WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Uponor Oyj and Uponor Innovation AB v. Iman G. Mohammadi, Network Supporters Co. Ltd.
Case No. D2008-0209
1. The Parties
The Complainants are Uponor Oyj of Finland, and Uponor Innovation AB of Sweden, represented by Borenius & Kemppinen Ltd., Finland.
The Respondent is Iman G. Mohammadi, Network Supporters Co. Ltd., of Teheran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <upopipe-int.com> (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (“OnlineNic”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2008. The Center transmitted by email to OnlineNic, a request for registrar verification in connection with the Domain Name, and on February 14, 2008 OnlineNic transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2008.
On March 4, 2008, the Respondent sent an email to the Center advising:
“We are a web hosting company which registered domain name unpopipe-int.com for “Dr. Mehrdad Rohani”. I’ve forwarded your emails to Dr. Rohani and he asked me to send you an email and ask you to give him 10 days extra time to collect and send you his documents about this issue. So please let me know if this is acceptable and I will inform Dr Rohani”.
The Center having sought comments from Complainant regarding Respondent’s request for an extension (to which no objection was made), then extended the time for filing a response, to March 7, 2008.
The Response, consisting of a message from “Dr. Mont. M Rouhani” for the Board of Directors of “Upopipe int.kish private Joint-stock company”, was forwarded to the Center by the Respondent on March 6, 2008. The Center replied by email on March 7, 2008, seeking confirmation that the message from Dr. Rouhani was intended to be the Respondent’s Response to the Complaint. The Center advised that in the absence of any further communication from the Respondent, the message would be treated as the Respondent’s Response, and the Center would proceed to appoint a Panel. No further communication was received from the Respondent or from Dr. Rouhani.
The Center appointed Warwick Smith as the sole panelist in this matter on March 18, 2008. 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.
By Procedural Order No. 1 dated March 28, 2008, the Panel requested that the Respondent provide a further statement, answering certain questions and providing certain information and/or documents. The further statement was to be provided by April 8, 2008. By the same Direction, the time for the Panel to give its decision in the case was extended to April 14, 2008.
The Respondent did not provide the further statement by April 8, 2008. On April 10, 2008 the Center received a fax from Dr. Rouhani, in the German language, advising that he had been delayed because his office had been closed for the Iranian New Year celebrations, but that he would have a response with the Center “next week”.
On April 11, 2008, the Panel directed that it would receive and consider any further statement the Respondent might submit by April 14, 2008, but would not allow any longer extension of time. The time for the Panel to give its decision in the case was further extended, initially to April 17, 2008, and subsequently to April 21, 2008.
A further statement from the Respondent was submitted by April 14, 2008.
By Procedural Order No. 2 dated April 29, 2008, the Panel requested a Statement in Reply from the Complainant, which was to be limited to addressing the topic of the apparent existence of certain registered UPOPIPE trade marks in the Islamic Republic of Iran. The time for the Panel to give this decision was further extended, to May 6, 2008.
The Complainant duly filed its Statement in Reply within the time allowed in the Panel’s Procedural Order No. 2, and the Panel has considered both the Respondent’s further statement and the Complainant’s Statement in Reply.
4. Factual Background
The Complainant Uponor Oyj is a public limited company organized under the laws of Finland. It is the parent company of the Uponor Group, and the Complainant Uponor Innovation AB (a limited company organized under the laws of Sweden) is one of its wholly-owned subsidiaries.
The word “Upo”, which forms the distinctive part of the names of both Complainants, and of many of their registered trade marks referred to below, is an invented word.
The Uponor Group is a leading international supplier of plumbing and heating systems for the residential and commercial building markets. The Group is also a prominent regional supplier (in Europe and North America) of municipal infrastructure pipe systems. The Group’s key products, including radiant floor heating and tap water systems, are sold in over 100 countries.
The Complainants’ Trade Marks
The Complainant Uponor Oyj is the registered proprietor of numerous trade marks, including the following:
1. The word mark UPO, registered in Germany in international classes 7 and 11, with effect from April 23, 1998.
2. A figurative mark, substantially comprising the expression “UPO”, registered in Germany in international classes 6, 7, 11, and 17, with effect from September 17, 1966.
3. The word mark UPO VISION, registered as a Community Trade Mark in international classes 7 and 11 with effect from March 31, 2000. The class 11 registration covers “apparatus for … heating, steam generating, refrigerating, drying, ventilating, water supply and sanitary purposes”.
4. The figurative mark UPONOR, registered as a Community Trade Mark in international classes 6, 7, 9, 11, 17, 19, and 37, with effect from February 10, 2006. The class 6 specification includes “pipes and tubes of metal”, and the class 19 specification includes “non-metallic rigid pipes for building”.
5. The figurative mark UPONOR, registered in international classes 6, 11, 17, and 19 with effect from September 19, 2002, under the Madrid system of international trade mark registrations. This figurative mark includes a small device positioned immediately above the stylized letter “U” in “UPONOR”, consisting of two concentric circles.
6. The mark UPONOR, registered with effect from March 2, 2006 in international classes 6, 7, 9, 11, 17, 19, and 37, under the Madrid system of international registration of trade marks. This particular registration applies to the Islamic Republic of Iran.
7. The word mark UPO Regatta, registered in Finland in international class 11 with effect from June 21, 1999
8. The word mark UPOTERM, registered in international class 19 in Finland, with effect from May 10, 1976.
The Complainant Uponor Innovation AB, is the proprietor of a number of registered trade marks, including the following:
1. The word mark UPONAL ULTRA-RIB, registered in Germany in international classes 17 and 19, with effect from November 16, 1987.
