Complaint from Sweden – Security Solutions Since 1986 – Trademark since 1990s globally – Complainant operating Axis.com & Axis.in – Complainant has Prior Rights – Active Website / Legitimate Use over Disputed Domain by Respondent – Trademark widely publicized in India – Same Industry – Held Confusingly Similar thus no legitimate interests and Domain Name used in Bad Faith
Emdalavagen 14, Sweden SE – 223 69
Lund, Sweden … Complainant
Axixx Security Services
Jaunpur – 222202
Uttar Pradesh, India … Respondent
1. The Parties
1.1 The Complainant is Axis AB, which includes its wholly owned subsidiary, Axis Communications AB, both having offices at Emdalavagen 14, Sweden SE – 223 69 Lund, Sweden represented by its attorneys Srijoy Das and Bidyut Tamuly of Archer & Angel, K-4, South Extension-II, New Delhi, India -110049.
1.2 The Respondent is Axixx Security Services (through Sangeeta Srivastav) of the address Mungra Badshahpur, Jaunpur – 222202, Uttar Pradesh, India.
2. The Domain Name and Registrar
2.1 The disputed domain name is <axixsecurityservices.in> registered with Endurance Domains Technology LLP.
3. Procedural History
3.1 The arbitrator received an email on January 7, 2019 requesting consent for appointment as arbitrator in this dispute. The same was confirmed by the arbitrator by email of same day with the statement of acceptance and declaration of impartiality and independence.
3.2 .IN Registry appointed Divya Balasundaram as the Sole Arbitrator on January 8, 2019. The Arbitrator then received soft copy of the Complaint along with Annexures as well as hard copy.
3.3 Arbitral proceedings were commenced by Arbitrator on January 8, 2019 by issuance of a notice by email to the Respondent directing it to file reply within 21 days.
3.4 Since no reply was received by the Arbitrator after lapse of 21 days time period, on February 01, 2019 Arbitrator sent email to Respondent stating that ex parte award would be passed in the matter.
3.5 The language of these proceedings is English.
4. Background of the Complainant and its rights in the name and mark AXIS
4.1 The Complainant was incorporated in the year 1984 with the basic motive to offer intelligent security solutions that enable a smarter, safer world. Over the past three decades, the Complainant has collaborated with more than 90,000 partners across 179 countries, have distributors in more than 70 countries and over 2,865 employees across 50 countries, to become the global leader in network cameras and video encoders. The product portfolio of the Complainant comprises of surveillance cameras, network cameras, video encoders, accessories and application software. The Complainant was the first company in the world to launch a network camera in 1996, initiating the shift from analog to digital technology. The Complainant, for the last over three decades, has been hugely acclaimed for innumerable successful installations of its Axis network video products in industries ranging from Healthcare, Transportation, Retail, Government, Critical Infrastructure, Hotel / Tourism / Restaurants, Education, Banking and Finance, Casino / Gaming, Stadiums / Venues, Prisons / Correction centers, City Surveillance, Military, etc. across the world. In the year ending 2017, the Complainant saw a sales turnover of approx. US$ 1020 million.
4.2 The Complainant has offices around the world. The Complainant was ranked 1 for network cameras, security cameras and video encoders in United States of America, Europe, Middle Eastern countries and Africa.
In Asia, the Complainant was ranked 4 for video encoders and ranked 6 for network cameras and security cameras.
4.3 The brand name and trademark AXIS was adopted by the founders of the company Axis AB, Mikael Karlsson and Martin Gren, in the year 1984, when they established Axis AB and its subsidiary, i.e. Axis Communications AB. The rationale behind adoption of the said trade name and mark was that the word ‘AXIS’ suggests collaboration and a central pivot point; while the accompanying word ‘Communications’ refers to the exchange of information amongst users and processes.
Additionally, back in 1984, the Complainant was providing printer manufacturers with ‘ax’ technology for either coax or twinax interfaces – opening up unlimited communication possibilities in proprietary worlds. Accordingly, keeping in view the importance of the collaborative, central pivot and communications elements in the Complainant’s business, the name and mark ‘AXIS’ was chosen. The brand book of the Complainant elaborates on the values and significance of the aforesaid brands which are exclusively associated with the Complainant and no one else.
