WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AXA China Region Limited v. KANNET Limited
Case No. D2000-1377
1. The Parties
The Complainant is AXA China Region Limited, a company incorporated in Bermuda with limited liability, whose registered address is at Cedar House, 41 Cedar Avenue, Hamilton HM 12, Bermuda and principal place of business is at 20th Floor, AXA Centre, 151 Gloucester Road, Wanchai, Hong Kong, S.A.R. China.
The Respondent is KANNET Limited whose address is Kantone Centre, 1 Ning Foo Street, Chai Wan, Hong Kong, S.A.R. China.
2. The Domain Name and Registrar
The domain name at issue is "axachinaregion.com", which domain name is registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, U. S. A.
3. Procedural History
The Complaint submitted by the Complainant, AXA China Region Limited, was received by e-mail on October 12, 2000, and in hardcopy on October 17, 2000, by the WIPO Arbitration and Mediation Center (the Center). An acknowledgment of receipt was sent by the Center to the Complainant on October 13, 2000.
On October 13, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant, as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy (the Supplemental Rules), Paragraph 4(b); (2) confirm that the domain name at issue is registered with Network Solutions, Inc.; (3) confirm that the person identified as the Respondent is the current registrant of the domain name; (4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (5) confirm that the Uniform Domain Name Dispute Resolution Policy (the Policy) applies to the domain name; (6) indicate the current status of the domain name.
On October 17, 2000, NSI confirmed by reply e-mail that the domain name "axachinaregion.com" is registered with NSI and that the Respondent, KANNET Limited, was the current registrant of the name. The registrar also forwarded the requested Whois details and, also, confirmed the applicability of the Policy to the domain name at issue.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) and Paragraph 5 of the Supplemental Rules, the Center has verified that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules. A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on October 12, 2000. The Panel has independently determined and agrees with the assessment of the Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and the Supplemental Rules. Payment in the required amount to the Center has been made by the Complainant.
No formal deficiencies having been recorded, on October 20, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of November 8, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail, facsimile, and post/courier in accordance with the contact details indicated in the Complaint and specified in NSI’s Whois confirmation.
A timely response was submitted to and received by WIPO on November 7, 2000, when a reply to the Respondent's Response from the Complainant was also made.
Having received Sang Jo JONG’s Statement of Acceptance and Declaration of Impartiality and Independence, on November 15, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Sang Jo JONG was formally appointed as the Sole Panelist. The Projected Decision Date was November 29, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
4. Factual Background
The trademark upon which the Complaint is based is "AXA" registered and being in actual use by companies controlled and owned by the AXA group on a worldwide basis. Annex C to the Complaint comprises details of the Complainant’s trademark registrations around the world. The Complainant is a part of the AXA group. It operates in Hong Kong under the name of AXA China Region Limited since February 8, 1999.
The contested domain name “axachinaregion.com” was registered by the Respondent and active with an webpage.
5. Parties’ Contentions
Identicalness or confusing similarity as between the domain name and trade marks
The Complainant contends that the word "AXA" in the domain name “axachinaregion.com” is identical with the Complainant, AXA China Region Limited’s trademark. And, also, the domain name at issue is identical or confusingly similar to the websites of the Complainant ("axa-chinaregion.com") and that of the AXA group ("axa.com").
Respondent’s rights or legitimate interests in the domain name ?
Being unaware of any active website under the domain name "axachinaregion.com" operated by the Respondent, the Complainant contends that the Respondent has no rights or legitimate interests in the contested domain name.
Bad faith on the part of the Respondent
According to the Complainant's Complaint, the Respondent must have been aware of the reputation of the Complainant's trademark "AXA" and the connection between the trademark and the Complainant "AXA China Region Limited" and, also, any use of the disputed domain name by the Respondent would misrepresent an association with the Complainant and AXA group and its goodwill. The Complainant contends that, in view of the reputation of its trademark and possible passing off of its trademark by any use of the disputed domain name, the Respondent did not only register the domain name in bad faith but also used it in bad faith.
First, in relation to the identicalness or confusing similarity as between the contested domain name and the Complainant's trademark, the Respondent simply points to the fact that the word "AXA" in the disputed domain name stands for an acronym of "Ancient Xizang (Tibet) Autonomous China Region."
Secondly, as to the question of whether the Respondent has any rights or legitimate interests in the domain name, it contends that it is in the business of providing web design and hosting services (including domain name registration) for which the domain name "axachinaregion.com" was registered and an active website was being developed on behalf of its client, a Buddhist religious group.
