The Complainant is IVECO S.P.A of Torino, Italy, represented by Studio Barbero, Italy.
The Respondent is alghodwagroup of Bagdad, Iraq.
The disputed domain name <iveco-it.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2009. On March 6, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On March 6, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 12, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 8, 2009.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on April 21, 2009. 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.
The Complainant is a well-known Italian company that designs, manufactures and distributes a wide range of commercial and specialty vehicles both domestically and internationally that has been in existence since January 1, 1975.
As evidenced by the numerous Annexes that the Complainant has produced, the Complainant has maintained rights in the IVECO trademark since 1976. Since then, the Complainant has established rights to the IVECO mark both domestically and internationally. The Complainant has also registered numerous domain names worldwide, including <iveco.com> and <iveco.it>
The Respondent, as evidenced by a Tucows Registrar WhoIs database search is the registrant of the domain name <iveco-it.com> that was created on June 5, 2007. The administrative contact has been identified as Mr. Kalid, an individual addressed in Baghdad, Iraq.
The Complainant is an Italian-based company that operates on a large scale both domestically and virtually worldwide. The Complainant has presented significant evidence in both the Complaint and the accompanying Annexes that it has utilized the IVECO trademark throughout the world, whether through trademark registrations, domain name registrations, or international and domestic advertising campaigns. The Complainant argues that through virtually thirty years of use and substantial investments of time and resources by the Complainant, IVECO has become a well-known trademark.
The Complainant alleges that the Respondent registered the disputed domain name without any authorization from the Complainant and then subsequently utilized the domain name in a fraudulent manner by representing himself to be an authorized employee of the Complainant in a number of instances. In light of such a dangerous use of the domain name, the Complainant contends that it has an interest in recovering the disputed domain name of <iveco-it.com> and notes that it has attempted to do so without success.
In arguing its case under paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name of <iveco-it.com> is confusingly similar to the trademarks in which the Complainant has rights based on the numerous trademark registrations they have presented as Annex 3. The Complainant has held a number of rights to the IVECO trademark since 1976, well before the June 5, 2007 registration of the disputed domain name.
The Complainant further avers that it is a well established principle that the addition of the generic terms “it” and “.com” are not distinguishing features and as a result would not remove the confusing similarity between the trademark IVECO and the disputed domain name of <iveco-it.com>. The Complainant argues that the fact that IVECO is the dominant and distinctive component of the domain name necessitates the transfer as the disputed domain name would certainly generate the impression to Internet users that <iveco-it.com> is somehow associated with the Complainant.
Thereafter in satisfying the requirements under paragraph 4(a)(ii) of the Policy, the Complainant argues that the Respondent has not provided any evidence that the disputed domain name was being used, or would later be used, in connection with a bona fide offering of goods and services. The Complainant also avers that the Respondent is not a licensee or an authorized agent of the Complainant and as a result is not permitted to use the IVECO trademark. The Respondent has also not presented any evidence that they were commonly known by the disputed domain name or had any association with the IVECO mark.
The Complainant alleges that the Respondent registered the disputed domain name of <iveco-it.com> in order to participate in a tender with the Municipality of Baghdad by pretending to be associated with the Complainant. The Complainant contends that the information presented indicating that the Respondent had fraudulently represented itself as associated with the Complainant before the disputed domain name was registered confirms this. As a result, the Complainant contends that the registration cannot be viewed as a legitimate non-commercial or fair use of the domain name. Clearly the Respondent was acting for commercial gain and intentionally trying to divert customers of the Complainant. As a result, the Complainant concludes that the Respondent has no rights or legitimate interest with respect to <iveco-it.com> according to paragraph 4(a)(ii) of the Policy.
In arguing the final element under paragraph 4(a) of the Policy, the Complainant contends that due to the Complainant's significant use of the trademark, advertising and product sales worldwide for the past thirty years, the IVECO trademark has become well-known around the world. The Complainant also notes that the use of the IVECO trademark was used extensively in Iraq, where the Respondent is based, as well. The Complainant finds it reasonable to conclude as a result that the Respondent knew or should have known of the Complainant's trademark at the time of registration. The Complainant buttresses this point by noting that bad faith is also evidenced by the fact that the Respondent had previously forged a letter on the Complainant's letterhead and represented himself as an employee of the Complainant prior to the date the disputed domain name was registered.
The Complainant contends that this notice, as well as the Respondent's actions in fraudulently representing himself as the Complainant in hopes of securing a tender from the Municipality of Baghdad clearly evidences the bad faith use. The Complainant has stated that the factual portion of the Complaint describes these allegations in detail. The Complainant specifically notes that under paragraph 4(b)(iv) of the Policy, the Respondent has created a confusingly similar domain name incorporating the Complainant's IVECO trademark in hopes of attracting Internet users to the website for commercial gain. As a result, the Complainant contends that the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
In accordance with the Rules, a panel is required to render its decision “on the basis of the statements and documents submitted and in accordance with the Policy, [the] Rules and any rules and principles of law that it deems applicable.” (Rules, paragraph 15(a)).
