WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MIP METRO Group lntellectual Property GmbH & Co. KG v. Masoud Ziaie Moayyed
Case No. DIR2007-0005
1. The Parties
The Complainant is MIP METRO Group lntellectual Property GmbH & Co. KG, Düsseldorf, of Germany, represented by Harmsen . Utescher, Germany.
The Respondent is Masoud Ziaie Moayyed, Tehran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <metro.ir> (the “Domain Name”) is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2007. The Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On December 4, 2007, 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 amendment to the Complaint on December 10, 2007. 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”), 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 proceeding commenced on December 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2007. The Response was filed with the Center on December 30, 2007.
The Center appointed Warwick Smith as the sole panelist in this matter on January 18, 2008. 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.
By Procedural Order No. 1 dated January 23, 2008, the Panel requested a supplementary statement from the Respondent, answering certain questions listed in the Schedule to the Procedural Order. The Respondent duly provided the supplementary statement within the (extended) time allowed by the Panel.
Following Procedural Order No. 2 dated January 31, 2008, the Complainant was allowed until February 5, 2008 to submit any Reply, and a Reply was duly submitted by that date.
The Respondent’s supplementary statement and the Complainant’s Reply have both been taken into account by the Panel in this decision.
In view of the need for supplementary filings, the time for the Panel to give this decision was extended to February 15, 2008.
4. Factual Background
The Complainant is a member of the Metro Group, which is a large trading group with business operations in numerous countries, and some 270,000 employees. The principal business of the group is retailing – under various brands, it operates “cash & carry” retail outlets, supermarkets, department stores, and consumer electronic stores.
According to the Complaint, the Complainant has used the name “Metro” since 1964.
The Complainant’s home territory is Germany, where the evidence shows its METRO mark enjoys relatively high brand recognition. The Complainant group is also well established elsewhere in Western Europe, but in Asia and Eastern Europe it claims (on its principal website at “www.metrogroup.de”) only that it is “laying the ground work for continuingly positive business development”.
The Complainant is the owner of numerous METRO trademark registrations, in Germany, the European Community, and elsewhere. The Complainant also has an international trademark registration for the mark METRO, with a priority date of June 25, 2004, and it is the registered proprietor of METRO registrations in the Islamic Republic of Iran, with priority dates in October 2000 and November 2003.
The Complainant is also the owner of the domain names <metro.eu>, <metro.biz>, <metro.info>, and <metro.de>.
There is no evidence that the Metro Group trades, or has ever traded, in Iran. Other than its aforementioned trademark registration, there is little evidence of the Complainant group having acquired a reputation for its goods and services in Iran, whether by advertising or otherwise.
According to the Response, the Respondent registered the Domain Name in December 2003.
The Respondent attached to the Response a sworn affidavit, in which he deposed that his intention at the time of registering the Domain Name was to develop a website promoting the use and “appropriate culture” of public transportation in Tehran, and in other major cities in Iran.
According to the affidavit, the Respondent wanted the proposed website to provide passengers with an opportunity to voice their complaints and give their suggestions, so that the site would operate as a vehicle to help improve the services and efficiency of the various “Metro” transportation systems in Iran. (The Respondent says that in Iran, as in many other countries, the term “metro” is used commonly to refer to the public transportation system, and that that is the meaning the Respondent intended when he registered the Domain Name).
The Respondent says that his intentions for the use of the Domain Name have remained unchanged since December 2003, and that he has carried out a number of activities in developing a website to be operated at the Domain Name. Those activities are said to include:
(i) Conducting focus group sessions to learn the kind of information that would be useful to metro system users in order to “promote the proper culture of metro use”.
(ii) Gathering information for the proposed website.
(iii) Researching the history and workings of various metro systems around the world and how they developed (to create a successful model for promoting use of the metro in Iran).
(iv) Collecting articles relating to the metro system in various Iranian cities, and in other cities around the world.
(v) Consulting with the Tehran Metro authority (“the Authority”) on how the website could help the Authority improve its services, and obtain feedback from passengers on an ongoing basis.
(vi) Building up a dedicated team to work on the development of the website at the Domain Name, and expand the use and culture of public transportation in Iran.
(vii) Instructing the development of preliminary web pages for the proposed website at the Domain Name, by the web development team.
According to the Respondent’s affidavit, developing the website at the Domain Name is a time-and-resource-consuming process. The metro system in Tehran is continually growing, and the systems in other major cities are still in development. The Respondent explains that his focus is methodically researching and consulting others, and claims that he has been using his limited resources in the most efficient way.
