The Complainant is Axis AB of Lund, Sweden, represented internally.
The Respondent is Emad Pazoki of Tehran, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2019. On February 14, 2019, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On February 16, 2019, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on February 14, 2019.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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, and the proceedings commenced on February 25, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2019. On March 18, 2019, the Center notified the Respondent’s default.
The Center appointed Knud Wallberg as the sole panelist in this matter on March 28, 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, Islamic Republic of Iran, under registration No. 848136 for AXIS COMMUNICATIONS (logo), registered on October 1, 2004, for goods and services in classes 9 and 42, and registration No. 958093 for the word mark AXIS, registered February 11, 2008, for goods in class 9.
The disputed domain name was registered on November 26, 2016. The disputed domain name resolves to an active website selling the Complainant’s products and competitors’ products. 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 generic term “center”.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not known by the disputed domain name and has not acquired any trademark or service mark rights in that name or mark. Further, 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 in particular since the disputed domain name is used for a website on which the Respondent offers goods that are in competition with the Complainant’s goods.
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 Islamic Republic of Iran prior to the Respondent’s registration of the disputed domain name. Since the Respondent is selling the trademarked products of the Complainant, it cannot credibly claim to have been unaware of the Complainant’s trademarks at the time of registration of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the irDRP requires the Complainant to prove all three of the following elements to be entitled to the relief sought:
(i) that the disputed domain name 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 disputed domain name; and
(iii) that the disputed domain name has been registered or is being used in bad faith (paragraph 4 of the irDRP).
The Panel is required to decide on the basis of the statements and documents submitted in accordance with the irDRP, the Rules and any rules and principles of law that it deems applicable (paragraph 15(a) of the Rules).
Paragraph 4(b) of the irDRP elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the irDRP sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. A. 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 “center”. The addition of such term as suffix to the trademark to form the disputed domain name does not, to this Panel, dispel a finding of confusing similarity. In addition, it has also long been held by irDRP and UDRP1 panels that the country code Top-Level Domain (“ccTLD”) 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. B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark. Under the circumstances present in this case, the burden of producing evidence of any rights or legitimate interests in the disputed domain names shifts to the Respondent.
Paragraph 4(c) of the irDRP refers to three circumstances, any of which is sufficient to evidence that the Respondent has rights or legitimate interests in the disputed domain name. Paragraph 4(c)(1) refers to the use of the disputed domain name in relation to a bona fide offering of goods or services. The Panel recognizes that there may be some limited situations where the registration and use of a domain name that specifically refers to and incorporates the trademark of another entity may serve legitimate purposes. As it is stated in section 2.8.1 and section 2.8.2 of the WIPO Overview 3.0.
“2.8.1 Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.
2.8.2 Cases applying the Oki Data test usually involve a domain name comprising a trademark plus a descriptive term (e.g., ‘parts’, ‘repairs’, or ‘location’), whether at the second-level or the top-level. At the same time, the risk of misrepresentation has led panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the complainant’s trademark.”
In this case, the Respondent is not an authorized dealer or reseller of the Complainant’s products and services. Moreover, the disputed domain name is used for a website that is controlled by the Respondent, and on which products and services that are in competition with some of the Complainant’s products and services are offered. The Respondent does thus clearly not meet the above outlined requirements under the Oki Data principles.
In the circumstances present here, the Respondent’s registration and use of the disputed domain name indicates its lack of rights or legitimate interests therein, and consequently the prerequisites in the Policy, paragraph 4(a)(ii) are also considered fulfilled. C. Registered or Used in Bad Faith
Given the circumstances of the case and in particular the evidence on record of the use of disputed domain name, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s marks. Further, due to the nature of the Respondent’s business the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name, which 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.
As explained above the disputed domain name is used or an active website “www.” on which the Respondent offers the Complainant’s products as well as products and services that are in competition with the products that are manufactured by the Complainant. It is thus evident that the Respondent is using the disputed domain name in a way that intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s own website by creating a likelihood of confusion as to the affiliation or endorsement of the website by the Complainant, just as the registration and use is liable to disrupt the business of the Complainant.
Bearing these facts and the facts mentioned above the Panel finds that the disputed domain name has been registered and furthermore is being used in bad faith, (paragraph 4(a)(iii) and 4(b)(iv) of the Policy).
Consequently, all the prerequisites for cancellation or transfer of the disputed domain names according to paragraph 4(a) of the Policy are fulfilled.
The Complainant has requested the Panel that the disputed domain names be transferred to it. 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 11, 2019
1 Given the similarities between the irDRP and UDRP, on which the irDRP is based, it is appropriate to refer to the UDRP jurisprudence, and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in applying the irDRP, see, inter alia, Inter IKEA Systems BV v. Mohammadreza Mohammadian,WIPO Case No. DIR2018-0003.
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