Complainant is Hewlett-Packard Company of Palo Alto, California, United States of America, represented internally.
Respondent is Tehran Falnic Company of Tehran, Islamic Republic of Iran, represented by Farama LLP, Islamic Republic of Iran.
The disputed domain names <hpiran.ir> and <iranhp.ir> are registered with IRNIC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2009. On June 23, 2009, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain names. On June 29, 2009, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amendment to the Complaint on July 2, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2009. The Response was filed with the Center on July 30, 2009.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on August 18, 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.
Complainant has held numerous trademark registrations for many years for the mark “HP” in Iran and around the world. Complainant owns two Iranian trademarks for HP: (1) registration number 70399 with a registration date of April 26, 1993 in International classes 09, 10, 16 and 35, and (2) registration number 115080 with a registration date of October 17, 2004 in International Class 9.
The disputed domain name <hpiran.ir> was registered July 2, 2006, and does not currently resolve to an active website. The disputed domain name <iranhp.ir> was registered September 7, 2007, and resolves to a series of web pages predominantly in the Farsi language. The pages promote and present computing products and peripherals and are similar in appearance to Complainant's corporate web presence and the appearance of other collateral materials published by Complainant.
Complainant avers that it sells computers, computer hardware, software, computer peripherals and related products and services worldwide and has invested hundreds of millions of dollars in marketing and advertisements through different media, including through the Internet. Complainant alleges that its HP trademark is well-known and that Complainant has registered many domain names that contain the HP mark as well as the HP mark and a country code.
Complainant relies principally upon a demonstration of the volume of its many HP trademark registrations around the world, combined with an argument based on the United States' (US) trade embargo of Iran. Complainant alleges that, based upon Complainant's status as a United States company which must abide by the total restrictions on trading in Iran imposed by U.S. law, any use of the HP marks for the sale of its products to customers in Iran is not legitimate and could not be bona fide, by any party.
Because the legal argument addressing the irDRP is so brief, the Panel sets forth Complainant's legal argument section verbatim:1
The Infringing Domains are confusingly similar to Complainant's HP marks.
First, the Infringing Domains are similar to Complainant's HP marks in appearance, sound and commercial impression. In fact the Infringing Domains completely subsume HP's famous HP mark and HP's main website (“www.hp.com”). The only difference is Respondent's addition of term ‘Iran'. Second, Complainant, HP, sells computer goods and services and the Respondent sells computer goods and services through the Infringing Domains.
In addition, HP products are available in many countries of the world, thus, HP has an enormous presence on the internet and internet users will no doubt view “iranhp.ir” and “hpiran.ir” as HP websites or somehow associated or affiliated with HP.
Annexed copy of Respondent's websites is attached as Annex 6.
Respondent registered the domains and has used the domains solely to direct the Iranian internet users to the website to sale unauthorized HP products.
Respondent is not using the domains in connection with any bona fide offering of goods or services. Respondent is using them to capitalize on consumer's trust and interest in HP products, the good will associates to the brand. Respondent is in competition with HP, while HP is not able to conduct business in Iran due to U.S embargo against Iran, thus there is no bona fide use.
Respondent is using the domains to direct internet users and consumers seeking HP products or services to its own commercial website using the Infringing Domains and offering similar products and services to what HP sells.
The Respondent is using the Infringing Domains to deceive the general public and for its commercial gains by causing a likelihood of confusion. As outlined in Paragraph 4(b)(iv) of the policy, by using the Infringing Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web sites or other location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web sites or location or of a product or service on its web site or location.” (Unpaired quotation marks and paragraph spacing as in original.)
Based on the above allegations, and acknowledging that it cannot itself presently undertake commercial activity in Iran based on the U.S. embargo, Complainant seeks transfer of the disputed domain names.
Respondent concedes that Complainant registered its HP brand as a trademark based on the international trading system under Madrid Convention. However, due to the restrictions imposed by the United States Congress in recent years, Respondent argues, Complainant is unable to have an official registered branch or authorized representative in Iran or as a practical matter, any commercial or publicity presence. As such, Respondent contends, Complainant is unable to have a legitimate trading business in Iran.
In its detailed response with supporting exhibits, Respondent alleges that Respondent has operated its company for twelve years under Iranian law, based upon a proper registration of its business. Respondent avers that the relevant activities of its company consist of assisting the public to acquire non-fake HP goods:
“[A]ny products introduced by the claimant were supplied to the market merely via the conventional procedures in Iranian market and this has caused the activities of some of the Iranian companies, such as Falnic Tehran (defendant) merely focus on identifying and introducing the items and goods and main services and distinguish them from the fake one and unreliable products within the legal frameworks. In this regard, the defendant constantly and in complete good intention has directed al its efforts in the direction of identifying and introducing reliable and genuine goods and services of HP in Iran without asking any privileges or compensation for performing all these services in favor of HP.”