The Respondent further deposes in his affidavit that, until he received the Complaint in this proceeding, he had never heard of the Complainant’s group. He goes on to depose that he was never contacted by the Complainant to find out his intentions or activities with regard to the Domain Name, before this proceeding was commenced. He says also that he has never had any intention of selling the Domain Name.
The Respondent attached to the Response copies of some web pages which he said were sample pages from the website which is under construction at the Domain Name. The pages which were produced were said to be only those pages which “do not include information and structures that are still confidential in the Beta version”.
The sample web pages which the Respondent has produced all appear to have been printed on December 23, 2007; there was nothing in them which would confirm the date or dates of their creation.
The Beta web pages did contain a number of public transportation-focused photographs, together with what appeared to be maps of the metro system in Tehran. There were click-on links to “Tehran”, “Shiraz”, and several other Iranian cities, and click-on links to pages entitled “About Metro.ir”, “Metro Stories”, “Metro News”, “Metro Events”, “Safety Points”, “Discussion Forum”, “Metro Maps”, “Metro Art”, and “Contact Us!” These click-on links were in the English language, and appeared also to be duplicated in the Persian language.
On one of the web pages, there was a copyright claim reading: “© metro.ir 2003-2007”.
The Respondent also produced a copy of a letter dated December 19, 2007, from the Authority. This letter is in English, and it is apparent from its terms that the Authority is the authority which operates the Tehran metro system. The letter advises that the Authority has its own website at “www.tehranmetro.com”, and that it was not interested in registering the Domain Name. It confirms that the Authority has had no grounds for complaint arising from any use the Respondent has made of the Domain Name, and that the Authority has never received any correspondence from the Respondent indicating that the Respondent might be making an economic, or business, use of the Domain Name.
The letter from the Authority goes on to provide some operational information about the Metro system in Tehran (numbers of passengers carried, etc), and confirms that the name “Metro” is the most known name for the public urban railway system in Tehran (and the whole country).
The final paragraph of the letter from the Authority states:
“We strongly believe cultural, social and economic service outside our organization is needed to assist establishing efficient public railway transportation in the capital. That is why we are encouraging private sector to work closely with our organization.”
The Respondent provided the following further information in his Supplementary Statement.
In response to the Panel’s question as to what the Respondent meant by the “appropriate culture” of using the metro system, the Respondent referred to a range of problems which he said have been encountered on the Tehran Metro system since the first metro line became operational in that city in 1999. The problems are said to have included:
(i) Passengers not keeping the stations, trains, bathrooms, etc clean.
(ii) Passengers transporting inappropriate items on the metro (e.g. animals and large or heavy items).
(iv) Passengers not knowing how to respond during emergencies.
(v) Lack of information on how use of the metro system is relieving pressure on traffic, and lowering pollution and energy use.
According to the Respondent, the problems have been exacerbated by the fact that hundreds of thousands of people migrate to Tehran each year from small towns and the country areas. The Respondent says that the website being developed at the Domain Name will be aimed at tackling these problems, by raising awareness with regard to such matters as rubbish disposal, and respect for other passengers.
Asked by the Panel to explain his particular interest in spending time and trouble promoting a public transportation system, the respondent referred to his personal experience living in Tehran, seeing the positive change that the metro system has brought about, and the potential it has to continue to further improve the lives of citizens of Tehran and other large Iranian cities. The Respondent does not claim any greater interest in the Tehran Metro that any other citizen of that city, but explains that he has been motivated by the fact that he cares a great deal about his city, the air that he breathes, and the wellbeing of himself and his fellow citizens. He says that, as an educated person, he feels a sense of responsibility, and generally a desire to improve the lives of himself and his community.
In his Supplementary Statement, the Respondent acknowledged that he did not run a trademark search at the time he registered the Domain Name – he referred to the “restrictive and fairly inaccessible trademark registry in Iran” having prevented him from running such a search. Instead, he said that he relied on “metro” being a common and generic term, and consulted with the Authority to obtain their assurance that they would not be interested in having the Domain Name, or in preventing someone from developing a public website of the kind the Respondent had in mind. The Respondent said that he also consulted with others in the public transportation field, and that he waited for the expiry of the Registrar’s priority process (for those with interests in particular names). He said that it was only after that expiry, when registrations had opened up to the public, that he registered the Domain Name.
