The Complainant is Axis AB of Lund, Sweden, internally represented.
The Respondent is Nelson Trombley of Menlo Park, California, United States of America (“United States” or “US”). 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2019. On February 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 20, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 26, 2019.
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” 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 February 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on March 26, 2019. 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 was founded in 1984 in Sweden and is today the global market leader in network video, security cameras, and video encoders. Headquartered in Sweden, the Complainant is a global company with around 3,000 employees, and a network of 90,000 partners worldwide, spanning 179 countries. The Complainant is a global company who, in 2017, reported sales of SEK 8.6 billion.
The Complainant owns numerous trademark registrations worldwide for AXIS as word mark and for AXIS COMMUNICATIONS as logo. This includes registrations in the country of residence of the Respondent, United States, under registration no. 1816664 for AXIS COMMUNICATIONS (logo), registered on January 18, 1994, for goods and services in classes 9 and 42, and registration no.3459646 for the word mark AXIS, registered July 1, 2008, for goods in class 9 of the Nice classification.
The disputed domain name was registered on January 27, 2019. The disputed domain name has previously resolved to a website resembling the Complainant’s official website. The disputed domain name has also been used by the Respondent as contact email address for job positions that falsely purports to be posted by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s AXIS trademark since it incorporates the Complainant’s trademark in its entirety with the addition of the term “comminc”. This term appears to be short for the terms “Communications Inc.” and the disputed domain name perceived as a whole may thus be perceived as being short for the name of the Complainants fully owned US subsidiary.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use its trademarks neither in the disputed domain name nor on the corresponding website. Also, the Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant registered and has used its mark extensively throughout the world including in the US prior to the Respondent´s registration of the disputed domain name. Further, the Respondent has imitated the Complainant´s official website and thereby intentionally attempted to attract Internet searchers to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website. The website was taken down by the hosting provider after the Complainants filed a DMCA notice to the provider. However, the disputed domain name has been used and may continue to be used by the Respondent as contact email address for false job positions supposedly with the purpose of obtaining the applicants’ personal information or in any other way engaging in illegal activities. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. C. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark since it contains the Complainant’s registered trademark AXIS in its entirety with the addition of the term “comminc”, which based on the wording that is used on the website under the disputed domain name, appears to be short for the term “Communications Inc”. The addition of such descriptive terms as suffixes to the trademark to form the disputed domain name do not, to this Panel, dispel a finding of confusing similarity. In addition, it has also long been held by UDRP panels that the generic Top-Level Domain (“gTLD”) suffix does not preclude a finding of confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. D. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Further, given the circumstances of this case, the Panel believes the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this, and the way the Respondent has been using the disputed domain name (see below in Section E) does not support a finding of rights or legitimate interests.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. E. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the domain name holder has registered or 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 that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the domain name holder 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 domain name holder has engaged in a pattern of such conduct; or
(ii) the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to the domain name holder’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 holder’s website or location or of a product or service on the domain name holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case, in particular the extent of use of the Complainant’s AXIS mark, the distinctive nature of the mark, the nature of the disputed domain name incorporating the mark, and the use to which the disputed domain name has been put, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain name could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name has been used for a website that purports to offer the same services as the Complainant and on which the Respondent uses the Complainant’s trademark, including the Complainant’s AXIS logo, just as the Respondent had copied other graphic elements from the Complainant’s official website. This clearly gave Internet users the impression that the website was an official website of the Complainant or a website that was authorized by the Complainant, which is not the case.
The infringing website has been deactivated following a DMCA notice by the Complainant to the Respondent’s hosting provider. The disputed domain name is however, still active and may thus still be used for a phishing scam to deceive potential employees of the Complainant to divulge sensitive information about themselves by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s activities. Such activities constitute bad faith use under the Policy, see inter alia National Westminster Bank plc v. Abdelilah Jadron, WIPO Case No. D2013-2232, and Valero Energy Corporation, Valero Marketing and Supply Company v. Maurine flavour seafoods,WIPO Case No. D2013-1849.
Noting that the disputed domain names incorporate a well-known and distinctive trademark, that no response has been filed, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 name be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Date: April 8, 2019
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