Addressing the question of confusing similarity, in relevant part, Respondent alleges:
“HP+IRAN+IR and the site is in Persian, this merely helps Iranian users to be aware of the contents of the site and activity of the defendant- aiming at distinguishing between original items from other brands of the item; therefore, the Complainant's assumption concerning misleading customers or putting them in mistake; it should be noted that most users are exactly aware of the official ban of American companies in Iran and it is an obvious and well known fact in Iran and this proves opposite of what the claimant wants to prove. Furthermore, it is rational that the non-Persian language users essentially do not visit the domain in IR and in Persian language so there is reasonably no ground for their deception or confusion.
“2) On the other hand, in all cases, the defendant has explicitly and clearly declared in all conditions that it is merely a company that provides services to distinguish between the original goods from fake or similar goods and it has never introduced itself as the official representative of HP in Iran....”
Respondent also avers that it makes clear that it is not the Complainant in the “about us” section of its website.
As for rights or legitimate interests, Respondent relies upon the embargo and special legal circumstances described above, noting also that its company is registered as a trading company in Iran and operates in the niche that the special circumstances of the Iranian market creates. Respondent also disputes Complainant's allegations that the two parties are in competition, stating in part:
“[T]he activities of defendant are merely identifying original goods from fake or non-original ones in the special market atmosphere of Iran. In this connection, essentially, the type of business of the two companies are completely different and by assuming a probable presence of HP company in Iran, even then the activities of the two companies are not parallel so there is no ground in assuming any unlawful or illegal competition.”
Responding to Complainant's pro-forma allegations of bad faith resulting from Respondent's alleged intentions to benefit through consumer confusion, Respondent denies the existence of consumer confusion. To support this position, Respondent relies upon the fact that its website is in the Persian language and that the special trading circumstances in the Iranian market mean that Iranians or Persian language speakers would not be mislead. Respondent also reiterates the limited purpose of its activities as described above and Respondent characterizes its efforts undertaken through the website to have been in good faith, even including the production or posting of scientific papers respecting HP goods.
On August 10, 2009, Respondent's counsel submitted the following additional message to the Center: “According to Dispute between HP Co. v. Tehran Falnic Co., Tehran Falnic Co. hereby announce that ‘IRANHP.IR' has been already changed all similarity which maybe assumed between IRANHP website and HP to show its good will.” The message was accompanied by screen shots of the website, which included, among other things a shopping cart of the type commonly found on e-commerce websites.
The Rules require the Panel to decide a complaint 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). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
Although the disputed domain names are not identical to Complainant's trademarks, the Panel agrees with Complainant and concludes that Respondent's domain names are both confusingly similar to Complainant's HP marks.
First, UDRP panels disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315. This same approach has been used by panels under the irDRP when considering allegations that disputed domain names were identical to a complainant's trademarks. See, e.g., Facebook, Inc. v. Majid Karimian Ghannad, WIPO Case No. DIR2009-0001 (“[t]he ‘.ir' suffix is generic, and numerous Panel decisions under the Uniform Dispute Resolution Policy (‘the UDRP'), (the relevant part of which is identical to paragraph 4(a)(i) of the [.ir] Policy), have held that ‘.gtld' and ‘.cctld' suffixes are not taken into account in the comparison between a complainant's trade mark and the disputed domain name”, quoting Deutsche Telekom AG v. Kaweh Kalirad, WIPO Case No. DIR2008-0002.
Although the question here is confusing similarity and not identity, the Panel believes it appropriate to apply the same rule. The Panel therefore considers the question of confusing similarity based upon examination of the disputed domain names without including their ccTLD “.ir” suffixes.
Second, both the disputed domain names <hpiran.ir> and <iranhp.ir> are made up of the simple combination of the Complainant's HP mark and the common name for the country of Iran (rather than its more complete formal name, the Islamic Republic of Iran).
Many cases have considered the effect of linking a trademark with a geographical name to create a domain name. The common conclusion is that the addition of a geographical name does not by itself distinguish the domain name from the trademark. See, e.g., Koninklijke Philips Electronics NV v. P.K. Gopan, WIPO Case No. D2001-0171 (geographical name “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]”).
Consistent with previous decisions, the Panel agrees that the addition of a country name to Complainant's trademarks does not alter the confusion between Complainant's marks and the disputed domain names that Internet users would experience. NBC Universal, Inc. v. Web Advertising, Corp. a/k/a Maison Tropicale S.A., WIPO Case No. D2008-0865.2
Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant's HP marks.