With his Supplementary Statement, the Respondent provided various documents relating to his work developing a website at the Domain Name. These documents included minutes of meetings dating from early 2004 (provided in both Persian and English). One set of minutes is dated May 17, 2004, and records the presence of the Respondent and other named individuals. Under the heading “Discussion Points”, there are notes relating to the metro system in Tehran, including a list of problems seen every day (overcrowding, lack of respect by users for equipment and facilities). The minutes include reference to beginning a dialogue with the Authority to gather information, collaborate, and help improve its services for citizens. Finally, under a heading: “Goals of metro.ir website?”, there appears the following:
“(a) Promote this clean, environmentally friendly, efficient, quiet, inexpensive mode of public transportation in all major cities of Iran”.
The Respondent also produced minutes of a meeting held on June 15, 2004, attended by himself and the same three individuals who attended the May 17 meeting. Again, the minutes record that the Respondent was considering the development of a website at the Domain Name, and that such a website would or might be concerned with “promoting use of public transportation and safer travel methods”.
The Respondent also produced with his Supplementary Statement, a letter dated January 28, 2008, from Rezvan Engineering Co. The letter advises that the company has been consulting with the Respondent “to help create increased knowledge of metro and public transport use by people in Tehran, Karaj and many more cities”. The letter explains that the company provides environmental consultation services, and states that the Respondent has been consulting with the company for the Domain Name from 2004, and that the Respondent is “dedicated to build our advice into the website for an environmental message”.
Finally, the Respondent attached with his Supplementary Statement screen shots of directories, which the Respondent says show the dates on which the sample web pages submitted with his Response were last modified. This screenshot lists various file folders and documents which appear to be concerned with a website at the Domain Name. For example, one file folder is described as “metro.ir-images-beta_files”. Under a “Date Modified” column, the modification date for this folder is shown as April 17, 2006. Of the 18 separate folders or documents listed in this screen shot, the earliest modification appears to have been made on April 13, 2005, and the most recent modifications on January 31, 2007.
5. Parties’ Contentions
The Complainant’s contentions set out in its Complaint were:
1. The Complainant is the registered proprietor of the mark METRO in numerous countries, and therefore has rights in that mark. The Domain Name is identical or confusingly similar to that mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not the owner of any trademark, trade name, or any other rights in the name “Metro”, and there is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, and has not otherwise obtained any authorization to use the METRO mark or trade name, or to register a domain name incorporating that mark. The Respondent has not registered the Domain Name for any bona fide reason, nor made any bona fide use of the Domain Name. The use of the Complainant’s METRO mark in an identical domain name, constitutes an infringement of the Complainant’s rights.
3. The Domain Name was registered and is being used in bad faith, for the following reasons:
(i) The Complainant is a member of the Metro Group, which is one of the largest trading groups in the world. The Metro Group has a long-established reputation in many jurisdictions in the use of its several METRO trademarks and in its trade name “Metro”. The Respondent has not submitted any evidence showing that he has registered the famous trademark and company name METRO of the Complainant in good faith, and for that reason alone, a finding of bad faith registration is justified.
(ii) Actual knowledge of the Complainant’s mark at the time of registration of the Domain Name also supports an inference of bad faith (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net; WIPO Case No. D2000-0226). In this case, the Respondent had an obligation before registering the Domain Name, to verify that no older trademark rights in the mark METRO were held by third parties. The Respondent failed to fulfill that obligation.
(iii) In view of the Complainant’s worldwide reputation under the mark METRO, it is most unlikely that the Respondent unintentionally selected the Complainant’s distinctive mark as the Domain Name.
(iv) The Respondent has registered the Domain Name in order to prevent the Complainant from reflecting its METRO mark in a corresponding national domain name, namely the Domain Name. Accordingly, paragraph 4(b)(ii) of the Policy applies (citing Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).
(v) Passive holding of a domain name by a respondent may be considered bad faith use where, as in this case, the Complainant has a strong reputation in its mark and is widely known, and the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the at-issue domain name (citing Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Respondent contends as follows:
1. The term “metro” is highly generic, and is subject to substantial third party use. It is commonly used around the world to refer to metro public transportation systems, and also to metropolitan areas.
2. Anyone can register a common word such as “metro” as a domain name, for a legitimate purpose. In this case, the Respondent’s legitimate purpose was to offer information about the metro public transportation systems in Iran.
3. Many businesses around the world which incorporate the word “metro” in their names, have incorporated “metro” in corresponding domain names, including a supermarket chain in Canada which is a competitor of the Complainant and operates a website at “www.metro.ca”.
