The Complainant is Axis AB of Lund, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Binnian zheng of Guangzhou, Guangdong, China, represented internally. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with HiChina Zhicheng Technology Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 15, 2014. On December 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 17, 2014, 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. On December 17, 2014, the Respondent replied the Center by an email written in English.
On December 17, 2014, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceeding. On December 18, 2014, the Complainant confirmed that its request that English be the language of the proceeding by email to the Center. The Center received email communications from the Respondent in Chinese on December 21, 2014, in which the Respondent did not comment on the language of the proceeding.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on December 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2015. The Response was filed with the Center on January 11, 2015.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on January 26, 2015. 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
The Complainant is a Swedish company providing products and services for security and surveillance under the AXIS trademark in many countries. The Complainant has produced registration information of several trademarks, inter alia: AXIS, China trademark, Registration No. 5795126, registered on January 28, 2011; AXIS COMMUNICATIONS, China trademark, Registration No. 3602034, registered on May 14, 2011.
According to the WhoIs data and the Registrar's verification response, the Respondent is Binnian zheng. The Respondent owns the Disputed Domain Name which was registered on October 6, 2012. 5. Parties' Contentions A. Complainant
The Complainant requests the Disputed Domain Name be transferred to the Complainant based on the following grounds:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the registered owner of numerous AXIS trademarks, which are well-known worldwide. When the Complainant registered the AXIS trademark in China, it originally used the Chinese company name of "艾克西斯公司", but the Complainant changed its Chinese company name to "安讯士有限公司" thereafter. The Complainant established its first office in China in 1996 and now owns five offices in China. One of the Complainant's offices in China is 上海安讯士网络通讯设备贸易有限公司. The Disputed Domain Name is confusingly similar to the Complainant's AXIS trademark since it misspells the AXIS trademark by inverting the second and the third letter of "AXIS" , with the addition of a letter "p" and the generic Top-Level Domain ("gTLD") ".com", which do not grant distinctiveness to the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Disputed Domain Name. No license or authorization has been given by the Complainant to the Respondent to use the trademark. The Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant. The Respondent is not commonly known by the name "Axis". Furthermore, the Respondent is using the Disputed Domain Name for the same business as the Complainant, strengthening the notion that the use of the Disputed Domain Name is not legitimate. The Respondent had been using the Disputed Domain Name for the purposes of confusing Internet users and for competitive purposes, which cannot be considered legitimate use.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Complainant's AXIS trademark has been registered and used long before the registration of the Disputed Domain Name. Moreover, the AXIS trademark is well-known in the area for surveillance and security. It is obvious that the Respondent was aware of the rights the Complainant has in the AXIS trademark and the value of said trademark at the point of the registration. Therefore, the Disputed Domain Name was registered in bad faith. Moreover, the Respondent is using the Disputed Domain Name for competitive purposes and is directly competing in the same business as the Complainant. The Complainant's Chinese characters for "AXIS", 安讯士 are prominently displayed on the website to which the Disputed Domain Name resolves. The Respondent's use of these characters clearly shows that the Respondent is trying to create the false impression that it actually is the Complainant, or that it has a close relationship with the Complainant. By using the Disputed Domain Name for competitive purposes, the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for the Respondent's own commercial gain. B. Respondent
The Respondent indicated in its first email that "axs" is a Chinese phonetic of its "website brand Axis AnXunShi abbreviation", and "ip" stands for its business products. Afterwards, the Respondent filed the Response to argue that it did not reproduce the Complainant's websites and trademarks. The Respondent also stated that the Complainant does not own any legitimate interests in the "安讯士" element, and that the Respondent uses the Disputed Domain Name legitimately and fairly. 6. Language of the Proceeding
Paragraph 11(a) of the Rules provides that "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".
The Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. ltd.,WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") further states: "in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement". (See paragraph 4.3 of WIPO Overview 2.0).
In this case, the Registration Agreement is in Chinese. Therefore, the language of the administrative proceeding should generally be Chinese according to paragraph 11(a) of the Rules. However, the Complainant requests the language of the proceeding should be English.
For the following reasons, the Panel decides that the language of the proceeding shall be English.
1. The website to which the Disputed Domain Name resolves has both Chinese and English content, which suggests that the website is designed to attract Internet users from around the world rather than only Chinese users (Dolce & Gabbana S.r.l. v. Shuangzhi Lee,WIPO Case No. D2013-1103);
2. The Panel finds that the Complainant is not in a position to conduct this proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
3. The Center's communication to the Respondent uses both English and Chinese and has given the Respondent an opportunity to object to the Complainant's request. The Respondent's first email to the Center was written in English and the Respondent did not object to the Complainant's request for English to be the language of the proceeding.