4.4 The Complainant adopted the brand and trademark AXIS for its business, products and services in the year 1984. Since then, the Complainant has adopted and used a number of AXIS – formative marks, such as, AXIS with Logo, AXIS (in foreign languages), AXIS Communications and AXIS Communications with Logo. The said marks, especially, the mark AXIS per se, have been used continuously and extensively since their adoption in various capacities worldwide, inter alia, as a brand, trade name, trading style and trademark, in relation to the Complainant as well as its numerous affiliates, subsidiaries, branch offices, etc. In India, the presence, knowledge and visibility of the Complainant’s aforementioned AXIS and AXIS – formative trademarks has been since the 1980s.
4.5 The word AXIS forms an integral part of the company name of the Complainant, i.e. Axis AB and Axis Communications AB. Thus, the Complainant is a genuine, sole and exclusive proprietor of the AXIS trademark, logo, brand, other AXIS – formative marks and business there under. The Complainant is the proprietor of the mark AXIS per se as well as several AXIS formative marks vide numerous registrations / pending applications vesting therein for a range of products and services falling under classes 09, 16, 35, 36, 37, 41, 42 and 45 across numerous countries of the world, including India. Such AXIS and Axis – formative trademarks (hereinafter ‘the Complainant’s Marks’), as mentioned above, have been registered since at least the year 1990. By virtue of the aforementioned registrations, the Complainant has exclusive right to use the trademark AXIS in respect of the goods and services for which it is registered.
4.6 The Complainant – through its subsidiary – owns the top level generic domain name <axis.com> since September 19, 1996, while the Indian specific domain, viz. <axis.in> was created on February 16, 2005. The Complainant’s mark AXIS forms a prominent part of each of the aforementioned domain names. Moreover, the Complainant also owns other top level and country specific domain names, wherein the Complainant’s mark AXIS forms a prominent part thereof. The domains are duly registered in the name of the Complainant or its affiliates / sister companies and date back to as early as 1991.
4.7 The Complainant owns and maintains its global website at www.axis.com, wherein exhaustive information about the Complainant and the mark AXIS are provided. The Complainant regularly updates the said website. The mark AXIS is prominently displayed on each webpage of the said website.
4.8 The Complainant marks a prominent presence on major social networking websites such as Linkedln, Twitter, Facebook and YouTube where it enjoys immense popularity and has thousands of followers/subscribers on these sites. The Complainant is also listed on a number of third party websites that provide latest information and cover news on the Complainant regularly.
4.9 The Complainant has invested substantial expenditure and extensively promoted and advertised its business under the name AXIS across various media, including the internet and on various mobile application platforms. The Complainant’s promotional efforts also extend to participating in trade fairs as well as organizing and/or sponsoring a number of events worldwide and the Complainant has also been supporting and participating in a number of events in India.
4.10 As a result of the high quality of goods and commendable services for over three decades now, the Complainant’s products under the AXIS and AXIS – formative trademarks have met with exponentially rising sales.
4.11 In the year 2007, the Complainant established their first office in India under the name Axis Video Systems India Pvt. Ltd. it is the Indian subsidiary of the Complainant with its registered office at No.7, Devdas Manor, 3rd Floor, 2nd Cross, CSI Compound, Mission Road, Bangalore – 560027, Karnataka. The said Indian subsidiary has two branch offices across the cities of Mumbai and New Delhi. The operations of above – said subsidiary and branch offices as well as their prospects and growth patterns in the Indian surveillance market have been tapped regularly and published by numerous news portals. Additionally, the Complainant’s products in India have also been made available through almost 3000 third party authorized partners, distributors and resellers since the year 2007.
4.12 The Complainant, for the last over three decades, has been hugely acclaimed for innumerable successful installations of their AXIS products in various sectors and industries across over 50 countries worldwide. A few of such ‘success stories’ in India have been witnessed in multiple cities, a case study of which has been made and published.
4.13 The Complainant has been enjoying tremendous popularity, goodwill and reputation and recognition in the network and surveillance industry for decades also due to their collaboration with world-renown companies, inter alia, Panasonic, Canon, Honeywell, Toshiba, Mirasys.
Such partnerships have over the years only enhanced the reputation of the Complainant’s AXIS and AXIS – formative marks globally.
