Recent Case Notes & Commentary

EVIDENCE VITAL IN UDRP CASES

AXA SA v AXA Management Consulting

Case No. DMD2017-0003

WIPO Case September 14, 2017


It is rare that one case can combine so many features that reflect, in one way or another, on the outcome of the case. This case is one of them, as:

  • The Respondent was not represented by a lawyer

  • The trademark is one of the most prominent in the world

  • The domain name was under a country code top level domain, .md (Moldova), about which there are not many disputes (only 3 this year)

  • There was a dispute about the language in which the proceeding should be conducted, as the registration agreement was in English and Romanian, the Complainant wanted English and the Respondent wanted Romanian.

  • The Complainant failed on two of the three elements that must be proved, rights and legitimate interests and registration and use in bad faith.


The Complainant was the prominent French insurance company AXA. It had several trademarks for AXA, registered prior to the Respondent registering the domain name <axa.md>, which was on May 24, 2006. The Respondent was established in Moldova on June 23, 2003. It provided  training and consultancy services and used the domain name for its website used to promote those services. Importantly, the Respondent held a registered trademark for AXA MANAGEMENT CONSULTING (with design) in the Republic of Moldova, and had held it since December 1, 2004.


THE LANGUAGE OF THE PROCEEDING

Although it was not the language of the registration agreement, which will usually be the language in which the proceeding is conducted) the Panelist , Ms Marilena Comanescu,  decided that the proceeding should be conducted in the English language. That was so because the parties had corresponded in English, the Respondent’s website was in English as well as Romanian and Russian, a previous domain name dispute between the parties was in English, the panellist was familiar with both languages and it would be unfair for the Complainant to be asked to incur further costs to translate the Complaint and annexes.


THE ISSUES

The Panelist had no difficulty in resolving the first issue under the UDRP, as the domain name, apart from the TLD, was identical to the trademark.


But on the second and third elements, the Complainant lost. The reason was that the evidence supported the Respondent’s case and not that of the Complainant. The decision is therefore, first and foremost a good illustration of how UDRP cases are won and lost on the evidence and why in Domain Times, we have always argued that parties and those who advise them, should regard evidence as the top priority of all matters to which they should give attention.


THE USE OF THE EVIDENCE

With a skilful use of the evidence, the Panelist found that the Respondent had a right or legitimate interest (RLI) in the domain name, because it had a trademark for AXA and the domain name that the Respondent chose was therefore merely reflecting the Respondent’s own trademark, which clearly gave the domain name a lot of legitimacy. We note here that although arguments on RLI can  become legally esoteric, there are two situations where a respondent’s case will be very strong: first, where the domain name  is just reflecting Respondent’s own trademark; and secondly where it is echoing a business name the Respondent used for its business. Both situations look and sound quite genuine as a general rule ( depending of course on the evidence). In the present case it was also significant that the Respondent had used its business name since June 2003, its own trademark had been registered since December, 2004 and it had registered the domain name after those events, namely in May, 2006 and in the ccTLD “.md” , corresponding to the Republic of Moldova. The facts and the sequence of events therefore had an air of authenticity about them.


Also, in the relevant Romanian language, the word “axa” has a generic meaning- a straight line- and there was no evidence of targeting the Complainant. Indeed, the Respondent was in the business of offering services different from those of the Complainant and there was therefore no copying. The choice of a Moldavian domain name was also clearly genuine as the Respondent had a business presence in that country.


Moreover, there was no evidence of “indications or references” to the Complainant’s trademark, showing the domain name had been registered“in good faith for promoting the Respondent’s business.”


The above findings clearly made it impossible to find that the domain name had been registered in bad faith and in any event, as it had been found that the Respondent had a right or legitimate interest in the domain name it would have been virtually impossible to prove the third element of bad  faith.


The Complainant’s success, we suggest, was due to two factors, first that the Respondent had adduced some very valuable evidence and secondly that the learned panellist had applied that evidence so that, in total, it was clear that the Respondent had a good defence to the claim.


The case is therefore instructive on the major issue, that evidence is vital to the success of any UDRP case.