WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Axis AB v. Roger Ralston, Directview Holdings, Inc

Case No. D2018-2058

1. The Parties

The Complainant is Axis AB of Lund, Sweden, internally represented.

The Respondent is Roger Ralston, Directview Holdings, Inc of Boca Raton Florida, United States of America (“United States”).

2. The Domain Names And Registrar

The disputed domain names <axis.guru> and <axissurveillance.com> are registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 9 and 13, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2018. An email communication from the Respondent was received on September 18, 2018. The Center informed the Parties that it would proceed to appoint the Panel on October 12, 2018

The Center appointed Marilena Comanescu as the sole panelist in this matter on October 30, 2018. 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.

The language of the proceeding is English.

4. Factual Background

The Complainant, Axis AB, was founded in 1984 in Sweden and currently it claims it is one of the global market leaders in network video, security cameras and video encoders. The Complainant employs about 3,000 employees and has a network of 90,000 partners in about 179 countries worldwide with reported sales turnover of SEK 8.6 billion in 2017. The Complainant has obtained many awards in the relevant industry.

Due to the extensive and long-term use, significant investments in the goods production, distribution and advertising, the trademark AXIS gained good reputation and international recognition in the security and surveillance sector.

The Complainant is the owner of more than 300 trademark registrations all over the world, such as the following:

- the United States trademark no registration no. 3459646 of June 21, 2006 registered on July 1, 2008 for AXIS, covering goods in class 9; and

- the United States trademark no registration no. 3131609 of May 20, 2004 registered on August 22, 2006 for AXIS COMMUNICATIONS with device, covering goods and services in classes 9, 35, 38 and 42.

The Complainant holds a significant number of domain names incorporating its trademarks, the principal one being <axis.com>.

The Complainant asserts that the Respondent registered as its partner in 2013, however the Respondent did not sell the Complainant’s goods and the Complaint has never authorized, licensed or permitted the Respondent to register any domain name comprising its trademark.

Prior to commencing the present proceedings, the Complainant sent several cease and desist letters to the Respondent asking to cancel the disputed domain names. Only the first letter sent in 2014 received a reaction in the sense that the recipient of the letter mentioned that they will look into the respective matter but no measure was taken and no other reaction was further received.

The disputed domain names were both registered on July 14, 2014. At the time of filing the Complaint, both disputed domain names were redirected to the Respondent’s website at <directview.com> where goods and services directly competing to those offered by the Complainant under its AXIS trademark were promoted.

When this Panel visited the websites corresponding to the disputed domain names, both were redirected to Complainant’s official website at <axis.com>.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its trademark AXIS, the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent registered and is using the disputed domain names in bad faith.

B. Respondent

The Respondent did not submit an official Response but rather an email communication asserting that it is an authorized reseller of the Complainant’s goods and that it does not hold any AXIS website.

6. Discussion And Findings

The Policy is directed towards resolving disputes concerning allegations of abusive domain name registration.

As part of the process, the Complainant must provide evidence and submissions in support of its Complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The Respondent is given full opportunity to respond.

Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:

(i) the disputed 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 the disputed domain name; and

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

Each of three elements must be established by the Complainant to warrant relief.

A. Identical or Confusingly Similar

The Complainant holds rights in the AXIS trademark.

The disputed domain name <axis.guru> reproduces the Complainant’s trademark AXIS without alteration.

The disputed domain name <axissurveillance.com> incorporates the Complainant’s mark in its entirety followed by the word “surveillance”. However, such addition does not eliminate the likelihood of confusion and the dominant and distinctive part of the disputed domain name remains the Complainant’s trademark.

Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.info”, “.guru”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.

Given the above, the Panel finds that the disputed domain names <axis.guru> and <axissurveillance.com> are confusingly similar to the Complainant’s trademark AXIS, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that, even if the Respondent is one of its registered partners, it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain names and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.

Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.

According to the Complaint, prior to registering the disputed domain names, the Respondent registered as a partner of the Complainant. Since panels have recognized that resellers using a domain name containing a complainant’s trademark to undertake sales related to complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name, in this case, the key question under this element is whether the Respondent’s use of the disputed domain names amounts to a bona fide offering of goods under paragraph 4(c)(i) of the Policy.

The current state of UDRP panel consensus in relation to this issue is helpfully summarized in the section 2.8 of the WIPO Overview 3.0, based on panel decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. According to the “Oki Data test”, several cumulative requirements will be applied in the specific conditions of a UDRP case, including whether the respondent must actually be offering the goods or services at issue, the respondent must use the site to sell only the trademarked goods and services and the respondent must accurately and prominently disclose the relationship with the Complainant, the trademark holder. In this case, according to the available record, previously the disputed domain names were directed to the Respondent’s own website where goods and services competing with the Complainant’s goods and services were offered, there was no indication regarding the Complainant’s goods and marks or regarding the relationship between parties and therefore the Oki Data test cannot apply.

Further, the Complainant clearly indicates the provisions of the legal agreements for partners which explicitly indicate that partners, resellers, third parties are not generally allowed to use the Complainant’s marks and, in limited exceptions, they can use the AXIS trademarks but only in approved versions and situations. In any case, there is no allowance to register or otherwise appropriate any AXIS trademark or to incorporate it in a domain name.

The Respondent chose not to challenge the Complainant’s allegations, nor reacted to the Complainant’s prior cease and desist letters. Its short email response and redirection of the disputed domain names to the Complainant’s own official website additionally confirms to the panel that the use of the disputed domain names is not in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, pursuant to Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant holds trademark registrations for AXIS in many jurisdictions worldwide. The disputed domain names were registered both on the same day in July, 2014.

According to both parties’ assertions, in 2013 the parties entered in a commercial relationship and the Respondent became an authorized partner of the Complainant. According to evidence submitted in the Complaint, such relationship involves explicit rules regarding the use of the Complainant’s trademarks.

Accordingly, it is not difficult for this Panel to infer that the Respondent had knowledge of the Complainant’s trademark and business, that the disputed domain names were registered with the Complainant’s trademark in mind and that the aim of the registration was to take advantage of the confusion between the disputed domain names and the Complainant’s rights.

Prior to the time of filing the Complaint, both disputed domain names were used to redirect Internet users to the Respondent’s official website, where goods and services similar to those offered under AXIS mark were promoted and there was no disclaimer or indication regarding the marks or goods of the Complainant. The Respondent is a commercial company operating in the same business as the Complainant. The Complainant’s letters to Respondent prior to filing the present Complaint remained unanswered.

One non-exhaustive bad faith scenario enumerated in the UDRP, under paragraph 4(b)(iii) presents the situation when the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. As detailed in section 3.1.3 of the WIPO Overview 3.0, in the UDRP procedure, the notion of “competitor” is extended beyond the concept of an ordinary commercial or business competitor, and covers inter alia, prior customers or business partners. In the present case, the Respondent included a commercial partner’s widely known trademark in two domain names without any approval, redirected the disputed domain names to its own webpage, and refused to participate in the present proceeding and provide appropriate arguments in its favor.

Also, the Panel concludes that the provisions of paragraph 4(b)(iv) of the Policy which provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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 [the respondent’s] website or location” applies in the present case and is evidence of registration and use in bad faith. Internet users searching for the Complainant would acces the Respondent’s website corresponding to the disputed domain names believing it belongs or is somehow associated with or endorsed by the Complainant.

For the above, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <axis.guru> and <axissurveillance.com> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: November 13, 2018