4.14 The Complainant regularly issues press release on its website www.axis.com to keep its actual or potential customers informed about latest news, business information and product launches. These press releases can be accessed all over the world where there is access to internet, thus supplementing the rights of the Complainant in the trademark AXIS and the connection / association of the marks with the Complainant.
4.15 The Complainant and their affiliates, sister companies, subsidiaries, etc., for their range of products and services, have been recognized and conferred with numerous prestigious awards and honors over the decades by various organizations and groups in different countries. Between the years 1993 to 2018, the Complainant has almost 100 awards and honours to their name.
4.16 The Complainant exercises extreme vigilance in protecting their intellectual property rights and guard the AXIS brand zealously. They have successfully initiated a number of opposition actions before the relevant authorities in different jurisdictions against unauthorized entities misusing their AXIS-formative trademarks. The Complainant has also laid down Trademark and Copyright user guidelines for its distributors, partners, resellers, licensee, developers, customers, media contacts and customers who intent to use the Axis marks. Complainant publishes Cautionary Notices in leading newspapers, thereby keeping the general public and especially potential infringers informed of its rights in its AXIS trademarks periodically.
5. Legal Notice
5.1 The Complainant sent a Cease and Desist Notice to the Respondent dated April 19, 2018, apprising the Respondent of its rights in the AXIS Marks, and calling upon the Respondent inter-alia to cease all business / use of the mark AXIS / AXIIS and to voluntarily delete / transfer the Disputed Domain Name followed by a Reminder Letter dated June 15, 2018. However, the Respondent did not comply complying with the Complainant’s Letter.
6. Legal Grounds
6.1 The Respondent’s domain name is confusingly similar to the name, trademark or service mark in which the Complaint has rights.
6.2 The Disputed Domain Name is aurally and confusingly similar to the Complainant’s trademark AXIS and will cause confusion and deception. Further, use of the words ‘security’ and ‘services’ in the Disputed Domain Name neither provide any distinctive character to it nor serve to diminish the similarity as they are descriptive of the Complainant’s business and rather would inevitably be associated with the Complainant’s AXIS Marks and no one else.
6.3 The Complainant has well-established rights in respect of the word AXIS. In light of the fact that the Disputed Domain Name is confusingly similar to the registered trademark AXIS and AXIS formative marks of the Complainant, there is a high likelihood that a consumer would assume that the Respondent is a branch / off-shoot of the Complainant in India. Thus, there is strong likelihood that the potential consumers would perceive a nexus between the business of the Complainant and the Disputed Domain Name.Accordingly, the Disputed Domain Name is identical and/or confusingly similar to the Complainant’s trademark.
6.4 The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
6.5 In or around April, 2018, the Complainant discovered that the Disputed Domain Name was registered by the Respondent. However, the Complainant has not assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or make use of the mark AXIX / AXIXX.
6.6 The inclusion of the word ‘AXIX’ in the Disputed Domain Name which is confusingly similar to the Complainant’s trade name, brand and registered trade mark AXIS, suggests that the intention of the Respondent is to deceive the public into believing that some association or commercial nexus exists between the Complainant and the Respondent.
6.7 The Respondent is using the Disputed Domain Name, for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trade name, brand and registered trade mark AXIS. Therefore, the Respondent is not making a legitimate non-commercial or fair use of, and has no rights or legitimate interests in, the Disputed Domain Name.
6.8 Additionally, the Respondent’s mere registration of the Disputed Domain Name does not establish rights or legitimate interests in a domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy.
6.9 The Complainant enjoys exclusive rights in the words “AXIS” and ‘AXIS Communications’ qua its services and products. The word
“AXIS’ per se, does not indicate in any manner services or goods relating to the security services. Accordingly, the Complainant’s registered trademark AXIS and its AXIS formative marks are inherently distinctive trademarks. The Complainant is therefore protected against all use of AXIS (including by the Respondent) that dilutes and tarnishes its rights in its marks.
6.10 There is no justification for the Respondent’s registration and/or use of the Disputed Domain Name as it shows the Respondent’s dishonest intention to retain the Dispute Domain Name for illegitimate purposes and commercial exploitation of the well-known AXIS and AXIS formative trademarks.