4. Given equality of the two parties and due expedition of the administrative proceeding, the Panel decides the proceeding should be conducted in English and accepts the Response made in Chinese. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]"
The Complainant has established that it is the owner of the AXIS trademark. The Complainant's Chinese company name, in which it holds the registration for the AXIS trademark in China is "安讯士有限公司". Furthermore, one of the Complainant's offices in China is 上海安讯士网络通讯设备贸易有限公司.
The Disputed Domain Name, , incorporates the misspelled AXIS trademark with addition of one English letter "p", and the gTLD ".com". The only distinctive part of the Disputed Domain Name is "axsi", the difference between "axsi" and the AXIS trademark is that the second and third letters are inverted. However, given the visual impression of "axis" and "axsi", the similar pronunciation of "axis" and "axsi" as well as the fame of the AXIS trademark, the Panel finds such misspelling of the Complainant's AXIS trademark cannot distinguish the Disputed Domain Name from the AXIS trademark (Paragraph 1.10 of the WIPO Overview 2.0; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556). The addition of the letter "p" and the gTLD ".com" cannot distinguish the Disputed Domain Name from the Complainant's AxXIS trademark.
Given the visual impression and the similar pronunciation of "axis" and "axsi", the Panel still cannot distinguish the Disputed Domain Name from the Complainant's AXIS trademark. Moreover, the "ip" element will strengthen Internet users' confusion as the Complainant's business mainly provides IP-based network video solutions for security and surveillance.
The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant's AXIS trademark. The condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]"
Paragraph 4(c) of the Policy sets out the following several circumstances "[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent's] rights or legitimate interests to the [disputed] domain name for the purposes of paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The consensus view of UDRP panels on the rights or legitimate interests of a reseller or distributor under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.3 of the WIPO Overview 2.0, whereby: "[n]ormally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder […]." (See also, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; National Association of Realtors v. John Fothergill,WIPO Case No. D2010-1284).
The Complainant has established that it is the owner of the AXIS trademark. The Complainant has stated that it did not find any trademarks registered by the Respondent that contain the Axis element, and that the Complainant has no connection or affiliation with the Respondent. The Complainant also stated that it did not grant any authorization to the Respondent to use the AXIS trademark.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent contends that it has a legitimate interest in the "axs" and "安讯士" elements, but did not submit any evidence, such as trademarks and corporate registration documents, to indicate any rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy. The Panel also notes that the "安讯士" element is the distinctive part of the Complainant's Chinese company name as the registrant of the AXIS trademark in China and the Complainant's office in Shanghai. The Respondent indicated that the "axs" element of the Disputed Domain Name is the abbreviation of the Respondent's "Axis AnXunShi" and "安讯士" brand and the element of "ip" stands for its scope of business.
According to the record in the WhoIs data, there is no evidence showing that the Disputed Domain Name has any connection with the Respondent's name or the Respondent is commonly known by the Disputed Domain Name. The Disputed Domain Name is used to sell the Respondent's products, which is a commercial use.
Based on the above, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent's] domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy explicitly states, in relevant part, that "the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site 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] web site or location or of a product or service on [the respondent's] web site or location."
The Complainant's AXIS trademark has been registered in China and the registration is earlier than the registration of the Disputed Domain Name. The Respondent misspelled the AXIS trademark as the only distinctive part of the Disputed Domain Name. Such intentional registration shows the bad faith of the Respondent. The Panel finds the Disputed Domain Name was registered in bad faith.
According to the evidence submitted by the Complainant, the website to which the Disputed Domain Name resolves sells products for security and surveillance, such as network cameras and monitors. The Respondent's business under the Disputed Domain Name is similar to the Complainant's business under the AXIS trademark. On the top left-hand side of the home page of the disputed website, the Respondent uses the Chinese mark 安讯士, which is the Complainant's Chinese company name. At the very bottom of the disputed website, the Respondent states "Copyright (C) 2011-2013 AXS All Right Reserved". These features make the website under the Disputed Domain Name appear to be an official website of the Complainant or sponsored or endorsed by the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion. The Panel finds the Disputed Domain Name was used in bad faith as per paragraph 4(b)(iv).
According to the above reasons, the condition of paragraph 4(a)(iii) of the Policy has been fulfilled. 8. 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 Name be transferred to the Complainant.
Peter J. Dernbach
Sole Panelist
Date: February 9, 2015
Full & Egal Universal Law Academy