WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ubiquiti Networks, Inc. v. Omid Khosravi, Mohandesine Farakaranet Co.
Case No. DIR2013-0005
1. The Parties
The Complainant is Ubiquiti Networks, Inc. of San Jose, California, United States of America (“United States” or “US”), represented by Morrison & Foerster, LLP, United States.
The Respondent is Omid Khosravi, Mohandesine Farakaranet Co. of Tehran, Islamic Republic of Iran (“Iran”).
2. The Domain Name and Registrar
The disputed domain names <ubiquiti.ir> and <ubnt.ir> (the “Disputed Domain Names”) are registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2013. On November 15, 2013, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Disputed Domain Names. On November 17, 2013, IRNIC 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 amended Complaint on November 20, 2013. A hard copy of the amended Complaint was received by the Center on November 22, 2013.
The Center verified that the Complaint together with the amended 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 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 amended Complaint, and the proceedings commenced on November 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2013. Pursuant to paragraph 6(e) of the Rules, the Complainant then changed its election from a three-member panel to a single-member panel.
The Center appointed Philip N Argy as the sole panelist in this matter on January 8, 2014. 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.
All other administrative requirements appear to have been satisfied.
4. Factual Background
The following facts, taken from the Complaint, remain uncontested.
The Complainant is a next-generation communications technology company that develops disruptive technology platforms for wireless communications. It designs and manufactures a variety of wireless communications equipment, including receivers, transmitters, routers, and antennas, as well as operating firmware included in those devices. It uses a worldwide network of distributors to market and distribute its products which are currently offered in the United States and in over sixty-five (65) other countries. In most instances, distributors acquire products directly from the Complainant’s contract manufacturers’ factories located in China and ship them directly to the local market where the distributors do business. The Complainant notes that because it is based in the United States, it cannot and does not do business with nor distribute its products for sale or use in Iran due to the US Economic Sanctions.
The Complainant has continuously used the UBNT mark in connection with cutting-edge wireless solutions since 2006. It has also used the UBIQUITI mark and logo since at least 2005. It registered <ubnt.com> as a domain name in November 2004 and has been using that as its primary domain name since that time. It has also used UBNT as its NASDAQ global select market symbol since it became a publicly traded company in October 2011. It owns several trademark applications and registrations for the UBNT and UBIQUITI marks in various countries and these date back to 2010 (claimed first use in commerce in December 2006 and December 2005, respectively).
The Disputed Domain Names were created in April 2008.
According to the Complainant, the Respondent registered the Disputed Domain Name <ubnt.ir> in April 2012 and subsequently began using it in connection with a website that sells the Complainant’s products in Tehran, Iran. The website to which that Disputed Domain Name resolves shows the Complainant’s products and trademarks with the Respondent’s address and contact information.
According to the Complainant, the Respondent registered the Disputed Domain Name <ubiquiti.ir> in December 2011 and subsequently has held it passively making no use of it to the best of the Complainant’s knowledge.
5. Parties’ Contentions
As one might expect, the Complainant relies upon the three grounds of the Policy, namely, that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and that the Disputed Domain Names were registered or are being used in bad faith. (Like the auDRP and many subsequent variants of the UDRP, the third limb of the Policy requires only the disjunctive registration or use of a disputed domain name in bad faith to be shown rather than the conjunctive registration and use that is required in the UDRP).
In support of the first ground, the Complainant submits that the two Disputed Domain Names respectively comprise the entirety of the Complainant’s registered trademarks UBNT and UBIQUITI and are therefore identical or virtually identical and confusingly similar to the Complainant’s trademarks. It argues that the Respondent’s use of the “.ir” country-code Top-Level Domain (ccTLD) should be disregarded when comparing the Disputed Domain Names and the trademarks in issue because that ccTLD suffix is technically required and in any event performs no differentiating role.
In support of the second ground, the Complainant argues that (a) the Respondent has not made use of the Disputed Domain Names in connection with a bona fide offering of goods or services; (b) the Respondent is not commonly known by the Disputed Domain Names; and (c) the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names.
For the Respondent’s use of the Disputed Domain Names to constitute a bona fide offering of goods or services, the Respondent must actually offer the Complainant’s goods, and must accurately disclose their relationship with the Complainant. However, due to the US sanctions referred to above, the Complainant contends that the Complainant’s goods cannot be legitimately sold in Iran and the Complainant goes to great lengths to ensure that this does not occur. It follows, so the Complainant contends, that it is impossible for the Respondent to make a bona fide offering of the Complainant’s goods. The Complainant relies on a case decided under the irDRP: Hewlett-Packard Company v. Tehran Falnic Company, WIPO Case No. DIR2009-0002. In that case the learned panel took the view that the embargo imposed on commercial trading in Iran of products from United States companies meant that any such conduct had to be unauthorised and could not be in connection with a bona fide offering. The Complainant also argues that the unauthorised use of its two trademarks cannot constitute legitimate use under the Policy and therefore cannot give rise to any right or legitimate interest on the part of the Respondent.