4. There are serious doubts about the validity and enforceability of the Complainant’s alleged mark in Iran. The Metro Group is not known at all in Iran, and does not have any activities in Iran. The Complainant has provided no evidence that its METRO mark is famous, or otherwise widely recognized, outside the German retail market. Brand recognition in Germany, and German trademark registrations, are irrelevant in Iran. Because the term “metro” is generic, the Complainant lacks any enforceable rights in the term even in the presence of trademark registrations (citing Kellog Co v. National Biscuit Co, 305 U.S. 111 (1938), and Interactive Television, 15 U.S.C. 1064(3), 1065: “a registered trademark will be deemed abandoned if it becomes generic, even if the registration has become incontestable”).
5. The Complainant’s trademarks do not cover public transportation activities. Registration alone does not give the Complainant exclusive use of the term “metro”.
6. The Complainant has failed to prove that the term “metro” on a global scale has acquired a secondary meaning related to the Complainant’s business activities.
7. There will be no confusion, as visitors to the website at the Domain Name will see that it pertains to activities of the metro systems in Iran, and Metro Group is not active in Iran.
8. The Respondent has rights and legitimate interests in respect of the Domain Name:
(i) The Respondent registered the Domain Name to promote the culture of using the metro public transportation system in Iran. Given the highly generic nature of the term “metro”, the Respondent’s use of that term to promote use of a public transportation system, constitutes a legitimate interest.
(ii) Before the Respondent received any notice of the dispute, there is evidence of the Respondent having made demonstrable preparations to use the Domain Name in connection with a non-commercial activity related to the metro public transportation systems in Iran. The specific preparatory activities undertaken by the Respondent, are listed in the sworn affidavit annexed to the Response. The sample web pages, and letter from the Authority, attest to the Respondent’s work in developing a website at the Domain Name.
(iii) The Respondent is making a legitimate, non-commercial use of the Domain Name, without intent for commercial gain from misleadingly diverting consumers or tarnishing the trademarks in which the Complainant claims to have rights.
9. The Domain Name has not been registered, and is not being used, in bad faith:
(i) The Complainant fails to allege any facts which would constitute bad faith. Mere registration of a domain name is not an illegitimate activity.
(ii) The Complainant’s allegations are centered on bad faith registration, whereas the Policy requires both evidence of bad faith registration and bad faith use.
(iii) The registration of a highly generic and commonly used term such as “metro” cannot constitute bad faith registration.
(iv) The Respondent had no knowledge of the Complainant or its activities in Europe until he received the Complaint in December 2007. The Complainant has produced no evidence that it promotes its mark in Iran, or that it is well known in any capacity in Iran. It has produced no evidence of facts which might indicate that the Respondent knew or should have known of the Complainant’s trademark registration. The generic character of the word “metro”, and the Respondent’s Iranian base, provide no grounds for a finding that the Respondent was aware of the Complainant’s mark (citing Admiral Insurance Services Limited v. Adam Dicker, WIPO Case No. D2005-0241).
(v) The Domain Name was registered for a specific, legitimate purpose, and was not registered for the purpose of selling, renting, or otherwise transferring to the Complainant or any of its competitors.
(vi) As the Respondent had no knowledge of the existence of the Complainant, the Domain Name was not registered in order to prevent the Complainant from reflecting its claimed mark in a domain name. IRNIC (the Registrar) operated a priority schedule for those with rights in particular names to register those rights prior to the opening of general registration of names in the .ir space. It is obvious that, since the Complainant had no activities in Iran, it ignored that priority schedule and did not register the Domain Name. In contrast, the Respondent had been planning the website for many years, and waited until the priority period was over before registering the Domain Name.
(vii) Having had no knowledge of the existence of the Complainant, the Respondent did not register the Domain Name in an attempt to attract internet traffic for commercial gain, or create a likelihood of confusion with the Complainant and its commercial activities. The Respondent has never registered a Domain Name that incorporates terms in which others have rights.
(viii) The Complainant has not provided any reason or evidence why the current use of the Domain Name constitutes bad faith.
10. The Complainant has brought its Complaint recklessly and in bad faith, and is guilty of reverse domain name hijacking. The Complainant knew or ought to have known of the Respondent’s unassailable right and legitimate interest in the Domain Name, and that there was no bad faith on the Respondent’s part, but decided to bring this case anyway. It has not alleged any set of facts that could arguably constitute bad faith. That is an abuse of the Policy and constitutes reverse domain name hijacking. The Complainant knew that its mark was limited, and that it was highly unlikely that the Respondent’s registration and use of the Domain Name, under any fair interpretation of the facts, could constitute bad faith. The misleading wording of the Complaint (suggesting that the Complainant might have a reputation in Iran which it does not have), and the Complainant’s failure to make any attempt to contact the Respondent before commencing this proceeding, are further indicators that the Complaint has been brought in bad faith. The Complainant has used its superior resources and size to bring a frivolous case to intimidate the Respondent. The Complainant has acted with willful or reckless disregard of the objective unlikelihood of its Complaint being successful. A declaration of reverse domain name hijacking is crucial to prevent similar frivolous claims being brought by large and well-resourced complainants in the future.
