WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merz Pharma GmbH & Co. KgaA v. Izak Sedighpour

Case No. DIR2020-0013

1. The Parties

The Complainant is Merz Pharma GmbH & Co. KgaA, Germany, represented by Saba & Co. IP, Lebanon.

The Respondent is Izak Sedighpour, Mavi Soft Azarbaijan Co., Islamic Republic of Iran.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2020. On July 15, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On July 18, 2020, 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 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 July 27, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2020. On August 17, 2020, the Center notified the Respondent’s default.

The Center appointed Adam Taylor as the sole panelist in this matter on August 24, 2020. 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 is a German pharmaceutical company with affiliates across the European Union as well as in the United States of America, Canada, Mexico, Brazil and the Asia Pacific region.

The Complainant owns many registered trade marks for MERZ including Iranian Trade Mark No. 48757, filed October 28, 2006, registered October 29, 2007, in classes 3, 5, and 10.

According to IRNIC, the Respondent registered the disputed domain name on December 3, 2018.

The Respondent has used the disputed domain name for a website branded “MERZ.IR” and which offered the disputed domain name is for sale.

The Complainant sent a legal warning letter to the Respondent on April 28, 2020. The Respondent did not respond.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions:

The Complainant’s trade mark is famous and is recognised around the world.

The disputed domain name is identical or confusingly similar to the Complainant’s trade mark as it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant has not authorised the Respondent to use its mark in any way.

There is no evidence that the Respondent has been commonly known by the disputed domain name or has used the disputed domain name for a bona fide offering of goods or services or is making legitimate noncommercial or fair use of the disputed domain name.

The disputed domain name has been registered and is being used in bad faith.

Given the fame of the Complainant’s trade mark, it is difficult to conceive that that the Respondent was not aware of it or that the Respondent had a legitimate purpose in registering the disputed domain name.

The Respondent has used the Complainant’s trade mark in the disputed domain name to attract Internet users for commercial gain by creating a likelihood of customer confusion.

The Respondent’s failure to respond to the Complainant’s warning letter and the fact that the Respondent is offering the disputed domain name for sale is further evidence of bad faith.

The fact that the disputed domain name has not been used for an active website does not prevent a finding of a passive holding in bad faith.

B. Respondent

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

6. Discussion and Findings

Under the irDRP, the Complainant is required to prove on the balance of probabilities that:

- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the trade mark MERZ by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its extensive use of that name.

Disregarding the country code Top-Level Domain (“ccTLD”) “.ir”, the disputed domain name is identical to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

As explained in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)¹ , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.

As to paragraph 4(c)(1) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering. Use of the disputed domain name for a website offering the disputed domain name for sale in the circumstances described in section 6C below does not constitute a bona fide offering.

Nor is there any evidence that paragraph 4(c)(2) or (3) of the Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

C. Registered or Used in Bad Faith

For the following reasons, the Panel considers that, on the balance of probabilities, the Respondent registered and is using the disputed domain name in bad faith:

1. the Complainant’s trade mark is distinctive;

2. so far as the Panel is aware, the Respondent has only used the disputed domain name for a website offering it for sale;

3. the Respondent has not appeared in this proceeding to deny the Complainant’s assertion that the Complainant’s trade mark is famous, or to dispute the Complainant’s allegations that the Respondent acted in bad faith, or to put forward any legitimate explanation for the Respondent’s selection of the disputed domain name; and

4. nor did the Respondent respond to the Complainant’s legal warning letter to protest its innocence.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.

7. Decision

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 <merz.ir> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: September 7, 2020

¹ Given the similarities between the irDRP and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) the Panel may refer to the WIPO Overview 3.0 and other UDRP decisions when relevant