2. The word mark UPONOR, registered in Germany in international classes 6, 11, 17 and 19, with effect from May 10, 1983.
3. The word mark UPONOR ULTRA-RIB, registered in Germany in international classes 17 and 19, with effect from November 16, 1987.
4. The word mark UPOCLEAN, registered as a Community Trade Mark in international class 11, with effect from April 11, 2003.
5. The word mark UPOFUSE, registered as a Community Trade Mark in international classes 7, 17, and 19, with effect from March 3, 2003.
6. The word mark UPONAL, registered as a Community Trade Mark in international classes 11, 17, and 19, with effect from September 1, 2000.
7. The word mark UPONOR, registered as a Community Trade Mark in international classes 6, 11, 17, and 19, with effect from August 20, 2002.
8. The word mark UPONOR DUPPLEX, registered as a Community Trade Mark in international classes 11, 17, and 19, with effect from October 9, 2003. (The class 17 registration is for “flexible plastic pipes, multilayer plastic pipes, their couplings and other parts”. The class 19 registration is for “rigid plastic pipes, multilayer plastic pipes, their couplings and other parts”.)
9. The word mark UPONOR PROLINE, registered as a Community Trade Mark in international classes 11, 17, and 19, with effect from May 10, 2001. (The class 19 specification includes: “Non-metallic rigid pipes for building”.)
10. The word mark UPOREN, registered as a Community Trade Mark in international classes 11, 17, and 19, with effect from August 23, 2000. (Again, the class 19 specification includes: “Non-metallic rigid pipes for building”.)
11. The word mark UPOSUN, registered as a Community Trade Mark in international classes 11, 17, and 19, with effect from April 17, 2001.
12. The figurative mark UPONOR (consisting of that word in a stylized script, with the small concentric circle device positioned immediately above the letter “U”), registered in Germany in international classes 11, 17 and 19 with effect from October 26, 1990, and internationally in international classes 6, 11, 17, and 19 under the Madrid system of international trade mark registration, with effect from September 19, 2002.
13. The word mark UPOLAR, registered in Finland in international class 17, with effect from March 31, 1971.
14. The word mark UPOTEL, registered in Finland in international class 17, with effect from July 6, 1981.
15. The word mark UPOGAS, registered in Latvia in international classes 17 and 19, with effect from March 22, 1994.
16. The word mark UPOCLEAN, registered in Germany in international class 11, with effect from August 16, 1999.
17. The word mark UPONAL, registered in Germany in international classes 11, 17, and 19, with effect from October 1, 1997
The Respondent and the Domain Name
The Respondent registered the Domain Name on November 27, 2005.
The Complainants produced certain web pages from the website to which the Domain Name resolves (the Respondent’s website). These web pages appear to have been downloaded on October 30, 2007. Virtually all of the web pages were in the Persian language, but the Complainant has provided English translations, and the translations have not been challenged by the Respondent.
The pages from Respondent’s website which the Complainants produced, prominently featured the products of the German company WRW Westfälische Rohrwerke GmbH (“WRW”). According to the Complaint, the German expression “rohrwerke” translates in English to “pipework”. It is clear from the Respondent’s website and from Internet articles produced by the Complainant, that WRW operates in the same general field of business as the Complainant Group. An extract from a publication of the European Business Registry which the Complainants produced, shows that WRW was established in August of 2004.
The Complainants say that the managers of WRW, Mr. Pilarski and Mr. Auental, are former employees of the Complainant Uponor Oyj’s German subsidiary, Unicor Rohrwerke GmbH (“Unicor”). The Complainants say that the employment agreements of Mr. Pilarski and Mr. Auental were terminated when the Unicor plant at Ahlen in Germany, was closed in 2004. They then embarked on new careers through WRW.
Prior to 2004, Unicor sold pipe products in the Islamic Republic of Iran, through a local agent called K Sepiran Co (Ltd) (“Sepiran”). The Complainants have produced a copy of the signed sole agency agreement between Unicor and Sepiran. It is in the German language, but a partial translation into English has been supplied. The agreement was dated July 24, 1995. It recorded that Unicor marketed a heating and sanitary piping system, and that Sepiran operated a sales organization suited to importing and selling piping systems in the Iranian market. Under the contract, Unicor granted Sepiran exclusive rights to sell Unicor products in the Islamic Republic of Iran, and Sepiran undertook to cover its requirements for heating and sanitary products solely from Unicor. The representative of Sepiran named in the sole agency agreement, was Dr. Rouhani.
The Complainants say that the sole agency agreement was terminated in 2005.
A photograph of Dr. Rouhani appeared on one of the web pages from the Respondent’s website which the Complainants produced. A photograph of Mr. Auental appeared on the same page.
On the “About Us” page of the Respondent’s website as it stood on October 30, 2007, some detail was provided about WRW’s operations. The detail included some notes on Dr. Rouhani. He was described as the CEO of Khavarspiran, a pioneer manufacturer of 5-layer pipes in the Islamic Republic of Iran, and as one of WRW’s Middle East regional sales representatives.
The notes on Dr. Rouhani included the following:
“In order to meet regional needs, Upopipe International was established alongside Khavarspiran, with Dr. Rouhani as its CEO.”
The notes on Dr. Rouhani went on to refer to WRW’s success in producing and supplying a range of cost-effective piping products, which were said to have had a huge impact on the prices and sales of pipes in the Middle East.