C. Complainant’s Contentions in Reply
In its Reply, the Complainant contended:
1. The Complainant cannot say whether the Respondent’s statements about his intentions for the Domain Name are correct, but even if they are, the Respondent’s intentions and actions to date would not give rise to a justified interest in the Domain Name. The Domain Name is identical to the Complainant’s prominent METRO mark, and the Respondent is guilty of a blatant infringement of the Complainant’s trademark rights.
2. The Respondent has chosen a domain name which fails to clearly convey any message that the linked website will be concerned with the metro public transportation system in Tehran and other Iranian cities. For example, the domains <metro-teheran.ir>, <metroteheran.ir>, <teheranmetro.ir>, and <teheran-metro.ir> are still freely available, and could have been chosen by the Respondent if his intention was in fact to create a public information website at the Domain Name as he has claimed. The Respondent has not explained why he did not take any of the aforementioned domains, but opted instead for a domain which was identical to the Complainant’s METRO trademark.
3. The use of the Domain Name by the Respondent would be more likely to confuse the public than to induce interested inhabitants of Tehran to retrieve a website containing information on that city’s metro public transportation system.
4. The Respondent did not take any steps prior to the registration of the Domain Name to ensure that the registration would not infringe any trademark rights of third parties. Merely making inquiries of the Authority, and investigating whether the Domain Name was already registered with IRNIC, were not sufficient steps for the Respondent to discharge his responsibilities under paragraph 2 of the Policy. The Respondent could have, and should have, undertaken a trademark search, or a company name search or Internet search via Google, which would have taken him to the Complainant. The Respondent’s failure to avail himself of these relatively simple means of investigation, constitutes a gross violation of his paragraph 2 obligations.
5. The Respondent’s statements concerning his claimed efforts to develop a website at the Domain Name, are not convincing. The documents produced by the Respondent merely prove that the Respondent has, allegedly, worked on a website under the Domain Name in the past. The Complainant has no means of investigating whether or not this is correct. However, the Complainant can say that the Respondent has now owned the Domain Name for a full 4 years, but has not operated a website at the Domain Name during that time. The failure to develop any website within 4 years is evidence that the Respondent does not seriously plan to open an information portal at the Domain Name. The Respondent’s argument to the contrary is only an attempt to justify his behavior, and does not establish any justified interest.
6. Discussion and Findings
A. General Principles under the Policy
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(1) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) That the Domain Name has been registered or is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a 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”.
B. Identical or Confusingly Similar
The Complainant has proved this part of the Complaint.
It has sufficiently established that it is the owner of the mark METRO in Germany, the European Union, and in Iran. Indeed, the Iranian registrations appear to be acknowledged by the Respondent in his response. Those registrations provide prima facie evidence of rights in the METRO mark for the purposes of paragraph 4(a)(i) of the Policy, and the Respondent has not produced any evidence to displace that prima facie proof.
The Panel acknowledges what the Respondent says about the common language meanings of the word “metro”, namely as a reference to public transportation systems or as an abbreviation for “metropolitan” (denoting an urban geographical location). But the fact that a term may be commonly used as a descriptor of one concept or thing, does not mean that it is generic or descriptive when applied to some completely unrelated concept or thing. To take a simple example, the expression “apple” would be instantly recognized by English language speakers around the world as descriptive of the fruit of that name. But no-one would suggest that the same term could not be distinctive, and operate as an effective indicator of source or origin, when applied to other things such as computers or iPods. In this case, it appears that the relevant national trademark authorities have accepted that the mark METRO is sufficiently distinctive of the Complainant’s retail and other services for which the mark is registered, to qualify for registration. In an administrative proceeding such as this the Panel is not in any position to second guess those trademark authorities, and declines to do so. (If the Respondent is of the view that the Complainant’s registrations of the METRO mark are invalid, the Respondent’s appropriate recourse is to make application to the relevant court or tribunal for the removal of those marks from the relevant registers.)