Secondly, to the Complainant’s knowledge, the Respondent has not been commonly known by the Disputed Domain Names, and there is no evidence that it was effectively known by third parties by the Disputed Domain Names, especially prior to registration.
Thirdly, there is no relationship between the Complainant and the Respondent that would give rise to any licence, permission, or authorisation to use the Disputed Domain Names. The Complainant has not authorised or licenced the Respondent to use the Complainant’s trademarks and the unauthorised use of the Complainant’s registered trademarks constitutes trademark infringement under Iranian law. Such infringing use cannot be a legitimate use under the Policy.
Fourthly, the Complainant argues that the Respondent is not making any legitimate noncommercial or fair use of the Disputed Domain Names because the Respondent’s website at the Disputed Domain Name <ubnt.ir> seeks to sell the Complainant’s products for profit in a country where those products are not supposed to be sold. Such behaviour by the Respondent suggests an intent to compete unfairly with the Complainant and to free ride on the Complainant’s investment in researching and developing its products, which is not a noncommercial or fair use. In relation to the second of the Disputed Domain Names, <ubiquiti.ir>, the Complainant adopts what was said in Google, Inc v. Mohammed Jabbari, WIPO Case No. DIR2005-0001, namely, “a wish to passively hold a domain name […] is not, […] a legitimate noncommercial or fair use of the domain name, without any intent for commercial gain and to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
In support of the third ground, the Complainant submits that as further demonstrated by the display of the Complainant’s trademarks and products on the website at one of the Disputed Domain Names the Respondent was aware of the Complainant’s well-established trademarks prior to the registration and use of the Disputed Domain Names, and that the Respondent’s actions evidence an intention to harm the Complainant commercially by creating consumer confusion and suggesting that the Complainant is violating US trade sanctions by directing its products to Iran.
The Complainant further argues that bad faith can be inferred from the Respondent’s registration of multiple domain names incorporating the Complainant’s trademarks and it also relies upon the four non-exhaustive circumstances enumerated in paragraph 4(b) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Disputed Domain Names respectively comprise no more than the Complainant’s registered trademarks together with the ccTLD suffix, “.ir”. The Panel therefore has no hesitation in concluding that the Disputed Domain Names are identical to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
It is abundantly clear from the evidence that the Respondent, through the website to which the first of the Disputed Domain Names resolves, is selling the Complainant’s and/or competitive products without the Complainant’s permission and under the Complainant’s trademarks. In the Panel’s view the fact that the reason the Complainant’s permission is lacking is attributable to US trade sanctions against Iran is irrelevant under this limb of the Policy. It is simply the lack of permission that deprives the Respondent’s conduct of legitimacy and, as the Complainant submits, the use of its trademarks without authority contravenes Iranian trademark law in any event. Whilst the trade sanctions may be seen as the cause of any opprobrium suffered by the Complainant, in the Panel’s view it is the fact that there is no permission that deprives the Respondent’s conduct of legitimacy rather than the reason for that lack of permission. The Panel further notes that the website does not appear to disclose the Respondent’s relationship with the trademark owner, the Complainant.
In relation to the second of the Disputed Domain Names, in this Panel’s view a passive holding without use of a domain name that comprises a complainant’s registered trademark suffixed by no more than the applicable ccTLD, evinces no rights or legitimate interests on the part of the registrant.
Absent any Response, the Panel is unable to discern on the available record any rights or legitimate interests the Respondent could have in respect of the Disputed Domain Names, and formally finds that it has none.
C. Registered or Used in Bad Faith
For the reasons set out under Section 6.B, the Panel also takes the view that the Disputed Domain Names must have been registered in bad faith, and at least the first of them is plainly being used in bad faith. Since the Policy uses the disjunctive “or” rather than the conjunctive “and” in its third limb, it is not strictly necessary for the Panel to consider whether the second of the Disputed Domain Names is being used in bad faith. However, the Panel does take the view that the continuing existence of the registration of that Disputed Domain Name is a blocking use vis- à-vis the Complainant.
Accordingly, the Panel comfortably concludes that both of the Disputed Domain Names were registered in bad faith and are being used in bad faith.
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 Names <ubnt.ir> and <ubiquiti.ir> be transferred to the Complainant.
Philip N Argy
Date: January 22, 2014