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain names.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
In this case, the embargo imposed on commercial trading in Iran of products of United States companies confirms that Complainant's products, being supplied commercially in Iran by and through Respondent, are unauthorized. The Panel therefore accepts Complainant's allegation that Respondent's use of the disputed domain names is not in connection with a bona fide offering. Since Respondent is using Complainant's mark for commercial trading via the Internet, the Panel also concludes that Respondent is unable to demonstrate that it is making a legitimate noncommercial or fair use.
On the record, there exists a small question whether Respondent may claim that it has been commonly known by the disputed domain names.
Respondent has produced proof of the establishment of its commercial trading company, originally published in the Official Gazette of the Islamic Republic of Iran No. 16550 dated December 12, 2001. (Original and translation in response Annex 2). That notice of establishment makes no mention of “HP Iran” or “Iran HP”, but instead, the name of the registered company is “Tehran Falnic Company”.
Additionally, Annex 1 to the response consists of a sworn statement dated July 26, 2009 by the Managing Director of Respondent, which describes the operations of Tehran Falnic Company, with English translations. The statement is corroborated and sworn by several other individuals presumably with knowledge of Respondent's operations. The statement's introduction, describing the declarant as Managing Director of “Tehran Falnic Co., known as ‘HP Iran' and ‘Iran HP'” is the only potential evidence supporting a view that Respondent may have been commonly known by the disputed domain names.
This artful, self-serving reference to “HP Iran” and “Iran HP” by Respondent's Managing Director, however, is not included in the portion of his statement that is also corroborated and sworn by several third-party witnesses. The body of the statement sworn by the Managing Director and several other individuals repeatedly describes the activities of Respondent using its official “Tehran Falnic Company” name. As such, the Panel concludes that the single reference to “Tehran Falnic Co. known as ‘HP Iran' and ‘Iran HP'” is unreliable and insufficient to establish that Respondent was commonly known by the disputed domain names.3
Therefore, Respondent fails to meet the burden of rebutting the presumption raised by Complainant that Respondent lacks rights or legitimate interests in the disputed domain names, and the Panel concludes that paragraph 4(a)(ii) of the Policy is established.
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration or bad faith use, is also established.
Under the irDRP, a Complainant need only establish registration or use of the disputed domain name in bad faith, rather than establishing both registration and use in bad faith under the UDRP. E.g., Deutsche Telekom AG v. Kaweh Kalirad, supra.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of the complainant; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on respondent's website or location.
The Panel agrees with Complainant's allegation that its HP mark is famous.4 Respondent was clearly aware of the mark before including the mark in its domain name registrations, and concedes in several portions of its Response that Respondent provides information and services that relate to Complainant's products. It is therefore clear to the Panel that Respondent registered the disputed domain names with full intention to draw traffic to the websites simply because of the use of the famous HP trademark.
Respondent makes much of the fact that its websites are in the Persian language, and even contends that there is a non-trading aspect to the site content. However, examining the one website which is available on line and in annexes to the parties' submissions, the Panel concludes that Respondent has not demonstrated that Respondent's confusingly similar domain names are being used by Respondent other than to direct traffic to Respondent's website for commercial purposes. Such a conclusion is also supported by statements in Respondent's Annex 3 (describing company as importing and selling HP products) and by the existence of a shopping cart on the website to which the <iranhp.ir> domain name resolves.
Under the circumstances of this case, the Panel concludes that Respondent's registration of Complainant's famous HP mark as the prominent portion of its domain names, without a successful showing by Respondent of a right or legitimate interest (such as legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers or tarnish the trade mark at issue) is, by itself, evidence of bad faith registration. E.g., PepsiCo, Inc. v. Paul J. Swider, WIPO Case No. D2002-0561.
Having found that the disputed domain names were registered in bad faith under paragraph 4(a)(iii) of the Policy, it is unnecessary to consider whether Respondent used the disputed domain names in bad faith.5
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 names <hpiran.ir> and <iranhp.ir> be transferred to Complainant.
Nasser A. Khasawneh
Dated: September 1, 2009
1 The Complaint is unusually devoid of legal citations and does not direct the Panel to a single case or statute. The Complaint contains ten pages listing trademark registrations and describing the company's prestige, but contains only just over a single page devoted to reciting (although not elaborating) the legal grounds for its complaint under the irDRP.
2 The Panel does not consider as relevant any content that is visible once users have been routed to the websites in making the Panel's ruling of confusing similarity between Complainant's trademarks and the disputed domain names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (describing initial interest confusion doctrine under UDRP).
3 As explained, the Panel has found that Respondent in this case fails to provide sufficient evidence that it has rights or legitimate interests in the disputed domain names. Necessarily limited to the case under consideration, the Panel refrains from expressing any views as to what might constitute sufficient evidence in any other case under the irDRP.
4 Indeed, Respondent does not appear to contest this allegation by Complainant.
5 The Panel finds it unnecessary to consider the parties' allegations respecting whether or not they are in competition with one another.