Complainant is Axis AB of Lund, Sweden, internally represented.
Respondent is Pierre Vial, Trinum, of Annecy-Le-Vieux, France and Alpium SARL of Crest-Voland, France. 2. The Domain Names and Registrars
The disputed domain names and (the “Domain Names”) are registered with Gandi SAS (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2018. On June 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 13, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On June 22, 2018, the Center notified the Parties in both English and French that the language of the Registration Agreement for the Domain Names was French. On June 25, 2018, Complainant requested for English to be the language of the proceeding, to which Respondent did not reply.
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 Respondent of the Complaint, and the proceedings commenced on June 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 23, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on August 2, 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. 4. Factual Background
Founded in Sweden in 1984, Complainant describes itself in the Complaint as “the global market leader in network video, security cameras and video encoders.” Complainant alleges that, in 1996, it launched the world’s first network camera and “since then has been a driving force behind the shift from analog to digital video surveillance.”
According to Complainant, its network video products “are installed in various public areas to enhance security including airports, motorways, universities, casinos and banks, etc.” Complainant’s annual sales in 2017 attained SEK 8.6 billion (roughly USD 1 billion).
Complainant holds nearly 300 trademark registrations worldwide, many of which include its mark AXIS (either in word form or stylized). One such mark, AXIS DIGITAL, was registered in France in August 1989. Its stylized mark, AXIS COMMUNICATIONS, was registered in France in March 1995. Complainant also holds a word mark AXIS, registered in Japan in June 1998.
Complainant opened its first office in France, Respondent’s country, in 1996. In 2005, Respondent became a “partner and reseller” of Complainant’s products.
The Domain Name was registered on December 26, 2002. As early as February 7, 2003, the Domain Name resolved to a website offering Complainant’s AXIS camera products for sale. Complainant alleges that it became aware of Respondent’s registration and use of the Domain Name in 2007 and that, during a business meeting, it asked Respondent to cancel the Domain Name. It is alleged further that Respondent agreed to do so, but never canceled the Domain Name or ceased using it for a website, “despite repeated reminders from Complainant.”
On June 4, 2015, Respondent registered the Domain Name . Both Domain Names resolve to the same website, where Respondent sells not only AXIS products but also Mobotix products, which do not appear to be Complainant’s products.
In September 2015, Complainant sent a cease-and-desist letter to Respondent, advising that Respondent’s registration and use of the two Domain Names violated Complainant’s trademark rights and the terms of the “Trademark and copyright user guidelines” issued to Complainant’s partners, distributors, and resellers. Complainant cited in particular section 1.2.4 of these user guidelines, which states:
“You may not register any domain name containing an Axis trademark, even if this domain name redirects to a page on the Axis website or to a page on your website selling Axis products.”
Complainant alleges that it followed up on the cease-and-desist letter during a November 2015 meeting with Respondent, at which time Respondent allegedly “undertook to cease the use” of the Domain Names. According to the Complaint, Complainant made several further requests during 2017, but Respondent never ceased using the Domain Names. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the AXIS mark through registration and use. The Panel finds that the Domain Name is identical to that mark, and that the Domain Name
is confusingly similar to the mark. This Domain Name contains the mark AXIS and adds the generic word “camera,” which describes the core product manufactured by Complainant.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Names. Respondent has not come forward to articulate or defend its motives in registering the Domain Names. In addition, Complainant has made it clear from the record here that it does not allow its resellers to register domain names which contain the AXIS mark. Respondent appears to be in clear breach of its obligations as a reseller, and, according to the undisputed record here, has tacitly acknowledged that it has no right to hold and use these Domain Names but has refused to carry out its promise to cease doing so.
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
With respect to each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Names in bad faith. Respondent was clearly aware of the AXIS mark, given the content presented at Respondent’s website shortly after the Domain Name was registered. By the time the second Domain Name was registered, the record here shows that Respondent was aware that Complainant objected to Respondent’s use of its AXIS mark in a domain name.
Respondent is making commercial use of the Domain Names in violation of Complainant’s trademark user guidelines for resellers, and Respondent’s website using the Domain Names sells products other than AXIS products. The foregoing conduct constitutes bad faith registration and use within the meaning of the above-quoted Policy paragraph 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii). D. Language of the Decision
The registration agreement for the Domain Names was in French, and Respondent is located in France. According to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a panel may choose a language other than that of the registration agreement. Among other factors, the panel may consider whether the respondent can understand the language of the complaint, as well as other indicia “tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” Here, the Panel observes that the Domain Names (as well as other domain names owned by Respondent) contain English words. In addition, the 2015 cease-and-desist letter from September 2015 was written in English. The undisputed record here indicates that the Parties met in November 2015, and Respondent acceded to the requests made in that letter (even though Respondent never followed through). Finally, Respondent chose not to respond to the Complaint or otherwise participate in this proceeding. Under these circumstances, the Panel finds no injustice would be wrought here by rendering this decision in English rather than French. 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 Domain Names and be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: August 8, 2018
Full & Egal Universal Law Academy