World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kaspersky Lab Zao v. BaniSaz Co.

Case No. DIR2010-0004

1. The Parties

The Complainant is Kaspersky Lab Zao of Moscow, Russian Federation, represented by UDRPro, LLC, United States of America.

The Respondent is BaniSaz Co., of Tehran, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <kaspersky.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2010. On August 31, 2010, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On August 31, 2010, IRNIC 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 .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 the Respondent of the Complaint, and the proceedings commenced on September 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2010.

The Center appointed Christian Schalk as the sole panelist in this matter on October 6, 2010. 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 Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The language of the proceedings is English.

4. Factual Background

The Complainant is a developer of anti-virus and anti-spam software for personal computers as well as a provider of IT security solutions for protecting businesses and enterprises. The Complainant offers its products and services for many years through a worldwide network of distributors in more than hundred countries. In 2008, the Complainant opened its regional headquarter for the Middle East region. In the Republic of Iran, where the Respondent lives, the Complainant has seven authorized resellers and distributors of its products and services.

One of its primary marketing channels is the Internet. In order to give its customers access to its extensive Internet presence, the Complainant owns a number of “Kaspersky” domain names, for instance: <kaspersky.com>, <kaspersky.co.uk>, <kaspersky.ru>, <kaspersky.eu>, <me.kaspersky.com>, <ae.kaspersky.com> and <kaspersky.ae>.

The Complainant has also various trademark rights in the term KASPERSKY, for instance:

- European Community Trademark registration No. 001605955 KASPERSKY, registered on April 26, 2002, covering goods and services in Int. classes 9, 16 and 42;

- United States Trademark registration No. 2818639 KASPERSKY, registered on March 2, 2004, covering goods and services in Int. classes 9, 16 and 42;

- United States Trademark registration No. 2854174 KASPERSKY LAB (word and device), registered on June 15, 2004, covering goods and services in Int. classes 9, 16 and 42;

- United States Trademark registration No. 2756752 KASPERSKY K ANTIVIRUS (logo), registered on August 26, 2003, covering goods and services in Int. classes 9 and 42.

The disputed domain name was registered on February 5, 2004. The disputed domain name resolves to a website which displays the KASPERSKY LAB word and device mark as well as the KASPERSKY K ANTIVIRUS logo. The website is written in the English and in the Persian language. The headlines on this website in the English language are:

“KASPERSKYlab

It is your Rights to select the Best Anti-Virus…..

(…)

Kaspersky Lab Platforms & Servers Support:”

The Complainant provided evidence that at the time the Complaint was filed, on the “about us” section of this website it was written inter alia that the company Tarsim Rayaneh “as Kaspersky international’s agent in Iran since 2004 is authorize to distribute. Kaspersky Lab Ltd is a fast growing European software. development company.”

This part of the website included also a link to the Complainant’s website inviting interested Internet users to obtain “more information about [the Respondent’s] relationship with the Complainant”. When Internet users clicked on this link they were directed to the Complainant’s website showing the Complainant’s authorized resellers and distributors in the Republic of Iran. The Respondent did not appear on this list.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademarks since it is identical with these trademarks.

The Complainant believes also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant explains that the Respondent is selling the Complainant’s goods on a website that is linked with the disputed domain name without being affiliated with or authorized by the Complainant. The Respondent’s website incorporates the Complainant’s trademarks, copyrights, product descriptions and text. It is the Complainant’s opinion that such an unauthorized sale of the Complainant’s goods is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.

The Complainant argues further that the Respondent falsely states on its website that it is the Complainant’s agent in the Republic of Iran since 2004 and therewith authorized to distribute the Complainant’s products. Such a false statement confuses consumers and suggests a non-existent relationship between the Respondent and the Complainant. The Complainant explains in this context that it has no business relationship with the Respondent, that it has never authorized the Respondent to sell or market its products in the Republic of Iran or elsewhere, and does not provide its products to the Respondent for re-sale purposes. Especially, the Complainant has no knowledge as to where the Respondent acquires the Complainant’s products for re-sale. The Complainant alleges further that the Respondent is not commonly known by the disputed domain name but is known by as “BaniSaz Co.” as shown in the WhoIs information provided by the Respondent, as well as “Tarsim Rayaneh Co.” as shown on the resolving website. In this context, the Complainant cites Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 to support its arguments.

The Complainant submits further that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that consumers assessing the Respondent’s website may become confused as to a suggested affiliation between the Respondent’s website and the Complainant. Therefore, the Complainant believes that the Respondent’s intended use of the disputed domain name, to sell the Complainant’s products, is evidence of bad faith registration or use. In this context, the Complainant cites Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441 to underline its arguments.

