WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Informa IP GmbH v. IRREVENTS, Mohammed Fizan Shariff
Case No. D2012-1978
1. The Parties
The Complainant is Informa IP GmbH, of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Ipulse IP Ltd, UK.
The Respondent is IRREVENTS, Mohammed Fizan Shariff of Bangalore, India.
2. The Domain Name and Registrar
The disputed domain name <irrevents.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2012. On October 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2012, the Registrar 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” 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 October 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2012. An informal response was filed with the Center on October 20, 2012.
The Center appointed Warwick A.Rothnie as the sole panelist in this matter on November 22, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant states that it is the intellectual property holding company for the Informa group of companies.
One of the divisions of the Informa group is IIR which organizes, promotes and runs events, conferences and training courses relating to a wide range of disciplines including accounting and tax, management, law, healthcare, transport, mining and resources, OHS and HR in at least a number of countries around the world. In support of this claim, the Complainant has included printouts from a number of websites including “http://www.iirmd.com” (which appears to promote events held mainly at the group’s London center), “http://www.iir.com.au” (which appears to promote events in Australia), “http://www.iirme.com” (which appears to promote events mainly in Dubai and Abu Dhabi).
The Complainant has provided evidence of registered trademarks in Australia (No. 1260042), a Community Trademark (CTM) (No. 8733016), an International Registration (No. 778455) designating the Czech Republic, Hungary, Poland and Slovakia and which appears to be based on a registration in Austria, and two registrations in New Zealand (Nos. 666555 and 666556). The registrations cover a range of services in International classes 35 and 41 related to organizing and conducting shows and the provision of training and education services.
The Australian and International Registrations are for IIR. The CTM is for a figurative mark based on the acronym IIR; the New Zealand registrations are for a combined mark which includes the letters IIR, but is not further identified.
It is not clear from the Registrar’s response when the disputed domain name was first registered. The Complaint states the disputed domain name was first registered on December 1, 2011. The Respondent does not dispute this.
The disputed domain name, however, resolves to a website which promotes conferences and professional trainings [sic].
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
While the Respondent has not submitted a formal response, his email to the Center dated October 20, 2012 confirmed that he had received all the papers and asserted the defence discussed below. In this circumstances, the Panel finds that the Respondent has been served in accordance with a Policy and given a fair opportunity to put his case.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. Accordingly, the Panel proceeds to a decision on the basis of the records in the case.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
In this case, the Complainant has proven ownership of the registered trademarks referred to in section 4 above. The Complainant also appears to claim common law rights in the expression “IIR Events”. However, the material submitted in support of that apparent claim falls well short of what is required to support such a claim: see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 1.7. Accordingly, the Panel does not find this part of the Complainant’s claim established.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking the comparison, in the present circumstances it is permissible to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
“Irrevents” is not a word in normal or ordinary use and does not convey any recognised meaning. Therefore, the Panel considers it likely that many users of the Internet, especially those familiar with English would be likely to read the second level domain component of the disputed domain name as “irr” plus “events”.
This is sufficiently close to the Complainant’s proven trademarks that the Panel finds it is confusingly similar to those trademarks. The component “events” is likely to be seen as the descriptive word and the component “irr” is likely to be the distinctive feature of the disputed domain name. See also paragraph 1.9 of the WIPO Overview 2.0.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a domain name:
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant contends that it has not authorized or licensed the Respondent to use the disputed domain name. It also contends that the disputed domain name does not appear to relate to the Respondent’s name, presumably meaning by this Mr. Shariff’s name. The Complainant further contends that there is no reason to use the acronym IRR in relation to conferences and professional training other than because of its resemblance to the Complainant’s trademarks. Moreover, it has submitted as Annex 7 to the Complaint a print out from the website to which the disputed domain name resolves which, according to the Complainant, demonstrates that the Respondent is not in fact offering services yet. This is because the print out has under the heading “Conferences” simply the words “Coming soon …”.
These matters are sufficient to establish a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name under the Policy.
In the substantive part of his email in response to the Complaint, Mr. Shariff stated:
We, IRR Events is a legal, registered entity in India. The company is owned by two partners, wherein the domain access is in my name (Mohammed FizanShariff).
We are into organizing Professional Training, Business Conferences and other Business Events for the corporates in India and in the Middle East. We started our operations in India spending over 2,500,000 INR (About 50,000 USD) for the cost of operation, domain registration, website cost etc..
As I understand, the registrator “irrevents.com” was available during the time of company’s setup and I bought it.
Finally, we are a legal & registered firm in India, at this point of time, we are ready to fight legally in the court of law and here the court of law is, The Government Of India and we have the full rights in this matter.
There are a number of matters arising from the Respondent’s position as set out above.
First, Mr. Shariff states that there is a legal, registered entity in India known as IRR Events.
Mr. Shariff did not provide, however, any documentation to support that claim. In any event, it would appear that any such entity was established around the time the disputed domain name was registered in December 2011. That is well after the various trademarks on which the Complainant relies were registered.
The Complaint does not provide direct evidence that the Complainant has trademarks in India. Mr. Shariff’s email indicates, however, that the Respondent is also operating in, or planning to operate in, the Middle East where the Complainant does have operations. In addition, Annex 6 to the Complainant also shows that the Complainant operates in, or intends to operate in, the United States of America, Singapore and “Asia Pacific”. In at least some of these places, the Respondent is, or will be, competing directly with the Complainant, but entering the market well after the Complainant’s group.
Mr. Shariff’s email states that the Respondent has spent the equivalent of approximately USD 50,000 in registering the disputed domain name, the website and operation. It does not provide any detail about what those expense related to or objective verification that the amounts were in fact spent.
Most importantly, Mr. Shariff’s email does not explain how he and his unnamed partner derived the name IRR Events. Plainly, as the Complainant contends, it is not derived from Mr. Shariff’s name. As the name was adopted long after the Complainant’s trademarks were registered and it has no directly descriptive significance in relation to the services the Respondent is offering, or proposing to offer, such an explanation was called for, all the more so as the Respondent is operating, or intending to operate, in places where the Complainant’s group is already established.
On this scant state of the record on the Respondent’s part, therefore, the Panel finds that the Respondent has not rebutted the prima facie case established by the Complainant. Accordingly, the Complainant has established the second requirement under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.
Having regard to the matters discussed in section 5B above, the only information available to the Panel on this issue is that the Respondent has used the disputed domain name to provide, or to promote, services covered by the Complainant’s registered trademarks in at least some countries apparently in direct competition with the Complainant’s group. It would appear to have commenced doing so since about 2011. That date is well after the Complainant registered the trademarks referred to in section 4 above.
Such use is plainly use in bad faith within the terms of the Policy. Giving the apparent timing of the commencement of the Respondent’s website and the Respondent’s failure to rebut the prima facie case that the Respondent did not have rights or legitimate interests in the disputed domain name, it appears that the Respondent registered the disputed domain name for the purpose of his business in competition with the Complainant’s group. Accordingly, the Panel infers from the record that the disputed domain name was also registered in bad faith.
Both components of the third requirement are therefore established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <irrevents.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: December 3, 2012