 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.”

US trademark AXA FINANCIAL No. 2 546 261 registered on March 12, 2002, in class 36 especially for “Financial services, namely providing financial advice for others, assets management, investment management services ... insurance services.”

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.

International trademark GROUPE AXA INTERNATIONAL No. 490 217 registered on December 13, 1984, in classes 35, 36 and 39 especially for “insurances and finance” and designating notably “Austria, Spain, Hungary, Italy, Morocco, Romania, Russia, Sudan, North Korea, Vietnam.”

US trademark AXA ADVISORS No. 2 546 262 registered on March 12, 2002, in class 36 especially for “financial services and insurance services.”

Hong Kong trademark AXA No. 03 471 registered on May 28, 1993, and renewed on May 28, 2000, in class 36 especially for “insurance services; administration of financial affairs; arranging of loans; credit brokerage services; financial management and planning services; preparation of financial reports and analyses; financing of loans services; equipment lease financing services; investment services....”

Hong Kong trademark AXA LIFE No. 05 529 registered on September 5, 1996, in class 36 especially for “insurance services; life insurance; reinsurance; investments services relating to provident funds; consultancy services relating to financial investments; financial assets management; financial analyses.”

Hong Kong trademark AXA ASSISTANCE No. 15 102 registered on March 29, 1999, in class 36 especially for “insurance services, financing services.”

Chinese trademark AXA No. 774 571 registered on December 28, 1994, in class 36 especially for “insurance services, banking services, financial services, namely: administration of financial affairs, arranging of loans, credit brokerage, financial management and planning, preparation of financial reports and analyses.”

4.3. The group AXA is the owner of many domain names that correspond to active websites including but not limited to:

<axa.fr>

<axa.com>

<axa-financial.com>

<axa-financial.net>

<axaonline.com>

<axa-consulting.com>

<axa-insurance.org>

<axa-chinaregion.com>

<axa-insurance.com.hk>.

4.4. No significant facts are available about the Respondent, who appears to have given fictitious contact details and is for practical purposes anonymous, except that he or she registered the disputed Domain Names on April 8, 2004.

5. Parties’ Contentions

A. Complainant

5.1. Complainant contends that the disputed Domain Names <axafinancialadvisors.com>, <axafinancialadvisors.net>, <axafinancialgroup.com>, <axafinancialgroup.net> by incorporating the word AXA are confusingly similar to Complainant’s trademark AXA.

5.2. Complainant’s trademark name AXA is a made-up word having no particular meaning and is therefore distinctive.

5.3. The words “financial” and “advisors” incorporated into two of the disputed Domain Names, whilst purely descriptive, are words appearing in some of the registered trademarks of companies within the Complainant’s AXA group, particular the US trademarks AXA FINANCIAL and AXA ADVISORS, making confusion with them likely.

5.4. Because a number of companies within the Complainant’s AXA Group incorporate the word FINANCIAL in their trademark names, the words “financial” and “group” incorporated into two of the disputed Domain Names are likely to cause confusion with Complainant’s trademarks.

5.5. Respondent has no rights or legitimate interests in respect of the disputed Domain Names. Complainant has never licensed or permitted the Respondent to use its trademarks or Domain Names incorporating its trademarks. There is no evidence of the Respondent’s use of or demonstrable preparations to use the Domain Names or a name corresponding to the Domain Names in connection with any offering of goods or services that would be bona fide. Respondent has never been commonly known in the normal course of business by the trademark or service mark AXA, or the word AXA in conjunction with FINANCIAL, ADVISORS or GROUP. There is no evidence of a bona fide non-commercial or other legitimate fair use of the Domain Names by Respondent.

5.6. Respondent has registered and used the disputed Domain Names in bad faith.

5.7. Respondent could not reasonably have been unaware of Complainant’s fame internationally and in Hong Kong, since Complainant’s companies are well advertised and have often been commented on in the media. Respondent must have known of Complainant’s trademarks when registering the disputed Domain Names. Respondent must have intended to benefit by trading on Complainant’s good name and goodwill.

5.8. Respondent has further revealed bad faith by registering the Domain Names and not yet making any use of them except in the form of token or “parking” websites in the nature of “coming soon” with ISP-related sales information and advertisements, thereby constituting passive holding.

5.9. Complainant requests that the disputed Domain Names be transferred to Complainant.

B. Respondent

5.10. The Respondent did not acknowledge any contact, did not make any submissions and has not denied the Complaint.

6. Discussion and Findings

6.1. Paragraph 4(a) of the Policy states:

“You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

6.2. The Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

6.3. The Complainant refers to the Respondent’s stated email address that incorporates the Internet location “www.meridianglobal.net,” and Complainant also refers to a company named Meridian Global that has an Internet presence and email address both at “www.meridianglobal.com” (Complaint Annex 29), and further appears to assume that these companies are related. The Panel has not been presented with any evidence that <meridianglobal.net> (Respondent) and <meridianglobal.com> are in any way connected, however in the circumstances this has not had any bearing on the final Decision.