The copy of the “About Us” page at the Respondent’s website which the Complainants produced, also included notes on Mr. Auental. The notes described him as a member of the SP-VG factory staff in Ahlen, Germany, a worldwide producer of 5-layer metal-plastic composite pipes. The notes continued:
“At the time, SP-VG was in partnership with other German companies such as Unicor and Uponor. Subsequently, SP-VG exported its technical knowledge to other countries … In co-operation with its Iranian partner, the company established WRW in 2004, with a modern factory in Ahlen, Germany, in order to produce and supply the world’s best 5-layer metal-plastic composite pipes.”
The Respondent’s website referred to various related products (apparently supplied by companies other than WRW), and noted that “Upopipe International” was the agent for these products in the Middle East.
Most if not all of the web pages at the Respondent’s website, were headed with the expression “UPOPIPE”, with a stylized letter “O” consisting of a concentric circle device set against a black rectangle.
The Panel visited the Respondent’s website himself, on April 11, 2008. The Panel noted that the text was almost entirely in Persian. The photographs of Dr. Rouhani and Mr. Auental remained, with accompanying Persian language text which the Panel was unable to read.
The Complainants say that WRW has websites of its own, at the domain names <wrw-ahlen.de> and <wrw-ahlen.com>. These websites are registered to Mr. Pilarski.
Unicor is the registered proprietor of a number of UNIPIPE trade marks, in Germany and Finland, and internationally under the Madrid system of international trade mark registrations. The German registration dates from July 15, 2000, and the international registration from December 19, 2000.
The “message” from Dr. Rouhani which was passed on in the Respondent’s email to the Center dated March 6, 2008, informed the Center that Dr. Rouhani is on the Board of Directors of an entity called “Upopipe int. kish private Joint-stock company” (referred to hereafter as “Upopipe Int.”). According to the message, Upopipe Int. has no relationship or co-operation with the Complainants, and does not even know the Swedish Complainant.
The Respondent attached with his email to the Center dated March 6, 2008, an extract from the Official Gazette of the Islamic Republic of Iran, showing that the trade mark UPOPIPE was registered in the Islamic Republic of Iran by Super Drip International Co Limited (“Superdrip”), with effect from September 27, 2000. The registration is in respect of the following goods: “production of super drip pipes and offering any required services – categories: 6-11-36”. The message asserted that Upopipe Int. had registered the “Upopipe logo”.
Dr. Rouhani’s “message” advised that representatives of Upopipe Int. present their products under the name “UPOPIPE” in the Middle East, Turkey, Canada, and the United States of America, and that Upopipe Int. has spent $100,000 marketing the UPOPIPE mark and making it famous. The “message” further advised that Upopipe Int. has some companies of that name operating in different parts of the world.
Dr. Rouhani’s “message” asserted that there is a relationship between Unicor, Sepiran, and Upopipe Int, but that the arrangement has “probably been made void” by Sepiran for not observing the substance of the agreement and breaking international laws.
Dr. Rouhani’s fax to the Center dated April 10, 2008 was written on letterhead bearing the (stylized) initials “SDI”. To the left of those initials, the words “Super Drip International Kish Co Ltd” appear to have been applied by stamp.
The further statement submitted by the Respondent in response to the Panel’s Procedural Direction No.1, was accompanied by an English translation (certified with a seal which appears to that of the Ministry of Foreign Affairs of the Islamic Republic of Iran), of a trade mark certificate recording the registration in the Islamic Republic of Iran of the mark UPOPIPE, in English and Persian, in respect of the “production and export of super drape pipes, 5 layers, category: 11, 17 and 35”. The original registered proprietor is described in the Certificate as “Super Drape International Kish Company, Private Joint Stock” (an apparent reference to Superdrip), and the registration appears to have been in effect since May 25, 2005. The certificate goes on to refer to the conveyance of the trade mark in August 2007, to Upopipe Int. The certificate records a disclaimer in respect of the word “pipe”.
In his covering submission, Dr. Rouhani explained that Upopipe Int. is part of a consortium of 5 companies, which include Sepiran and Superdrip. He explained that the 5 companies have common management and stock -holders, and that each performs a different function with the group (e.g. production, export, executive affairs).
Dr Rouhani noted that although the trade mark registration authority in the Islamic Republic of Iran allows a period of one month for the filing of objections to applications for the registration of trade marks, there was no objection to the application to register UPOPIPE. (It appears that Dr. Rouhani was referring at that point to the original registration of that mark by Superdrip in the Islamic Republic of Iran back in 2000, and not to the May 2005 registration evidenced by the certificate he provided with his further statement - in the further statement he said: “The sign was even registered for the second time.”)
5. Parties’ Contentions
The Complainants contend:
1. The Domain Name is confusingly similar to the Complainants’ UPO trade marks. The Domain Name incorporates the Complainants’ UPO mark in full, and the addition of the words “pipe” and “int”, being respectively descriptive of the products that the Complainants sell and the international nature of the Complainants’ business, does not reduce the confusing similarity between the Domain Name and the Complainants’ UPO trade marks (see Telstra Corporation Limited v Ozurls, WIPO Case No. D2001-0046, and Global Esprit Inc v Living 4, WIPO Case No. D2004-0318).
2. The Complainants are also the registered proprietors of trade marks consisting of “UPO” plus a descriptive word – for example, “CLEAN”, “VISION”, “GAS” - or an abbreviation of a generic word such as “TERM” (terminal). The Respondent has, in a similar way, added a descriptive word “pipe”, referring to the pipe products and services for which the Complainants are well known. Under the foregoing circumstances, purchasers of products and services marketed through the Domain Name would certainly expect the goods to emanate from the Complainants.