6.11 The Disputed Domain Name has been registered and is being used in bad faith.
6.12 The Complainant is vested with worldwide statutory and common law rights in its AXIS Trademarks since the year 1984. Therefore, the Respondent’s usage of the Complainant’s trade name and mark ‘AXIX / AXIXX’ in a confusingly similar manner, is of grave concern due to the likelihood of creating confusion in the minds of the public. It is probable that consumers searching for the Complainant’s AXIS services online may perceive the Disputed Domain Name to be another India – specific domain name of the Complainant, especially since <axis.in> is owned by the Complainant. The Complainant submits that this is the Respondent’s desired outcome, and is in itself evidence of its bad faith and malafide intentions.
6.13 As outlined above, the Complainant has acquired a significant reputation and substantial goodwill in the services relating to provision of network and surveillance cameras. The Respondent is bound to be aware of the world-renown repute of the Complainant, and hence has no cause for adoption of identical trademark or domain name, except in bad faith and with malafide intention.
6.14 There can be no doubt that the Respondent – being in the same industry – was aware of the Complainant’s AXIS Trademarks when it registered the Disputed Domain Name, which clearly suggests “opportunistic bad faith” in violation of the Policy.
6.15 The Respondent acquired the Disputed Domain Name to ‘cash in on’ and unfairly profit from the considerable investment the Complainant has made in creating and maintaining the high profile and goodwill in the AXIS Brand for over decades. Further indication of bad faith under the Policy is the fact that the Complainant’s rights, predates the Respondent’s registration of the Disputed Domain Name by over 22 years.
6.16 Bad faith of the Respondent is further evidenced by the fact that even after being contacted by the Complainant and given substantial time to delete / transfer the Disputed Domain Name, no compliance was done by them. On the contrary, the Respondent continues their brazen and uninterrupted use of the Disputed Domain Name.
7.1 The Arbitrator has reviewed the Complaint and all the Annexures filed by the Complainant. The Arbitrator finds that the Arbitral Tribunal has been properly constituted.
7.2 The Arbitrator finds that the Complainant has been able to establish its prior rights and interests in the trademark AXIS. This finding is based on several reasons.
7.3 The mark AXIS has been used by the Complainant since 1984 for its business of security solutions in several countries and sectors. Sales turnover crossed US$ 1000 million in 2017.The Complainant’s services and products under its mark have been widely advertised across the globe; the Complainant has invested great deal of effort and resources towards promotion and publicity. The Complainant has substantial presence on social media and has been recipient of several awards for its business too.
7.4 The Complainant owns registrations for its trade mark AXIS and/or AXIS formative marks globally including in India and is very vigilant about protecting them.
7.5 The Complainant and/or its affiliates own several domain name registrations comprising the trade mark AXIS and the Complainant operates the website www.axis.com, last but not the least, the word AXIS does not refer to the goods or services of the Complainant, it is distinctive and a valuable intellectual property of the Complainant.
7.6 The Arbitrator also finds that the Complainant has established all the 3 elements essential to maintain its complaint, being that the disputed domain name is identical or confusingly similar to Complainant’s Trademark; the Respondent has no rights claims, or legitimate interests in respect of the disputed domain name; and the disputed domain name was registered and is being used in bad faith.
7.7 Only a single letter differs between the disputed domain name and the trademark of the Complainant, it sounds similar and is conceptually same. The words ‘security’ and ‘services’ used in the Disputed Domain Name do not provide any distinctive character to it as they are descriptive terms.
7.8 The Respondent is not named AXIS nor is commonly known by this name.
7.9 Respondent’s registration of impugned domain name is much subsequent to Complainant’s adoption of the mark and the Respondent. Being in the same industry,the Respondent could not have adopted the disputed domain name except with reference to the Complainant’s mark for same business. The Respondent is not authorized or licensed by the Complainant to use the mark or domain name AXIS.
7.10 The Respondent has no statutory or common law rights in the disputed domain name nor making a legitimate non-commercial or fair use of it.
7.11 The Respondent was served with legal notice and reminder by Complainant but has not responded to those, nor replied to the Complaint, despite having sufficient time to do so.
8.1 For all the foregoing reasons, the Complaint is allowed.
8.2 It is hereby ordered in accordance with paragraph 10 of the INDRP that the disputed domain name <axixsecurityservices.in> be transferred to the Complainant.
8.3 The Parties shall bear their own costs.
Ms. Divya Balasundram, Arbitrator
Date: February 14, 2019
Place: New Delhi, India
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