Whether the Complainant asserts any rights in respect of the mark METRO in connection with public transportation activities, is not relevant to this part of the Complaint. All the Complainant needs to show under paragraph 4(a)(i) of the Policy, is that it enjoys rights in the mark METRO in respect of at least some goods or services, in at least one country. The fact that the Complainant may not enjoy rights in the mark METRO in respect of public transportation activities, is something to be considered under paragraphs 4(a)(ii) and (iii) of the Policy.
The Respondent submitted that a complainant will lack enforceable rights in a term, even in the presence of trademark registrations, where that term has become generic. The simple answer to that submission, is that there is no evidence before the Panel which might suggest that the mark METRO has become generic, in respect of the goods or services for which it has been registered.
Finally, under this head, the different uses the parties might make of their respective websites is not relevant to this part of the Panel’s inquiry. The “identical or confusingly similar” inquiry calls only for a direct comparison between the at-issue domain name and the mark on which the Complainant relies. The Panel compares the mark and the domain name visually and phonetically, and then, if necessary, compares the respective impressions, or “ideas” conveyed by the mark and the Domain Name. The “.ir” suffix is a technical requirement for a domain name, and is not taken into account in that comparison.
In this case, the Domain Name, minus the “.ir” suffix, is visually and phonetically identical to the METRO mark in which the Complainant has rights. The Complainant therefore succeeds under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, will be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(1) Before any notice to [the respondent] of the dispute, use by [the respondent] 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
(2) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(3) Where [the respondent is] 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.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Domain Name on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that he does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP.”
There is no relevant difference between paragraphs 4(a)(ii) and 4(c) of the Policy on the one hand, and the corresponding paragraphs of the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) on the other. The Panel therefore considers it appropriate to apply the same approach to the burden of proof as is set out in the extract from the Center’s online document quoted above.
Applying that approach, the Panel notes first that the Domain Name is identical to the METRO mark in which the Complainant has rights, and the Complainant has not authorized the Respondent to use the Complainant’s mark, whether in a domain name or otherwise. There is no suggestion that the Respondent, or any business or other organization operated by him, has been commonly known by the Domain Name. Accordingly, paragraph 4(c)(2) of the Policy cannot apply. That combination of circumstances is sufficient to establish a prima facie case, and the evidential onus under paragraph 4(a)(ii) of the Policy shifts to the Respondent to show that he has some right or legitimate interest in respect of the Domain Name.
The Respondent submits that “metro” is a common, or dictionary, word, in which anyone may have a legitimate interest, and in which the Complainant cannot have a monopoly.
The Respondent also submits that his use of the Domain Name constitutes the making of a legitimate non-commercial use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s METRO marks (a reference to the “safe harbor” described at paragraph 4(c)(3) of the Policy). The “legitimate non-commercial use” which the Respondent relies on, is the development of a website at the Domain Name which will promote the use and “appropriate culture” of the “metro” public transportation system in Tehran and other Iranian cities.
The Panel accepts immediately the Respondent’s submission that the term “metro” is a common descriptive expression. It is commonly used around the world to describe public transportation systems of the kind operated by the Authority, and being developed in other cities in Iran. But that, in and of itself, does not provide the Respondent with an answer to the Complaint.
The real question is whether the Respondent registered the Domain Name because of its attraction as a common descriptive word, apt to reflect the focus of a website he intended to create at the Domain Name (the Respondent’s position), or whether he chose the Domain Name with the intention of exploiting its value (or potential future value) as a trademark owned by someone else (the Complainant’s position). In the first of those cases, the Respondent would almost certainly have a legitimate interest in the Domain Name; in the latter situation, the use or proposed use could never be bona fide, fair or legitimate, and would almost certainly amount to a bad faith registration. (See in that regard the decisions of the three-member Panels in Advanced Drivers Education Products and Training Inc. v. MDN, Inc. (Marchex), NAF Case No. 0567039, an example of a complaint that failed in circumstances where the panel noted that the at-issue domain name “can reasonably be seen as a descriptor of the site’s intended content or theme”, and mVisible Technologies Inc. v. Navigation Catalyst Systems Inc., WIPO Case No. D2007-1141. In the latter case, the panel acknowledged that links on websites (at the disputed domain names) which were truly based on the generic value of the domain names could constitute a bona fide use, but went on to say: “If though, the links are based on the trademark value of the domain names the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cyber squatting.” These two cases, and a number of other cases to similar effect, are discussed in this Panel’s recent decision in Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448.
