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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Direct Axis SA v. Domain Admin, Whois Privacy Corp. Acquire This Name, Inc.

Case No. D2016-0132

1. The Parties

The Complainant is Direct Axis SA of Claremont, Western Cape, South Africa, represented by Ron Wheeldon, South Africa.

The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas / Acquire This Name, Inc. of Bellevue, Washington, United States of America (“United States” or “US”).

2. The Domain Name and Registrar

The disputed domain name <directaxis.com> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2016. On January 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2016 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 January 27, 2016 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 amended Complaint on January 28, 2016.

The Center verified that the Complaint together with the amended 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 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2016.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on March 7, 2016. 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 the owner of the trademark registration nos. 1996/11939 and 1996/11940, for DIRECT AXIS, in classes 35 and 36, registered on August 23, 1996, in South Africa, and the trademark application no. 86835234, for DIRECT AXIS, in class 36, filed on December 1, 2015, in the United States.

In addition, the Complainant is the owner of the domain name <directaxis.co.za>, registered on July 16, 1997.

The disputed domain name was registered on April 7, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant defends that the disputed domain is identical to the Complainant’s trademark DIRECT AXIS and to the Complainant’s domain name <directaxis.co.za>.

According to the Complainant, the disputed domain name was registered with the sole intention of resale, since there is no evidence of other use in the past, or intended use in the future in connection with a bona fide offer of goods or services.

The Complainant also states that the Respondent does not have any trademark rights over the expression “direct axis”, and that the disputed domain name is misleading Internet users and that the Respondent only intends to obtain financial profits from the Complainant.

There is no evidence that the Respondent had authorization to use the trademark DIRECT AXIS or to register domain names encompassing it.

The Complainant’s representatives contacted the Respondent in order to try to purchase the disputed domain name. However, the Complainant considered the amount requested by the Respondent excessive in comparison with the reasonable out-of-pocket costs directly related to the registration and maintenance of the disputed domain name.

As argued by the Complainant, the Respondent appears to have the recurring habit of cyber-squatting on domain names and reselling them at high prices.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The evidence presented demonstrates that the Complainant is the owner of the trademark DIRECT AXIS in South Africa, and of the domain name <directaxis.co.za>.

The Complainant’s trademarks and domain name <directaxis.co.za> predate the disputed domain name.

The disputed domain name is comprised solely of the Complainant’s trademark DIRECT AXIS and the generic Top-Level Domain (“gTLD”) “.com”.

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is identical to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint, in accordance with paragraph 5 of the Rules.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register a domain name containing the trademark DIRECT AXIS.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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 offer of goods or services.

The Complainant argues that the domain name has been registered with the intent to resell it, which can be verified by the screenshots contained in Annex 5 of the Complaint. The Panel finds that such use of the disputed domain name does not correspond to a bona fide use of domain names under the Policy.

For the above reasons, the Complainant has made an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The trademark DIRECT AXIS has been registered by the Complainant since 1996.

The disputed domain name is solely composed of the Complainant’s trademark DIRECT AXIS and the gTLD “.com”, which does not provide any relevant difference between the disputed domain name and the Complainant’s trademark.

The Respondent has no rights or legitimate interests in the disputed domain name.

According to the evidences attached to the Complaint, the disputed domain name appears to have been registered with the sole intent of resale, and there are also evidences that the Respondent is habitually involved in the practice of cyber-squatting domain names and reselling them, as per the Annexes 7.1 through 7.3.

In view of the above reasons, the Panel finds that the Respondent has registered or acquired the disputed domain name registration primarily for the purpose of selling it to the Complainant, who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the out-of-pocket costs directly related to the disputed domain name, as described in the Policy paragraph 4(b)(i).

Additionally, the Complainant has included evidence that the website and the disputed domain name includes sponsored links associated with the Complainant, indicative of the bad faith under paragraph 4(b)(iv) of the Policy.

The Respondent has not responded to the Complaint.

The Panel finds that the Respondent’s bad faith registration of the disputed domain name, with the intention of taking undue advantage of the trademark DIRECT AXIS, has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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, <directaxis.com>, be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: March 21, 2016

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