Finally, with regard to bad faith, the Respondent emphasizes the fact that the registration of the disputed domain name was made on behalf of its client whose business is unrelated to, and unassociated with, the Complainant's business and its intention to make its best endeavor not to cause any confusion amongst the public.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) 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,
2) that the Respondent has no rights to or legitimate interests in the domain name at issue; and,
3) that domain name at issue has been registered and used in bad faith.
Identicalness or confusing similarity as between the domain name and trademarks
The Panel finds that the domain name “axachinaregion.com” is confusingly similar to the Complainant's trade mark "AXA." The difference between the domain name at issue and the Complainant’s mark is the addition of the suffix "chinaregion.com." The Panel considers that these suffixes are generic and that they do not effectively distinguish the Respondents’ domain name. This is consistent with earlier decisions that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate if the other elements of the domain name comprise a mark or marks in which another party has rights. See Cellular One Group v. Paul Brien, Case No. D2000-0028; The British Broadcasting Corporation v. Jaime Renteria, Case No. D2000-0050; Parfums Christian Dior v. 1 Netpower, Inc., Case No. D2000-0022.
Nor does it matter to the identicalness between the domain name and the trademark whether the word "AXA" in the domain name “axachinaregion.com” is an acronym of "Ancient Xizang (Tibet) Autonomous China Region," the name of a website developed for the Respondent’s client, or simply an identical word to the Complainant's trademark. See Viacom International Inc. v Sung Wook Choi and M Production, Case No. D2000-1114. Respondent’s intention either to register or to use the domain name at issue as an acronym for his client's website name may well be discussed again, however, in dealing with the issue of the Respondent's rights and bad faith.
Respondent’s rights or legitimate interests in the domain name
Although the parties' contentions conflict each other, it is clear both from the Center’s printout of the webpage and a letter dated November 27, 2000 from the Complainant that the Respondent is operating a website under the domain name at issue. And, also, a letter dated October 20, 2000, enclosed in the Response by the Respondent states that a web site is being developed for "Ancient Xizang (Tibet) Autonomous China Region.com" for its client, a Buddhist religious group. Respondent's legitimate interests in the domain name may be implied from its acronymous connection with the name of the web site at issue. By contrast, the Reply to the Respondent's Response from the Complainant is not enough to rebut the Respondent's contention that the Respondent used, or made demonstrable preparations to use, the domain name at issue. By a small margin of the evidence, accordingly, the Panel finds that the Respondent has rights or legitimate interests in the domain name at issue.
Bad faith on the part of the Respondent
It is not clear to the Panel whether the Respondent's "bad faith" has been proved by the Complainant's mere allegation on the reputation of the Complainant's trademark and its possible passing off by any use of the domain name. Taking into account the above finding that the Respondent has rights or legitimate interests in the domain name at issue, the Complainant should have presented more specific evidence to prove the issue of bad faith. See Avnet, Inc. v. Aviation Network, Inc., Case No. D2000-0046. Although the Complainant contends that the Respondent's offer to transfer the domain name at issue shows its intention to make profit from the registration of the domain name, there is not any clear evidence therefore except for a letter dated October 20, 2000, from the Respondent asking for the cost of registration, administration costs for transfer, etc. It appears to the Panel, however, that the Complainant fails to prove that the consideration in the Respondent's offer of transfer is in excess of the Respondent's out-of-pocket costs directly related to the domain name.
The Complainant attempts to demonstrate the Respondent's bad faith by arguing that any realistic use of the domain name at issue must result in passing off of the Complainant's trademark and a trademark infringement under the relevant laws in Hong Kong. It is beyond doubt, however, that the elements for "bad faith" or "legitimate interests" requirement under the Policy are not necessarily the same as the elements required for trademark infringement under a domestic law. This administrative proceeding and its consequent decision are not allowed to make a substantive decision on the legal issue of trademark infringement or unfair competition but only designed to solve a dispute concerning domain name registration in accordance with the Policy which is incorporated by reference into the Registration Agreement between the Respondent and the Registrar of the domain name at issue. See Avnet, Inc. v. Aviation Network, Inc., Case No. D2000-0046.
The Complainant has not satisfied the Panel that the Respondent had no rights or legitimate interest in the domain name, nor that the domain name was registered in bad faith. Consequently, pursuant to paragraph 4 of the Policy and paragraph 15 of the Rules, the Panel decides that the Respondent shall not be required to transfer the domain name "axachinaregion.com" to the Complainant.
Sang Jo JONG
Dated: November 29, 2000