Additionally, it is the Complainant's duty to establish each element of paragraph 4(a) of the Policy, which are as follows:
(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 domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must establish the three elements above regardless of whether the respondent replies to the complaint. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.
In this instance, the Complainant has presented significant evidence in the Complaint and the within Annex 3 that the Complainant registered the IVECO trademark as early as 1976 with a number of additional trademark registrations and renewals throughout the past thirty years. The Complainant has also presented evidence in Annex 4 that the IVECO mark was widely utilized by the Complainant in a number of advertising campaigns and product samplings. The Complainant has also evidenced in the Complaint and the various Annexes that they have also registered a significant number of domain names embodying the IVECO trademark. These domain names include <iveco.com> and <iveco.it> among numerous others.
The Panel also is of the opinion that the Complainant has presented sufficient evidence within their complaint and the accompanying Annexes that the IVECO mark is widely utilized both domestically and internationally through advertisements, promotions, representative offices as well as through the trademark and domain name registrations. As a result, the Panel can reasonably infer that a certain amount of goodwill and reputation has become associated with the Complainant's mark.
As evidenced by the January 16, 2009 Tucows Registrar WHOIS database search, the Respondent did not register the <iveco-it.com> domain name until June 5, 2007, over thirty years following the Complainant's initial trademark registration. The Panel also finds that the disputed domain name of <iveco-it.com> wholly incorporates the IVECO trademark which through the efforts of the Complainant, has become widely utilized and recognized throughout the world. The Panel also disregards both the use of the “it” and the “.com” suffixes within the dispute domain name. It is a widely held principle that the use of a suffix such as “.com” within a domain name is an irrelevant distinction that does not alter the likelihood of confusion. Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429. Additionally, the use of the “it” term within the disputed domain name, which in this instance has been used to associate the domain name with Italy, can also be disregarded since it does not dispel the likelihood of confusion. Cable News Network, LLP v. Elie Khouri d/b/a Channel New Network et al, Claim No. FA117876 (NAF December 16, 2002).
As a result of the above, the Panel finds that the disputed domain name of <iveco-it.com> is confusingly similar to the IVECO trademark in which the Complainant has rights. Accordingly, the Complainant has met their burden under paragraph 4(a)(i) of the Policy.
Under the next element, the Complainant is required to make a prima facie case that the Respondent lacks rights or a legitimate interest in the dispute domain name. Once this showing has been made, the burden is transferred to the Respondent to show that they had rights or a legitimate interest to the disputed domain name. Belupo d.d. v. WACHEM d.o.o, WIPO Case No. D2004-0110. Under paragraph 4(c) of the Policy, the Respondent is provided with a non-exhaustive list of circumstances that may be used to demonstrate to the Panel that the Respondent has legitimate interests or rights in the disputed domain name.
The Complainant contends in this instance that they have made a prima facie showing, and as a result, the burden has been passed to the Respondent. The Respondent has failed to respond to the Complainant's contentions. In this instance, the Panel finds that the Complainant has evidenced that they possess rights to the IVECO trademark both in Italy and internationally. The Complainant has also indicated that the Respondent was not a licensee or authorized agent of the Complainant, and as a result had no right to use the IVECO mark. The Respondent has failed to rebut this contention and evidence that they have any right to the IVECO mark or the disputed domain name.
While the Panel finds the Complainant's contention that the Respondent had either actual or constructive knowledge of the Complainant's business before registration persuasive in light of the extent of the Complainant's business, in particularly their involvement in Iraq, the Panel cannot conclude on this argument alone. The Panel does find however that the Respondent's numerous communications, the relationship between the parties, as well as Annex 13-2 which evidences a reproduction of a letterhead of the Complainant that is alleged to be fraudulently signed by the Respondent lends weight to the Complainant's contentions.
Presently the Respondent has failed to present a single circumstance under paragraph 4(c) of the Policy or any other reasoning that the Respondent had any sort of rights or a legitimate interest in <iveco-it.com>. The Complainant has also presented evidence under Annex 5 that the Respondent, despite not being associated with the Complainant in any way, improperly held themselves out as being associated with the Complainant in order to secure a tender from the Municipality of Baghdad. The evidence under Annex 5 indicates that the Respondent fraudulently held itself out as an employee of the Complainant to accomplish this, and the Complainant has alleged that the January 2007 document within Annex 13-2 was forged by the Respondent.