3. The Respondent has no connection with the Complainants, and has not received any license or consent to use the UPO trade marks in a Domain Name or in any other manner.
4. The Respondent is not commonly known by the Domain Name, and has not acquired any rights in the Domain Name.
5. The Respondent has not used the Domain Name in connection with a bona fide offering of goods or services.
6. The unauthorized marketing of competing services under a trade mark owner’s mark, is not a bona fide offering of goods and services (see Velcro Industries BV and Velcro USA Inc v. Qingdao Kunwei Knitting Co. Limited, WIPO Case No. D2007-0203, and State Farm Automobile Ins Co v. Douglas LaFaive, NAF Case No 95407).
7. The Respondent has registered the Domain Name for the primary purpose of disrupting the Complainant’s business.
8. The word “UPO”, being an invented word, is not one that a trader operating in the same field of business would legitimately choose, unless seeking to create an impression of an association with the Complainants. (See Telstra Corporation Limited v. Ozurls (supra), Microsoft Corporation v. MSNetworks, WIPO Case No. D2002-0647, and Velcro Industries BV (supra). That conclusion is supported by the fact that WRW operates its own websites at the domain names <wrw-ahlen.de> and <wrw-ahlen.com>.
9. The fact that customers are likely to be confused by the Respondent’s site, mandates a conclusion that the Respondent’s website infringes the Complainants’ “UPO” trade marks.
10. The Respondent has registered and used the Domain Name for commercial gain by misleading customers and simultaneously tarnishing the “UPO” trade marks. This precludes a finding that the Respondent has used the Domain Name in connection with a bona fide offering of goods or services.
11. The Respondent was aware of the Complainants’ “UPO” trade marks and the nature of the Complainants’ business, when he registered the Domain Name. Alternatively, the Respondent should have been aware of the registered “UPO” trade marks in Germany and elsewhere.
12. The fact that the Respondent uses a domain name confusingly similar to the Complainants’ “UPO” trade marks in connection with the marketing of products directly competing with those of the Complainants, clearly shows that the Respondent intentionally attempted to attract, for commercial gain, internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainants’ “UPO” trade marks as to the source, sponsorship, affiliation, or endorsement of a product or service of WRW marketed on the Respondent’s website.
13. Further evidence of bad faith is found in the fact that the Respondent’s website, without authorization, makes use of the “UPO” trade marks by prominently using the expression “UPOPIPE” on the Respondent’s website. That is an infringement of the Complainants’ trade mark rights.
14. The fact that “UPOPIPE” is a combination of the distinctive part of the Complainants’ well-known “UPO” trade marks and the second syllable of Unicor’s UNIPIPE trade marks (earlier represented by, and therefore known to, Dr. Rouhani), is an additional indicator of the Respondent’s bad faith.
15. The Respondent’s use of the “UPO” trade mark, generally associated with the Complainants’ pipes, demonstrates that his intention has been to free-ride on the Complainants’ reputation and customer goodwill.
In his informal communications with the Center (both Response and further statement), the Respondent contends:
1. He registered the Domain Name for Dr. Rouhani.
2. Dr. Rouhani, through his companies Superdrip and Upopipe Int, has an interest in the registered trade mark UPOPIPE, which was originally registered by Superdrip in the Islamic Republic of Iran, in September 2000. A subsequent registration of an UPOPIPE mark in the Islamic Republic of Iran by Superdrip, in May 2005, was assigned to Upopipe Int. in August 2007.
3. Upopipe Int. also has a legitimate interest in the Domain Name because it markets products under the name “Upopipe” in the Middle East, Canada, Turkey, and the United States of America, and has spent $100,000 marketing that name and making it famous.
4. If the Complainants had registered the UPOPIPE logo before Upopipe Int. acquired rights in that logo, Upopipe Int. would accept the Complainants’ rights.
C. Complainant’s Statement in Reply
In its Statement in Reply, the Complainant made certain submissions to the effect that the Panel should completely disregard the statements submitted by the Respondent, because of the Respondent’s failure to comply with the Rules (both as to lateness in filing, and failure to certify). Those submissions go beyond what the Panel requested in its Procedural Order No. 2, and the Panel declines to take them into account.
The Complainant made the following additional submissions:
(1) There is no evidence that the UPOPIPE trade mark in the Islamic Republic of Iran belongs to a management consortium consisting of a group of companies which includes Upopipe-Int and Superdrip. The trade mark is registered to only one company.
(2) There is no evidence that Dr. Rouhani is authorized to represent all five companies within the group, or any of them.
(3) The Respondent is in any event Iman G. Mohammadi, not Dr. Rouhani.
(4) The Respondent has not provided evidence which is sufficient to establish any of the examples of rights or legitimate interests which are provided at paragraph 4(c) of the Policy. In particular, there is no evidence of any use of the Domain Name (or of demonstrable preparations to use the Domain Name), in connection with a bona fide offering of goods or services, before the Respondent had notice of the present dispute.
(5) The Respondent cannot claim a right or legitimate interest in the Domain Name on the basis that he is a legitimate reseller of trade-marked goods. The result of previous Panel decisions is that a website operated by such a legitimate reseller, must accurately disclose the registrant’s relationship to (in this case) the Iranian trade mark owner. In fact, the Respondent’s website advertises the products of W.R.W.