The Complainant argues further that the Respondent’s use of a domain name which is confusing similar to the Complainant’s trademark and to sell the Complainant’s products under a website to which such a domain name resolves constitutes disruption of the Complainant’s authorized re-seller business and is evidence that the Respondent registered and uses the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

A panel shall 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 it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the complainant has proven that each of the following three elements is present:

(i) the 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 domain name; and

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in the term KASPERSKY. The disputed domain name is identical with the term KASPERSKY on which the Complainant has trademark rights. The “ir” suffix in the disputed domain name does not affect the determination that the disputed domain name is identical with the term KASPERSKY in which the Complainant has trademark rights (see also: Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936 and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein).

Accordingly, the Panel finds that the Complainant has satisfied the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In light of the material brought before the Panel, and in the absence of a Response to the Complaint, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:

The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark. Moreover, the fact that the Respondent uses the Complainant’s trademarks, logos, copyrights and product descriptions without the Complainant’s consent and the fact that it falsely pretends on the website to which the disputed domain name resolves, that it is the Complainant’s agent in the Republic of Iran since 2004 and therewith authorized to distribute the Complainant’s products and services cannot constitute a legitimate noncommercial or fair use of the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied the second element of paragraph 4(a) of the Policy.

C. Registered or is Being Used in Bad Faith

The Complainant contends that the Respondent registered or is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b), sets forth four non-exclusive criteria that shall be evidence of bad faith registration and use of domain names:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark 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 trademark 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 a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.

In light of the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain name has been registered or used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:

It is a well-established principle under prior decisions under the Uniform Domain Name Dispute Resolution Policy (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that at the time of registration a domain name registrant represents and warrants to the registrar that, to its knowledge the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.

Given the reputation of the Complainant in the field of computer software, its world wide market presence and therewith also in the Republic of Iran where the Respondent lives, the fact that the Respondent has linked the website to which the disputed domain name resolves to the Complainant’s website and that the Respondent pretends to be an authorized distributor of the Complainant’s products, the Panel believes that the Respondent must have been well aware of the Complainant’s trademark when it registered the disputed domain name (see, Liseberg AB v. Administration Local Manage Technical, WIPO Case No. D2003-0864). Therefore, given the circumstances of this case, the Panel infers that the Respondent registered the disputed domain name in bad faith.

The Panel finds further, that the Respondent is also using the disputed domain name in bad faith. Internet users especially in the Republic of Iran but also elsewhere who type in the disputed domain name in their Internet browser expect to get redirected either to the Complainant’s websites or to websites of third companies who have somehow contractual relations with the Complainant, such as authorized re-sellers and distributors. Such assumptions gets confirmed by the Respondent’s false statement that it is the Complainant’s agent in the Republic of Iran since 2004 and therewith authorized to distribute the Complainant’s products there and by the fact that it uses the Complainant’s trademarks, logos, copyrights and product information in a prominent way on its website. The consequence of such behaviour is that Internet users, seeking the Complainant’s website get misled on the true identity of the Respondent and its non-existent relations with the Complainant and will buy the products from the Respondent instead of the Complainant or its authorized re-sellers and distributors. Such behaviour damages the business of the Complainant’s authorized distributors. Furthermore it damages the Complainant’s business interests for two reasons. If the Complainant’s authorized distributors and re-sellers sell a smaller number of products because Internet users buy instead from the Respondent, they will have less turnover and therefore, pay less license fees to the Complainant. Moreover, the Respondent selling the Complainant’s products over the website to which the disputed domain name resolves takes advantage of the goodwill associated in the KASPERSKY marks and saves the royalties it normally would pay to the Complainant if it had a license to use the Complainant’s KASPERSKY mark. If the Respondent wished to trade off the goodwill associated with the KASPERSKY marks, it should therefore, have sought a license from the Complainant.

In light of the above findings, the Panel is convinced that the Respondent uses the disputed domain name for the purpose of attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the non-existent affiliation between its website and the Complainant (see also in this context Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441; AutoNation, Inc. v. Paul Schaefer, WIPO Case No. D2001-0289).

The Respondent has also provided inaccurate contact details or at least not updated its contact details as far as the so-called “admin contact” is concerned. It is only because the Center also used addresses mentioned in connection with the technical and billing contact that the Complaint reached the Respondent. Using incorrect contact details or not accurately updating such information constitutes not only a breach of Articles 4.2 and 4.3 of the Registration Agreement but has been regarded in many previous cases as further indication of bad faith use of a disputed domain name (see for example, Francesco Totti v. Jello Master, WIPO Case No. D2002-0134; Kelemata S.p.A. v. Mr. Bassarab Dungaciu, WIPO Case No. D2003-0849 and cases cited therein).

In light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and that the Complainant has thus satisfied the third element of paragraph 4(a) of the Policy.

7. Decision

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 <kaspersky.ir> be transferred to the Complainant.

Christian Schalk
Sole Panelist
Dated: October 20, 2010

 

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