The Respondent's domain name was clearly confusingly similar to one thought to be associated with the Complainant, as evidenced by the email of June 14, 2007 from the Baghdad Mayoralty, in which it was assumed that the email address linked to the disputed domain name was that of an official Iveco representative. Even worse, the evidence indicates that the Respondent responded to that email in the name of Iveco, i.e. the Respondent intentionally tried to attract Internet users to the disputed domain name for commercial gain. In this case, the commercial gain would be the award of the large tender for the Municipality of Baghdad.
As a result, the Panel can conclude that the Respondent is not making a legitimate noncommercial or fair use of the dispute domain name as the Respondent seems to be, on a balance of probabilities based on the submitted evidence, wrongfully representing itself as being associated with the Complainant in an attempt to misleadingly divert the Baghdad authorities away from the business of the Complainant. Such a use is certainly not a bona fide use of the disputed domain name, as the Respondent is utilizing a confusingly similar domain name to misleadingly divert Internet users and consumers away from the goods of the Complainant. Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548.
The Panel is presently unable to access the domain page. Notwithstanding this fact, the Panel is able to reasonably conclude based on the preponderance of the evidence that the Respondent does not have any rights or a legitimate interest in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements enumerated under paragraph 4(a)(ii) of the Policy.
The Complainant is next required to evidence that <iveco-it.com> was registered and is being used in bad faith. Under paragraph 4(b) of the Policy a number of instances that constitute bad faith registration and use are provided. In addition to this non-exhaustive list of circumstances, a panel is also able to draw inferences about bad faith registration and use in light of the various facts and circumstances of each case. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In this instance, the Complainant has presented evidence that the Complainant has rights both domestically and internationally to the IVECO mark, most of which have been registered prior to the disputed domain name. The Complainant has also evidenced that for the past thirty years it has maintained a significant presence around the world, including in Iraq and the Middle East, through advertising campaigns, promotions, and general business and sales.
The Respondent in this instance registered the disputed domain name in June of 2007. While there are still some evidentiary questions as to the fraudulent conduct in this instance, the Complainant has presented in Annex 13-2 what it alleges is an unauthorized reproduction of the Complainant's letterhead with the Respondent misrepresenting itself as an authorized representative of the Complainant. This allegedly had occurred in January of 2007, before the registration of the disputed domain name.
There are also a number of other Annexes where misconduct can be inferred prior to the registration. Additionally, it should be taken into account that the mark IVECO is an acronym created by the Complainant representing “Industrial Vehicle Corporation”. The term IVECO is not a generic or commonly used term and does not appear to have any significance to the Respondent's activities. As a result, it is highly unlikely that the Respondent selected the domain name of <iveco-it.com> without knowledge of the Complainant's marks. See Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550. Although further evidence of the content of the disputed domain name would have assisted the Panel , the Panel finds based on a preponderance of the evidence that the Respondent registered the disputed domain name in bad faith.
In terms of bad faith use, the evidence presented by the Complainant is fairly strong in this particular case. As evidenced by the June 14, 2007 letter from the Baghdad Mayoralty, whether through mistake or through the misconduct of the Respondent, a consumer was put into touch with the Respondent through the disputed domain name and in the belief that it was contacting the Complainant. There is not enough evidence to conclude specifically on what had actually occurred. That being said, the evidence pointing to the Respondent's actions thereafter in representing himself as being associated with the Complainant and even holding himself out as an actual employee of the Complainant is telling. Additionally, evidence of the Respondent's June 15, 2007 response to the Municipality of Baghdad as well as the subsequent communications seem to strongly indicate that the Respondent is attempting to perpetuate and continue the misrepresentation.
Under paragraph 4(b)(iv) of the Policy, it is stated that evidence of bad faith registration and use, can be shown if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, the Panel can reasonably infer that the Respondent attempted to attract Internet users to the disputed domain name for commercial gain by creating a likelihood of confusion with the IVECO mark. See A.H. Belo Corporation v. King TV and 5 Kings, WIPO Case No. D2000-1336. As noted previously, the IVECO mark was wholly incorporated into the disputed domain name of <iveco-it.com>. The Respondent also seems to have perpetuated the confusion by wrongfully holding itself out to be associated with the Complainant, in accordance with the evidence presented by the Complainant which strongly points in that direction. There appears to have been also a clear motive for commercial gain, since the tender with the Municipality of Baghdad was rather large. The Panel can reasonably conclude on this point, by preponderance of the evidence that the Respondent intended to benefit from the reputation of the Complainant's trademark and to capitalize by attracting Internet users to the domain name for commercial gain. See Infospace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075.
With all the evidence taken together, the Panel believes that these facts and circumstances are enough to constitute, on a balance of probabilities, that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel finds that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name , <iveco-it.com> be transferred to the Complainant.
Nasser A. Khasawneh
Dated: May 5, 2009