6. Discussion and Findings
A. General Principles under the Policy
Under paragraph 4(a) of the Policy, the Complainants have the burden of proving the following:
(i) That the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(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 or is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
B. Identical or Confusingly Similar
The Panel is satisfied that the Domain Name is confusingly similar to a trade mark in which the Complainant Uponor Innovation AB has rights. Uponor Innovation AB is the registered proprietor of a number of Community Trade Marks which consist of the expression “UPO” together with a simple additional word or expression – e.g. UPOCLEAN, UPOFUSE, UPONAL, UPONOR, UPOREN, and UPOSUN. The specifications for each of these registrations appear to include pipes of one kind or another, or pipe-related equipment. In each case, the dominant part of the trade mark appears to be the made-up expression “Upo”. Uponor Innovation AB appears also to be the registered proprietor of some similar registrations in Finland – see for example the evidence of the registration of the marks UPOTEL and UPOLAR in Finland. However the Panel has not been provided with English translations of the Finnish registration particulars, and it is not clear to the Panel whether or not the Finnish registrations cover pipes or pipe-related equipment.
In this case, the Domain Name consists of the expression “Upo”, together with the ordinary English word “pipe”, a hyphen, and the expression “int”, which is a well understood abbreviation for the English word “international”. It is well-established in cases decided under the Policy, that forming a domain name by taking a complainant’s trade mark and adding to that trade mark a word or words which are substantially descriptive of the very product the complainant markets under that trade mark, only exacerbates the confusion caused by the use of the complainant’s mark (see for example The Ritz Hotel Ltd v. Damir Kruzicevic, WIPO Case No. D2005-1137, and Quintessentially (U.K.) Limited v. Mark Schnorrenberg/Quintessentially Concierge, WIPO Case No. D2006-1643). In this case, it is perfectly clear that the Complainant Group operates under a “family” of trade marks, all of which include the expression “Upo”. The business of the Complainant Group is substantially the marketing of pipes and pipe-related equipment, and the Complainant Group has shown that it operates internationally (in Europe and North America).
The hyphen in the Domain Name does not convey any separate or additional meaning, and numerous Panels deciding cases under the Policy have confirmed that the “.com” suffix is not to be taken into account in comparing a complainant’s trade mark with a disputed domain name.
The distinctive part of the Domain Name is clearly the expression “Upo”, and that expression is identical to the same expression used in many of the Complainant Group’s trade marks. Furthermore, the Panel is satisfied that the impression, or idea, the Domain Name would convey to many internet users, would be that of a website concerned in some way with the international marketing of pipes under a trade mark or trade name “Upo”. To thousands of internet users who were familiar with the Complainant Group and its pipe products, the Domain Name would immediately bring the Complainants and their products to mind.
Those circumstances make it clear that the Domain Name is confusingly similar to the “UPO” family of trade marks in which the Complainant Uponor Innovation AB has rights.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainants of absence of rights or legitimate interests in the Domain Name on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that he does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”
In this case, the Complainants have established that the Domain Name is confusingly similar to trade marks in which they have rights, and that they have not authorized the Respondent to use those marks (or any confusingly similar expressions), whether in a domain name or otherwise. The use the Respondent has made of the Domain Name has clearly been commercial in nature, so there is no question of the Respondent enjoying a right or legitimate interest of the kind which is described at paragraph 4(c)(iii) of the Policy (respondent making a legitimate non-commercial or fair use of the disputed Domain Name, without intent for commercial gain …).
Proof of those matters has normally been regarded by Panels deciding cases under the Policy, as sufficient prima facie evidence of the matters to be proved under paragraph 4(a)(ii) of the Policy. In accordance with paragraph 2.1 of the Center’s “overview” document quoted above, the burden shifts to the Respondent to demonstrate that he has some right or legitimate interest in the Domain Name.
The principal matter relied upon by the Respondent in the informal emailed response and in the further statement, is that the Respondent’s principals (through Dr. Rouhani), Upopipe Int and Superdrip, enjoy rights or legitimate interests in the Domain Name as the proprietor or licensee in the Islamic Republic of Iran of the registered mark UPOPIPE.
The Effect of a Respondent holding a Trade Mark Registration corresponding to the Disputed Domain Name – Prior Decisions under the Policy
A number of Panel decisions under the Policy have considered whether a respondent’s ownership of a registered trade mark corresponding to the disputed domain name, is sufficient on its own to establish a right or legitimate interest under Paragraph 4(a)(ii) of the Policy.
One of the early cases, was Madonna Ciccone p/k/a Madonna v. Dan Parisi and Madonna.com, WIPO Case No. D2000-0847. In that case, the panel said:
“It would be a mistake to conclude that mere registration of a trade mark creates a legitimate interest under the Policy … To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.”
The issue was considered in depth in the later case of BECA Inc v. CanAm Health Source Inc, WIPO Case No. D2004-0298. The panel in that case referred to the decision in Madonna Ciccone, and also to the early panel decision of ISL Marketing AG, and The Union des Associations Européennes de Football v The European Unique Resources Organization 2000 B.V., WIPO Case No. D2000-0230. (The panel in the “Euro 2000” case had come to the conclusion that, while a registration of a trade mark could show that a respondent had an interest in the disputed domain name, not all interests are “legitimate”. The panel had noted that the respondent’s United States trade mark application had been filed after it had received the complainant’s cease and desist letter, and concluded that it would be dangerous to adopt any general principle that registration of a disputed domain name could be retroactively legitimatized simply by filing a fresh trade mark application in a jurisdiction other than those where the complainant’s mark was registered. The panel noted that the owner of every contested domain name would always easily find at least one register where the complainant’s mark was not registered.)
The panel in BECA Inc drew the following conclusions from the earlier cases:
1. When considering the question of “rights or legitimate interests” under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trade mark relied upon by a respondent. The mere fact that a trade mark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the Policy. In a case where, in the opinion of the panel, a trade mark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trade mark can be disregarded.
2. The chronology of the relevant events is an important factor in determining whether the application to register the trade mark is bona fide, or merely a way of bolstering the Respondent’s domain name registration. A trade mark application made subsequent to notice of a dispute or the domain name registration, may indicate a lack of legitimate interest.
3. The knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant’s rights does not, in itself, preclude the respondent from having a right or legitimate interest in the domain name.
4. The connection, or lack of it, between the respondent and the jurisdiction in which it is seeking a trade mark registration, may indicate whether the trade mark application or registration is “legitimate”.
5. Trade mark rights are territorial in nature. National trade mark laws often permit a party to obtain registered trade mark rights in that jurisdiction even where it is clear that the party has deliberately chosen that trade mark having seen the use of that name in another jurisdiction. This is particularly so where the name in question is quasi-generic in nature. These factors may also be relevant to the question of whether an application for a trade mark registration should be treated as being sought merely to bolster a domain name registration.
6. It is one thing to disregard a trade mark registration when that registration is no more than a device to bolster a registration of a domain name. It is quite another to disregard a trade mark registration where it is claimed that the registration is for some other reason not bona fide, and/or it is claimed that the registration is invalid. To do so would involve making a decision on matters that impinge on the field of competence of national courts or trade mark registries.
In Westec Interactive Security, Inc v Express Post Limited (Westec Division), WIPO Case No. D 2005-0811, the panel noted that there was nothing in the case before it to suggest that the respondent’s trade mark registration was anything other than genuine, and that the respondent therefore had rights in respect of the disputed domain name. However, the panel went on to say: “The Panel might well have come to a different conclusion if there were any suggestion that the Respondent had registered the trade mark after having acquired knowledge of the complainant’s interest in the name …”
More recently, the panel in Ribbel International Limited v. Ribbel Medizintechnik GmbH, WIPO Case No. D2005-1183, noted:
“Ordinarily, provided there are no contradicting circumstances, if a respondent proves that it has a registered trade mark, it also demonstrates a legitimate interest in the domain name, and a complaint would therefore fail.”
Application of the foregoing Principles to the Facts of this Case
Previous panel decisions under the Policy have taken the view that it is appropriate to treat the actions of the beneficial owner of a disputed domain name, as those of the respondent for the purposes of paragraph 4 of the Policy (see, for example, Building Trade 1868 Kft. v. RegisterFly.com, WIPO Case No. D2006-0396, citing Antonio de Felipe v RegisterFly.com, WIPO Case No. D2005-0969). That seems to this Panel to be the correct approach, and accordingly the Panel addresses the question of “right or legitimate interest” on the basis that any proved right or legitimate interest of whoever is the beneficial owner of the Domain Name, will provide the Respondent with a complete answer to the Complaint.
Who is the party with the beneficial interest in this case? Quite clearly, the named Respondent, Iman G. Mohammadi, is not the beneficial owner of the Domain Name – he explained in his informal response that he merely operates a web hosting company, and that he has been acting on behalf of Dr. Rouhani’s interests. Within his informal response, he incorporated a “message” from Dr. Rouhani, written on behalf of the corporation Upopipe Int. With that informal response, the Respondent forwarded evidence of an UPOPIPE trade mark registration in the Islamic Republic of Iran, in the name of Superdrip.
Dr. Rouhani has subsequently corresponded with the Center on a letterhead which appears to be a Superdrip letterhead, and he has explained in the Respondent’s further statement that Upopipe Int and Superdrip are companies within the same group, each carrying out different functions in the furtherance of the group’s business activities. There is no evidence that Upopipe Int actually existed as a corporation at the time the Domain Name was registered. Indeed, the Respondent ignored a question put to him by the Panel, in the Panel’s Procedural Direction No. 1, which enquired directly when Upopipe Int was incorporated. In the circumstances, it seems likely that the beneficial owner of the Domain Name when it was registered was Superdrip, that company then being the proprietor of the Iranian UPOPIPE trade mark registration. By August 2007, the evidence shows that Upopipe Int was in existence – indeed, it acquired an Iranian UPOPIPE trade mark registration from Superdrip in that month, and two months later the Respondent’s website described Upopipe Int as the Middle East agent for two German corporations (a tool manufacturer and a pipe fittings manufacturer). It may be that the beneficial ownership of the Domain Name passed from Superdrip to Upopipe Int at some time after the Domain Name was registered – certainly by October 2007 Upopipe Int appears to have been the company which was using the Domain Name. In the end, for the reasons which appear below, it is not necessary to decide which of the two companies within Dr. Rouhani’s group (i.e. Superdrip or Upopipe Int) is the beneficial owner – on the evidence produced, both companies appear to have an interest in an UPOPIPE trade mark registration in the Islamic Republic of Iran.
The evidence sufficiently establishes that Superdrip registered the mark UPOPIPE in the Islamic Republic of Iran, in September 2000. The effect of that registration, was to confer on Superdrip a monopoly right to use the UPOPIPE mark in trade, in the Islamic Republic of Iran, in respect of the particular goods or services for which the mark was registered.
Is there anything in the evidence which would permit the Panel to treat that trade mark registration as invalid for any reason? In the Panel’s view, the answer to that question must be “no”.
Certainly there are some suspicions over Superdrip’s bona fides in making that trade mark application. Quite clearly, Dr. Rouhani would have been well aware of the Complainant Uponor Oyj and its pipe products when the trade mark application was made in September 2000 – Dr. Rouhani had, through his involvement in Sepiran, been intimately involved in the preceding five years with the marketing and sale in the Islamic Republic of Iran of the Unicor pipes manufactured by Uponor Oyj’s German subsidiary. And he does not deny knowledge of Uponor Oyj or its products or trade marks – he just denies knowledge of “the Swedish one named Uponor”. The fact that the sole agency agreement provided for Sepiran to cover its requirements for heating and sanitary products solely from Unicor (insofar as Unicor had those products in its range), coupled with the obscure acknowledgement in the informal response that “the unilateral agreement has probably been made void by K. Sepiran for not observing the substance of agreement and breaking international laws which is also not related to us”, raises further questions. Was it lawful for a related company of Sepiran (Superdrip) to register a UPOPIPE trade mark in the Islamic Republic of Iran (and possibly trade in the Islamic Republic of Iran under that mark) during the currency of the Sepiran/Unicor sole agency agreement?
There are suspicions, but in the Panel’s judgment those suspicions do not rise to the point where the Panel could safely conclude that Superdrip acted unlawfully in registering the UPOPIPE trade mark in the Islamic Republic of Iran in September 2000. The Panel notes and adopts the comments made in the BECA Inc v. CanAm Health Source Inc case, based on the territoriality of national trade mark registrations. As the panel noted in that case, national trade mark laws often permit a party to obtain registered trade mark rights in that jurisdiction, even where it is clear that the party has deliberately chosen that trade mark having seen the use of that name in another jurisdiction. It seems to the Panel that that may be the very situation in this case. When it registered the UPOPIPE mark in the Islamic Republic of Iran, Superdrip would have been aware of Uponor Oyj’s pipe products marketed under various trade marks containing the expression “Upo”, but would also have been aware that the Complainants did not hold any registered rights in respect of any UPO mark in the Islamic Republic of Iran at that time, and had no established reputation in the Islamic Republic of Iran for any “Upo” unregistered mark (it appears that the Complainants’ products were then being marketed in the Islamic Republic of Iran (under the sole agency agreement with Sepiran) under a UNIPIPE mark).
Quite apart from those considerations, it would be a rare circumstance indeed for any panel, in an administrative proceeding such as this, to look behind the decisions of a national trade mark authority. This is not one of those rare circumstances, and the Panel therefore concludes that in September 2000, Superdrip became the holder of a valid registration for the mark UPOPIPE in the Islamic Republic of Iran.
As Superdrip was already the holder of a registered UPOPIPE mark in the Islamic Republic of Iran when it applied to register the mark again in 2005, the Panel can see no reason to look behind that registration either (or the assignment of that registration to Upopipe Int in August 2007). If the 2000 registration is immune from challenge in an administrative proceeding such as this, that must apply equally to the 2005 registration.
The cases discussed above demonstrate that the validity of the UPOPIPE trade mark registrations does not automatically mean that Superdrip and/or Upopipe Int have a right or legitimate interest in respect of the Domain Name. But in this Panel’s view, holding a validly registered trade mark which is identical or confusingly similar to a disputed domain name, will often be a complete answer to a complaint under the Policy (at least where there is no evidence that the respondent registered the trade mark without any bona fide intention of using it). The principal exception would appear to be where the trade mark application or registration has been sought or obtained merely in order to bolster a domain name registration. In such a case, a panel would often be justified (depending on the particular facts of the case) in taking the view that the respondent’s registered mark did not create a legitimate interest, in the disputed domain name.
As the panel noted in the BECA Inc case, the chronology of relevant events will often be an important factor in determining whether the application to register the trade mark was made bona fide, or merely to bolster the respondent’s domain name registration. In this case, the first UPOPIPE trade mark registration was made by Superdrip some 5 years before application was made to register the Domain Name. There does not appear to be any obvious linkage between the registration of the trade mark in September 2000, and the subsequent registration of the Domain Name. In September 2000, Dr. Rouhani may well have had in mind trading under a UPOPIPE mark within the Islamic Republic of Iran, as soon as Sepiran’s commitments with Unicor were terminated, or earlier if he believed he could. Also, this is not a case where the trade mark has been registered in some distant country, far from the respondent’s country of domicile. Superdrip and Upopipe Int are both Iranian companies, and Dr. Rouhani appears to reside and work in that country. To borrow from the language adopted by the panel in the Madonna Ciccone case, there is nothing in the evidence to establish that the registration of the trade mark in the Islamic Republic of Iran in 2000 was “obtained merely to circumvent the application of the Policy”. The August 2005 registration might be thought to be more questionable (because of the proximity between that date and the date of registration of the Domain Name), but it appears to have been nothing more than a re-registration of the UPOPIPE mark with a different specification and (possibly – the translation of the Iranian trade mark certificate is not clear on the point) in stylized form.
The knowledge and intention of Dr. Rouhani when he caused the Domain Name to be registered, is of course relevant, but knowledge that the Complainants had rights, in countries other than the Islamic Republic of Iran, did not, in itself, preclude Superdrip from having a right or legitimate interest in the Domain Name pursuant to the September 2000 registration of the mark UPOPIPE in the Islamic Republic of Iran. And Upopipe Int’s rights in one of the UPOPIPE registrations appear to have been validly acquired from Superdrip.
The Domain Name in this case is, of course, slightly different from the registered UPOPIPE mark. But the Domain Name is very similar to that mark – the only differences are the addition of the hyphen and the common abbreviation “int”. It seems to the Panel that any proprietor of a registered mark UPOPIPE in a particular country, would have a clear interest in preventing others from marketing products in that country through a domain name which consisted of that mark with the addition of a hyphen and the abbreviation “int”, and would therefore have a legitimate interest in acquiring such a domain name. The Panel therefore concludes that Superdrip and Upopipe Int, being the real parties in interest, have produced (just) sufficient evidence to show that they have a legitimate interest in the Domain Name.
The Complainant has submitted in reply that there is insufficient proof of a legitimate connection between the Respondent, Mr. Mohammadi, and the owner of the UPOPIPE trade marks which were originally registered by Superdrip in the Islamic Republic of Iran. But the Complaint itself shows that, in October 2007, there existed an Iranian company operated by Dr. Rouhani with a name which was virtually identical to the Domain Name (Upopipe Int). The Response, when it came, showed that Mr. Mohammadi was simply holding the Domain Name for Upopipe Int and Dr. Rouhani, and was not himself the real party in interest. The Response also showed that there existed a UPOPIPE trade mark in the Islamic Republic of Iran, registered by Superdrip as long ago as September 2000. Although Dr. Rouhani’s English was not good, it was apparent that he was in some way asserting use rights derived from that Iranian trade mark registration.
The apparently reliable evidence of an Iran-registered UPOPIPE mark could hardly have been ignored, and it was inevitable in the circumstances that the Panel should seek clarification of the Respondent’s submissions. With the Respondent’s further statement, Dr. Rouhani provided evidence of the relationship between Upopipe Int and Superdrip, and (again, seemingly reliable) evidence of an assignment of an Iran-registered UPOPIPE mark from Superdrip to Upopipe Int.
The Complainant submitted that there is no evidence that Dr. Rouhani is authorized to represent all five companies with the group. But the copies of the Respondent’s website produced by the Complainant confirm that Dr. Rouhani is indeed the principal of Upopipe Int, and Dr. Rouhani’s later communication with the Center on Superdrip letterhead tends to corroborate his assertion that he also represents that corporation. The apparent assignment of one of the UPOPIPE trade mark registrations from Superdrip to Upopipe, is not inconsistent with the two companies being part of a consortium, with each company able to use the UPOPIPE mark in the Islamic Republic of Iran for the goods or services covered by the Iranian registrations.
Just as a non-exclusive license to use a trade mark can be sufficient to constitute a “right” for the purposes of paragraph 4(a)(i) of the Policy (as to which, see the discussion at pages 9 to 10 of the decision of this Panel in NVT Birmingham, LLC d/b/a CBS42 WIAT v ZJ, WIPO Case No. D2007-1079), so in an appropriate case can a non-exclusive license to use a trade mark, form a basis for a respondent to claim a legitimate interest in a domain name which is identical or very similar to that trade mark. It is therefore not essential that the real party in interest should be the owner of the mark which is identical or confusingly similar to the disputed domain name – a non-exclusive license to use a mark, such as often exists informally between companies with the same group, is sufficient.
The Complainants further submitted that the Respondent did not provide any evidence that it had used the Domain Name (or made demonstrable preparations to do so), in connection with a bona fide offering of goods or services, before it received notice of the present dispute. But if the Respondent’s principal in fact enjoys a monopoly right to use the mark UPOPIPE in the Islamic Republic of Iran in respect of superdrip pipes, and the Domain Name has been used at least in part to promote sales of such pipes in the Islamic Republic of Iran, on what basis is the Panel to say that the use of the Domain Name has not been in connection with a bona fide offering of such goods? The Respondent’s website is, after all, in the Persian language, and is therefore presumably directed at the Iranian market where the Respondent’s principals hold the relevant monopoly rights.
But even if the Domain Name had not been used at all for the promotion of pipe products in the Islamic Republic of Iran, the fact remains that the Respondent’s principals are the owners or licensees of the UPOPIPE mark in the Islamic Republic of Iran. Subject to the qualifications discussed in the BECA Inc. v. CanAm Health Source Inc case, those Iranian rights do, in the Panel’s view, provide the Respondent’s principals with a legitimate interest in the Domain Name.
In the end, the Panel has come to the view that the existence of the registered UPOPIPE trade marks must on the record before the Panel in the present case be decisive in the Respondent’s favor. In many respects, this case is similar to the situation in Ribbel International Limited v. Ribbel Medizintechnik GmbH (supra), where the panel noted that, provided there are no “contradicting circumstances”, if a respondent proves that it has a registered trade mark, it also demonstrates a legitimate interest in the domain name. As in that case, there appears in this case to have been a long relationship between a company or companies controlled by Dr. Rouhani on the one hand, and a subsidiary of the Complainant Uponor Oyj on the other. As in that case too, the factual situation here is murky. Such cases are not often appropriate for resolution under the Policy, which is primarily designed to deal, in a summary way, with clear cases of cybersquatting. See in that regard the recent decision in Urb, Inc. v. SR, WIPO Case No. D2008-0124, where the panel said (of a case involving difficult contractual and commercial disputes between the parties):
“These disputes are more appropriately decided by traditional means, as they turn on questions of fact that cannot be resolved on the basis of the Parties’ statements and documents, and on questions of law beyond the limited scope of the Policy. See Clinomics Biosciences, Inc v Simplicity Software, Inc., WIPO Case No. D2001-0823.”
For the foregoing reasons, the Panel is satisfied, on the limited evidence produced, that it is more likely than not that the Respondent has a legitimate interest in the Domain Name.
That finding means that the Complaint must fail, and there is no need for the Panel to consider paragraph 4(a)(iii) of the Policy, relating to bad faith registration and use.
For all the foregoing reasons, the Complaint is denied.
Dated: May 6, 2008