Under this particular section of the Policy, upon the Complainant’s prima facie showing, it is the Respondent who carries the evidential burden of showing that he registered the Domain Name because of its attraction as a common descriptive word. But even if the Respondent fails in that endeavor, the Complainant must still prove that the Respondent has been guilty of bad faith registration or use under paragraph 4(a)(iii) of the Policy.
Substantially, the same facts are relevant to the issues of “right or legitimate interest”, and “bad faith registration or use”, and on the view of the case to which the Panel has come, the Complainant has failed to prove the latter of those issues, where it carries the onus of proof. In those circumstances, there is no need to resolve the “right or legitimate interest” question. The issues can be more conveniently dealt with in the next section of this decision.
Accordingly, the Panel makes no finding on the question of whether or not the Respondent has a right or legitimate interest in the Domain Name.
D. Registered and Used in Bad Faith
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 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 [the respondent’s] website or other on-line 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 [the respondent’s] website or location.
Unlike the corresponding provision in the UDRP, a complainant under the Policy need only prove one or other of bad faith registration or bad faith use by the respondent. A complainant under the Policy need not prove both elements.
The Complainant has failed to persuade the Panel that the Domain Name has been registered or is being used in bad faith. The Panel has come to that view for the following reasons:
1. Looking first at the possibility of bad faith use of the Domain Name, the Panel notes that no website has yet been established at the Domain Name. Accordingly, there can be no question as to whether Respondent used the Domain Name to “intentionally attempt to attract, for commercial gain, the internet users…” (Policy, paragraph 4(b)(iv)).
2. In the Complaint, the Complainant cited the Telstra Corporation v. Nuclear Marshmallows decision, in support of an argument that passive holding of a domain name can constitute bad faith registration and use. Certainly, there are some situations where passive holding can amount to bad faith registration and use, but findings of bad faith registration and use in such cases have always been based on substantial indicators of bad faith going well beyond the mere fact of non-use. The essential matter for a finding of bad faith registration and use by passive holding, is normally that the panel cannot conceive of any possible use the respondent might make of the at-issue domain name, which would not be in breach of the complainant’s rights. Findings of that sort are often supported by other indicia of bad faith intention, such as the provision of false contact details for the domain name, or the fact that the respondent has chosen as a domain name someone else’s highly distinctive trademark (as in the Telstra case, where the evidence was that the mark TELSTRA was a made-up word). The only sensible inference on the facts of that case, was that the respondent had chosen the domain name because of its value as a distinctive trademark owned by someone else, and with a view to ultimately exploiting that particular value of the domain name. In this case, there is no evidence which would justify a finding that the Respondent’s passive holding of the Domain Name should be regarded as bad faith use. The word “metro” is a generic or descriptive expression, and the Panel can, quite readily, conceive of uses the Respondent might make of the Domain Name in the future which would not infringe the Complainant’s rights at all. For example, if the Respondent were to launch a website at the Domain Name which consisted solely of an information portal designed to provide information about metro public transportation systems in Tehran and other Iranian cities, the Panel cannot see, on the evidence which has been produced, that the Respondent would be infringing any rights of the Complainant at all. On the evidence produced, the Panel is not satisfied that the Complainant is entitled to a monopoly in the trademark use of the expression “metro” in Iran, and especially not where that expression is used purely as a descriptor, to refer to a well-known form of public transportation service.
3. Looking at the question of possible bad faith registration of the Domain Name, the Panel notes:
There is no evidence that the Domain Name was registered for any of the purposes set out at sub-paragraphs i, ii or iii of Paragraph 4(b) of the Policy. First, the Respondent has made no attempt to sell, rent, or otherwise transfer the Domain Name to the Complainant or to one of its competitors, in the period of over 4 years during which the Respondent has owned the Domain Name. As for the example of bad faith registration described at paragraph 4(b)(ii) of the Policy, there is no evidence that the Respondent has engaged in any relevant pattern of conduct (which would be necessary to establish that particular kind of bad faith registration). Nor is the Panel satisfied that the Respondent registered the Domain Name primarily for the purpose of disrupting the business of the Complainant. The Respondent has sworn on oath that he had no knowledge of the Complainant at the time he registered the Domain Name, and, perhaps more significantly, he has so far made no use of the Domain Name in a way which might have disrupted the Complainant’s business. There is no evidence at all that the Complainant has ever traded in Iran, advertised in that country, or otherwise established a reputation there. In short, the Respondent’s sworn evidence that he was unaware of the Complainant and its METRO marks when he registered the Domain Name, is entirely plausible, and it is supported by the documents provided by the Respondent with his supplemental filing. The minutes of the meetings held in May and June of 2004, and the screen shots relating to the apparent development of a website at the Domain Name, are all consistent with the Respondent’s claim that he registered the Domain Name with a view to establishing a website which would provide information about the various Iranian metro railway systems, and the “appropriate culture” relating to their use. In a summary proceeding such as this, where the parties and the Panel do not have the benefit of discovery of documents, cross-examination of witnesses, and other such fact-finding tools, the Panel has no basis for making the serious finding that the Respondent has acted in bad faith.
