WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Itisaluna Iraq, Itisaluna Trans - Iraq and Munir Sukhtian International (MSI) v. Basara
Case No. D2008-0561
1. The Parties
The Complainants are Itisaluna Iraq of Amman, Jordan, Itisaluna Trans - Iraq of Basra, Iraq, and Munir Sukhtian International (MSI) of Iraq, represented by Sanad Law Group, Amman, Jordan.
The Respondent is Basra, Basra, Iraq.
2. The Domain Name and Registrar
The disputed domain name <etisaluna.com> is registered with GoDaddy.com Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2008 electronically and on April 14, 2008 as hardcopy. On April 11, 2008, the Center transmitted by email to GoDaddy.com Inc. a request for registrar verification in connection with the domain name at issue. On April 12, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 16, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 17, 2008. The Center verified that the Complaint together with the amendment satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 April 18, 2008.
In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2008.
The Complainant sent a request for suspension on May 4, 2008 and the proceedings were suspended on May 5, 2008.
An email response was filed with the Center on May 11, 2008. The Complainants sent a request to reinstate proceedings on the same date. The Center notified the reinstitution of proceedings on May 14, 2008 noting the date for finding a Response was changed to May 17, 2008. No further communications were received from the Respondent.
The Center appointed Dilek Ustun as sole panelist in this matter on June 11, 2008. The Panel finds that it was properly constituted and 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 Complainants have been using the trademark ITISALUNA in connection with a wide range of telecom products and services offered in Iraq, including Internet, voice and limited mobility services.
MSI has incorporated the fully owned subsidiary Itisaluna Iraq, as an offshore company registered in Jordan, which in turn incorporated the Iraqi entity Itisaluna Trans Iraq and commenced operating under the mark ITISALUNA and the tradename ITISALUNA.
Itisaluna Iraq holds a trademark registration in Jordan with the filing date December 12, 2006 in Class 38, and filed other applications for the same mark ITISALUNA in other classes.
Itisaluna Trans Iraq has obtained a trademark registration in Iraq.
The first and the second Complainant operate online under the domain name <itisaluna.com> as of December 6, 2006. The Complainants also hold the domain name <itisaluna.net>.
5. Parties’ Contentions
The Complainants contend that:
1. The disputed domain name <etisaluna.com> is confusingly similar to the Complainant’s ITISALUNA service mark.
2. The Respondent has no rights or legitimate interests in respect of the <etisaluna.com> domain name. The Complainants argue, inter alia, that the Respondent is not using the domain name in connection with a bona fide offering of goods and services.
The Complainants also contend that the Respondent was never granted a license or a permission to use the Complainants’ ITISALUNA mark, nor did it apply for such permission, and that it has no relationship with the Complainants, who have prior established rights to the trademark and company name ITISALUNA, which the Complainants are entitled to protect and control its use on the Internet. Moreover, the Complainants contend that the domain name in question is not a trademark by which the Respondent is commonly known, and that the Respondent must be aware of the reputation and goodwill of the Complainants.
3. The Respondent registered the domain name on October 2007, primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants for valuable consideration.
4. The Complainants contend that the Respondent had knowledge of the ownership rights of the Complainants in the service mark at time of registration of the domain name.
The Respondent’s e-mail of May 11, 2008 comprised the following;
“I really apologize for the late reply regarding the dispute as I was out of boarders. Please find my comments below:
1- “Etisaluna.com” domain was registered in 20-Oct-07 while “Itisaluna.com” domain was registered on 06-Dec-06, the question is: where had Itisaluna been for almost sixteen (16) months if they were interested with the domain name!!!!
2- From 20-Oct07 till 19 -apr-2008 the following domain names ( http://www.etisaluna.net , http://www.etisaluna.info , http://www.etisaluna.biz ) were not registered and now you can see that on the 20-Apr-2008 these domain names are registered under Itisaluna name and they have Itisaluna web page and I think that shows tow things :
I. There was no bad faith when I got http://www.etisaluna.com as if there was a bad faith then these domain names should be registered under my name or other name.
II. