Finaxa SA v. Hyacinthe Amados Djoko
Case No. D2005-0929
1. The Parties
The Complainant is Finaxa SA of Paris, France, represented by Selarl Marchais De Candé, France.
The Respondent is Hyacinthe Amados Djoko of Paris, France, represented by an authorized representative, United States of America.
2. The Domain Name and Registrar
The disputed domain name <myaxa.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2005. On September 2, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On September 2, 2005, Go Daddy Software transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 16, 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 September 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2005. The Response was filed with the Center on October 12, 2005.
The Center appointed Mr. William Lobelson as the sole panelist in this matter on October 25, 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.
On November 23, 2005, the Panel issued a procedural order and invited the parties to bring additional information.
The Respondent replied on December 8, 2005, and the Complainant filed a rebuttal to the Respondent’s observations on December 15, 2005.
4. Factual Background
The Complainant is Finaxa, a French insurance company, which owns numerous trademark registrations worldwide and domain names formed with the name AXA.
The contested domain name is <myaxa.com>, and was registered on May 9, 2005, through GoDaddy Software, Inc. At the time when the Complaint was filed, the domain name was parked on the GoDaddy home page, and the corresponding WHOIS did not reflect the identity of the domain name owner.
5. Parties’ Contentions
The Complainant alleges that the contested domain name <myaxa.com> is confusingly similar to its trademarks AXA and, in this regard, relies upon earlier UDRP decisions, i.e.: <my-airfrance.com> and <mysony.com>, to support its contentions.
The Complainant also states that the Respondent has no right or legitimate interest in the domain name for the parties are not connected and also because the domain name is parked on its Registrar’s website and is not directed towards any active website.
The Complainant asserts that the Respondent has registered the domain name in bad faith for he could not ignore at the time of registration the rights vested in the trademark AXA as well as the notoriousness thereof. The Complainant also stresses that the Respondent’s identity is concealed as it is not available in the WHOIS database. He further asserts that the domain name is passively used in bad faith, for the same reasons as above.
The Respondent develops a lengthy and detailed response to all of the Complainant’s contentions.
He first denies that the domain name is confusingly similar to the trademark AXA and claims that the cases <my-airfrance.com> and <mysony.com> are not relevant in the present context. The Respondent explains that the addition of “my” right before “axa” results in a combination of its own within which “axa” is not detachable and loses individuality. He states that, contrary to “my-airfrance” or “mysony”, the element “my” within “myaxa” would not necessarily be understood as the possessive pronoun, because it merges with “axa” to result in a phonetic and conceptual name having different possible pronunciations and meanings.
The Respondent alleges that he has a legitimate interest in the domain name <myaxa.com>, as “myaxa” would stand for “Meeting of Young Africans Exchange Association”, an association which he is presently developing. The domain name is intended to be used in relation to the Association’s website, which is currently under construction.
The Respondent contests the Complainant’s assertions on bad faith issues and points out that he did not conceal his identity for fraudulent reasons, but only for the purpose of safeguarding privacy and security until the association website is developed, and that, in any event, he uncovered his identity immediately upon receiving the Complaint.
He also emphasizes that he has not engaged in a reprehensible cybersquatting pattern of conduct for he does not hold numerous domain names formed with third parties marks, nor does he speculate over the contested domain name. The Respondent further highlights that he has not used the contested domain name to attract Internet users towards a misleading web or with an intent to unduly benefit from the Complainant’s goodwill.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by the Complainant to merit a finding that the Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) the Respondent’s 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 respect of the domain name; and
(iii) the Respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The contested domain name <myaxa.com> reproduces entirely the Complainant’s trademark AXA.
While the Complainant sustains that this is sufficient to cause confusion among the public, which would understand the domain name as a derivation of the notorious mark AXA, the Respondent replies that the structure of the domain name does not necessarily imply that the targeted public would construe the same as the association of the possessive pronoun MY and the insurance service mark AXA, because the syllable MYA forming part of the domain name has different possible meanings (short for “Million Years Ago”, female first name, short for African name Myeisha).
The Panel tends to agree with the Respondent that the earlier cases <mysony.com> and <my-airfrance.com> are not necessarily applicable in the present case for the Complainant’s mark is formed with three letters only and in this respect should only benefit from a narrow scope of protection, and also because there is no clearcut partition between MY and AXA so that the mark AXA is likely to lose its individuality within the domain name <myaxa.com>.
But on the other hand, and contrary to the Respondent’s assertion, it is a fact that the name “myaxa” does not exist as such and thus has no meaning of its own.
In view of the facts that the notoriousness of the mark AXA is established by the documents supplied by the Complainant and that the Panel is also aware that it has become a common practice for trademark owners to develop personalized customer services under their housemark preceded with the possessive pronoun MY, the Panel believes therefore that the majority of the public is very likely to understand <myaxa.com> as a derivation of the Complainant’s well-known trademark, serving to designate a specific online extranet service for instance, rather than a reference to the female names Mya or Myeisha or the abbreviation of Million Years Ago, as the Respondent claims.
The Panel decides therefore that the contested domain name is confusingly similar to the Complainant’s trademark AXA.
B. Rights or Legitimate Interests in the Domain Name
The Complainant supports its contentions that the Respondent has no right or legitimate interest in the contested domain name by sustaining that the parties are not connected, that the Respondent was not authorized by the Complainant to use the domain name, and that the domain name is just being parked on the Registrar’s web page. Further, the Complainant asserts that the domain name owner’s identity is kept confidential.
The Respondent acknowledges that he is not connected to the Complainant, emphasizes that he disclosed his identity immediately upon receiving the Complaint, and is currently developing an association named “Meeting of Young Africans Exchange Association”, or MYAXA, together with a website (presently under construction).
The Respondent explains, in response to the question raised by the Panel in the Procedural Order dated November 23, 2005, that he preferred the short MYAXA - standing for “Meeting of Young Africans Exchange Association” - rather than MYAEA, for the latter is not pronounceable.
In support of its assertions, the Respondent files affidavits executed by himself and some of his relatives as well as screenshots of what he describes as the future website of the Association.
The Panel must observe that the Respondent’s assertions are not supported with any material and objective evidence.
The affidavits appear inherently subjective, and the Respondent does not produce any official document evidencing the existence or incorporation of his association.
In response to the Procedural Order issued on November 23, 2005, the Respondent explains that for the time being, he has not found it necessary to officially constitute or incorporate his association because he is still working on forming a stronger coalition with various persons and organizations.
The Panel must admit that a non profit association does not need to be officially incorporated to exist.
It is also considered by the Panel that the screenshots of the Respondent’s website under construction can only be regarded as an indication that the Respondent has undertaken preparations for making use of the contested domain name.
Hence, the claim that the Respondent has a legitimate interest in the domain name is only supported by his assertions, which, however, appear plausible to the Panel.
The time elapsed since the registration of the domain name (May 9, 2005) up to now is not unreasonable and it is the Panel’s opinion that it is conceivable that the Respondent’s website was still under construction.
Besides, the Respondent points out, in response to the Procedural Order dated November 23, 2005, whereby he was asked to justify why his website is not on line yet, that he was advised by his Counsel not to launch the website until the present domain name dispute is resolved.
The Panel has no objective reason to question the sincerity of the Respondent’s claims that an association named “Meeting of Young Africans Exchange Association”, or MYAXA is being developed.
When balancing the claims of the Complainant on the one hand and the prima facie evidence put forward by the Respondent on the other hand, the Panel is of the opinion that the benefit of the doubt must be given to the Respondent.
The Panel finds therefore that the Respondent has brought prima facie evidence of having a legitimate interest in the contested domain name.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the Domain Name has been used and registered in bad faith if:
(i) circumstances indicating that the Respondent has registered and has 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on its website or location.
The Complainant claims that the Respondent has registered the domain name in bad faith because he could not ignore the rights vested in, and the notoriousness of, the trademark AXA at the time of registration and thus attempted to exploit the Complainant’s goodwill for his own profit and because he registered the domain name while concealing his identity. He further sustains that the domain name is passively used in bad faith for it does not resolve to an active website.
The Respondent reiterates that he has registered the domain name with the intent to develop the website of his association, “Meeting of Young Africans Exchange Association”, emphasizes that he disclosed his identity when responding to the Complaint, and points out that he has not engaged in a cybersquatting pattern of conduct.
The notoriousness of the Complainants’ trademark AXA - widely evidenced by the documents filed with the Complaint - is not sufficient per se to characterize the bad faith intentions of the Respondent when registering the contested domain name1.
The Complainant does not demonstrate that the Respondent has registered the domain name with a view to speculating over the same or that the Respondent owns a series of domain names incorporating third parties well-known trademarks, which could have been an indication that the Respondent is engaged in a cybersquatting pattern of conduct2.
The Complainant does not sustain that it uses or owns a trademark for “My Axa” and that the registration of the contested domain name prevents it from reflecting such a mark on the Internet.
It is not established therefore that the Respondent had the Complainant’s mark in mind when he registered the contested domain name.
The Respondent’s assertions that he registered the domain name with an intent to develop the website of his association, “Meeting of Young Africans Exchange Association”, must be accepted as prima facie evidence that the contested domain name has not been registered in bad faith and in fraud of the Complainant’s rights3.
The fact that the Respondent kept his identity undisclosed at the time of registration may appear suspicious, but, in the present case, this cannot be regarded as an indication of bad faith. The Panel acknowledges that the Respondent has revealed its name and address when responding to the Complaint and even appointed a representative for responding to the Complainant’s claims. The Respondent therefore has not attempted to remain anonymous nor has he tried to evade responsibility.
The Complainant further claims that the contested domain name is used in bad faith, precisely because it is not actively used. It does not resolve to a website of the Respondent, but is simply parked on his Registrar’s home page.
The Respondent replies that he has postponed the launch of his website until the present domain name dispute has concluded.