Whether the Domain Names are Identical or Confusingly Similar to a Trademark

6.4. The disputed Domain Names <axafinancialadvisors.com>, <axafinancialadvisors.net>, <axafinancialgroup.com> and <axafinancialgroup.net>, as registered by the Respondent, all contain the well known trademark AXA that has been registered previously in many forms by Complainant. The gTLD suffixes “.com” and “.net” are of no consequence for the determination of confusing similarity. Two of the Domain Names contain the term AXA FINANCIAL which corresponds to Complainant’s US trademark No. 2 546 261, and two of them contain the term AXA ADVISORS which corresponds to Complainant’s US trademark No. 2 546 262. Two of the Domain Names contain the word GROUP which, in context, is regarded by this Panel as alluding to the group structure of AXA companies and to the Complainant’s international trademark No. 490 217, GROUPE AXA INTERNATIONAL. Complainant does not claim exclusive rights to use the words FINANCIAL or ADVISORS other than in its marks as registered. Nevertheless the permutations of the words AXA, FINANCIAL, ADVISORS and GROUP in the disputed Domain Names leave no room for doubt that each of the disputed Domain Names is confusingly similar to one or more of the Complainant’s trademarks and would lead people to believe erroneously that the Domain Name was associated with Complainant. The Panel finds for Complainant in terms of Paragraph 4(a)(i) of the Policy.

Whether Respondent has Rights or Legitimate Interests in Respect of the Domain Names

6.5. The Complainant has to prove that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names. The trademark AXA is a made-up and distinctive word by which the Complainant is well known. The Complainant states in evidence that it has not licensed its trademarks or Domain Names to the Respondent nor entered into any relationship that could give the Respondent any right to use them.

6.6. The Respondent has not denied the Complainant’s claims either generally or through any of the specific responses provided for in Paragraph 4(c) of the Policy. Respondent does not claim to have used the Domain Names or any names corresponding to the Domain Names in connection with a bona fide offering of goods or services, or to have been commonly known by any of the Domain Names, or to have made a legitimate noncommercial or fair use of them. The Respondent has not demonstrated a legitimate interest in the Domain Names in any other way. The Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Names in the terms of Paragraph 4(a)(ii) of the Policy.

Whether the Domain Names Have Been Registered and Are Being Used in Bad Faith

6.7. In accordance with Paragraph 4(a)(iii) of the Policy the Complainant must prove that the Domain Names have been registered and are being used in bad faith. Paragraph 4(b) lists four circumstances that shall be evidence of the registration and use of a Domain Name in bad faith. However, these four circumstances are without limitation and bad faith may be found otherwise, especially where a Respondent has made no use of the Domain Name other than to hold it passively and has submitted no formal response to the Complaint. Sub-paragraph (iv) of Paragraph 4(b) reads:

“(iv) by using the domain name, you 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 location.”

6.8. The Respondent has registered Domain Names corresponding closely to another company’s family of trademarks that include a distinctive made-up word and are well known internationally. In so acting the Respondent cannot have had any other reasonably plausible intention than for their source and affiliation to become confused with the Complainant’s trademarks for an ultimate purpose of commercial gain. The Panel finds that the Domain Names were registered in bad faith in contravention of sub-paragraph (iv) above.

6.9. The question of whether passive holding constitutes use has been encountered frequently since the early seminal case of Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), which is cited in the present Complaint. As pointed out by Andrew F. Christie, the Panelist in Telstra, “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.” The Panel finds the circumstances of the passive holding of the Domain Names in the present case to constitute use in bad faith.

6.10. The evidence points to the address and fax number given by Respondent in the registration document being false, and indeed flippant, constituting a further component of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003); Audi AG v. Hans Wolf, (WIPO Case No. D2001-0148); Oxygen Media, LLC v. Primary Source, (WIPO Case No. D2000-0362); Diversified Gestao e Investimientos Lda. v. Krikor Doumanian, (WIPO Case No. D2000-1749); Southern California Edison Company v. John Simms, (WIPO Case No. D2002-0369); Wachovia Corporation v. Peter Carrington, (WIPO Case No. D2002-0775)).

6.11. Complainant’s distinctive made-up trademark and associated business descriptors are well advertised and well known internationally. On the totality of the evidence and taking note particularly of the Respondent’s assembly of those words variously into the disputed Domain Names, it is inescapable that Respondent must have been aware of the famous trademarks it was appropriating. This action is sufficient to amount to bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

6.12. In summary, as concluded in 6.4 above the disputed Domain Names are confusingly similar to the Complainant’s trademarks in the terms of Paragraph 4(a)(i) of the Policy. As concluded in 6.6 above, the Respondent has no rights or legitimate interests in the Domain Names in the terms of Paragraph 4(a)(ii) of the Policy. For the reasons given in 6.8, 6.9, 6.10 and 6.11 above, the Respondent has registered and is using the Domain Names in bad faith in the terms of Paragraph 4(a)(iii) of the Policy. The Complainant has proven all three elements required by Paragraph 4(a) of the Policy and accordingly the Panel decides for the Complainant.

7. Decision

The Decision of the Panel is that each of the disputed Domain Names <axafinancialadvisors.com>, <axafinancialadvisors.net>, <axafinancialgroup.com>, <axafinancialgroup.net> is confusingly similar to one or more trademarks in which the Complainant has rights, including the trademarks AXA; AXA FINANCIAL; AXA ADVISORS; and GROUPE AXA INTERNATIONAL. Respondent has no rights or legitimate interests in the disputed Domain Names. Respondent has registered and is using the disputed Domain Names in bad faith. 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 Names <axafinancialadvisors.com>, <axafinancialadvisors.net>, <axafinancialgroup.com>, <axafinancialgroup.net> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist

Dated: August 31, 2004