4. The Complainant’s two best arguments were that the Respondent failed to comply with his responsibility under paragraph 2 of the Policy, to determine whether registration of the Domain Name would infringe upon or violate someone else’s rights, and that the Respondent’s failure to establish a website at the Domain Name for a period as long as four years is indicative of bad faith. It is true that the Respondent did not undertake a trademark register search before registering the Domain Name, and nor does it appear that the Respondent ran any Google or other internet search engine searches for the word “metro”. But the Panel cannot see that any such searches would have, or should have, caused the Respondent to believe that he would be breaching anyone’s rights by registering the Domain Name. Had the Respondent searched the Trademark Register in Iran, he would likely have reached the conclusion that operating an information portal at the Domain Name for those interested in the metro public transport systems operated in Tehran and other Iranian cities would not have infringed the Complainant’s trademark rights. Nor can the Panel see how Google or other searches would have brought the Respondent to the belief that his intentions with regard to the Domain Name would, when implemented, infringe a third party’s rights. The Complainant’s essential difficulty is that the expression “metro” is a descriptive or generic one, and the Complainant has failed to persuade the Panel that the Respondent’s selection of the word “metro” as a domain name was anything other than an attempt to exploit the ordinary, common meaning of that descriptive expression. On the authority of cases such as The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743, mVisible Technologies Inc. (supra) and Grundfos A/ S v. Texas International Properties Inc. (supra), there must be evidence that the Respondent has targeted the Complainant or its trademark in some way, or at least had the Complainant or its mark in mind when he registered the Domain Name.
5. There is no evidence of any such “targeting” in this case. First, the Respondent has denied any knowledge of the Complainant or its mark, and that denial seems plausible, given the absence of any evidence suggesting that the Complainant has used its mark in Iran, or that it or its mark is at least known in that country. The Respondent’s claim that he was attracted to the Domain Name solely because of its potential use as a descriptive expression, is also plausible enough. The evidence produced by the Respondent tends to corroborate that claim, and there is no proper basis for the Panel to reject the Respondent’s evidence on this point as being untrue.
6. The Complainant also relies upon the Respondent’s failure to launch any website in the period of over 4 years since he acquired the Domain Name. A delay of that length might attract suspicion in some cases, but the Respondent has produced some evidence of activity directed to the production of a website of the kind he claims has been in development over the period, and in the Panel’s view, any suspicions do not reach the threshold level at which the Panel would be entitled to regard the delay as an indicator of bad faith registration or use.
For the reasons set out above, the Complainant has failed to establish bad faith registration or use, and the Complaint must therefore be denied.
E. Reverse Domain Name Hijacking
In the Rules, the expression “Reverse Domain Name Hijacking” is defined as meaning “using the Policy in bad faith to attempt to deprive a registered domain-name-holder of a domain name”.
There is no sufficient basis for a finding of bad faith against the Complainant in this case. First, the Complainant has proved that it owns a trademark which is identical to the Domain Name. Moreover, that trademark has been registered in the Respondent’s home country. The Complainant did not authorize the Respondent to use the expression “metro” in the Domain Name, and the Respondent does not itself have any registered rights in a METRO mark.
In the combination of circumstances just described, the Panel does not believe that the Complaint could be categorized as hopeless, or doomed to failure from the outset. The case has, in fact, turned on the Respondent’s explanation for his choice of the Domain Name, and the Panel’s inability in a proceeding such as this to reject the Respondent’s explanations as being false. Furthermore, this is not a case where the Complainant has leapt in with a complaint under the Policy, within a few days or weeks after the Domain Name was registered. The Respondent appeared to have done nothing with the Domain Name for a period of more than 4 years, and, in the Panel’s view, that failure to use the Domain Name was a factor the Complainant was entitled to take into account when it elected to file a Complaint without first contacting the Respondent.
Overall, the circumstances fall well short of harassment, reverse domain name hijacking, or any other form of bad faith use of the Policy. The Respondent’s allegation of reverse domain name hijacking is therefore rejected.
For all the foregoing reasons, the Complaint is denied.
Dated: February 15, 2008