Not only is the Panel of the opinion that such an argument is sensible, but it also finds that the Complainant fails to substantiate its claim that the domain name, being parked on the Registrar GoDaddy Software’s home page (as reproduced in the Complaint), is, in the circumstances of this case, used to divert the Complainant’s customers or to take unfair advantage of a deliberately created confusion with the goodwill and business of the Complainant.
According to the arguments and evidence presented to the Panel, the Respondent does not appear to be involved in a business which would compete with that of the Complainant, nor does he use the domain name in relation with such insurance services. His website, which is currently under construction, does not appear to be dedicated to insurance services4.
The Panel has no reason at present, in view of the elements and arguments filed by the parties, to question the good faith of the Respondent.
In the benefit of the doubt, the Panel must give credit to the Respondent’s statement that the domain name <myaxa.com> has been registered with a view to developing the website of the association, “Meeting of Young Africans Exchange Association”, also named MYAXA.
If such is really the case, the registration and use of the contested domain name would not constitute a violation of the Complainant’s trademark rights. The Respondent is therefore strongly encouraged to officialize its Association and direct the disputed domain name towards the website of said Association in the most reasonable timeframe, in order to consolidate the presumption of good faith it benefits from.
However, it is not for this Panel to speculate or in any way anticipate the reasoning and finding in an eventual national court, inter alia, because such proceeding would be based on different procedural and substantive rules. As an example, in a national court case there would be more evidence available and an oral hearing involving the parties.
In conclusion, in view of the elements and arguments filed by the parties, the Panel finds, on the balance of probabilities, that it is not established that the disputed domain name was registered and used in bad faith.
For all the foregoing reasons, the Complaint is denied.
Date: December 21, 2005
1 K2r Produkte AG v. Jeremie Trigano, WIPO Case No. D2000-0622: “Even if evidence of fame were supplied, this panel is not prepared to make a legal determination on such a contentious issue as a mark’s famousness. This is a complex trademark infringement claim that is more properly left to courts of law.”
2 Cell Control Biomedical Laboratories GmbH v. Mike Flowers, WIPO Case No. D2000-1257: “There are no obvious circumstances to prove that the Respondent has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names to the Complainant, or to a competitor of the Complainant, for a valuable consideration in excess of documented out-of-pocket costs directly related to the Domain Names, or to prevent the Complainant from reflecting the mark CellControl in a corresponding domain name, or has registered the Domain Names primarily for the purpose of disrupting the business of a competitor, or has intentionally attempted to attract (for commercial gain), Internet users to the corresponding websites by creating a likelihood of confusion with the Complainant’s trademark. The Respondent has expressly stated in the communications with the Complainant that the Domain Names are not for sale and the parties’ business activities are in completely different areas – the Respondent is not, and is not likely to be, a competitor of the Complainant. Nor can it be said that the Domain Names have been used in bad faith, considering the fact that the Respondent seems to have a serious business plan for the use of all three Domain Names.”
3 IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420: “The Panel finds the Respondent has adequately explained the reason for the delay in the development of the disputed domain name. Further, the Respondent has provided evidence that the disputed domain name has in fact been used to date, albeit only sporadically. The Complainant’s basis for alleging that the Respondent had no intention of developing the disputed domain name (other than the time already elapsed to date) is the statement in the Respondent’s email of February 4, 2002, that he was “currently negotiating terms with another party”. The Respondent explained that this statement was misconstrued. He claims that he was negotiating terms with another party for additional finance for his IKB software product, not for the transfer of the disputed domain name. In light of these explanations from the Respondent, the Panel finds that the Complainant has failed to prove the disputed domain name was registered and is being used in bad faith.”
4 IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2000-0420 and K2r Produkte AG v. Jeremie Trigano, WIPO Case No. D2000-0622: “It is possible for a term to be used as a trade mark in different industries simultaneously without conflict: Exclaim Technologies v. Net Exclamation, AF-0160. Trademark and unfair competition law permit multiple users to trade under identical marks so long as the consumer is not confused as the source or origin of the goods and services: 2E Corp. v. Imagisys, Inc., AF-0162. The respondent’s reason for registering the domain name (that it was short, simple and easy to remember) provide an entirely reasonable and proper explanation for the respondent’s choice of this word: Zero Int’l Holding GmbH & Co. v. Beyonet Services et. al, D2000-0161. The respondent has no interest in confusing consumers who are seeking cleaning products with his mother’s Paris boutique. The panel finds that the disputed domain name is a derivative of the name of the Paris store and thus the respondent registered a domain name that corresponds to a name that was in use in connection with a bona fide offering of goods or services prior to notice of this dispute. It is not the only possible derivative of the name of the store but it is a logical and reasonable one. There is no reason to question the respondent’s explanation as to how he came to choose the name K2r.com. The panel is fortified in reaching this conclusion by the fact that the complainant and the respondent’s mother are not engaged in competition with each other (so there is little or no likelihood of confusion); the absence of any evidence that the respondent had any reason to seek to divert customers from the complainant to his mother’s store, even assuming (as has not been demonstrated) that the respondent was aware of the complainant’s mark and the absence of any evidence to support the complainant’s assertion that its mark is famous (although the panel is prepared to accept that it is well-known in the field of household cleaning).”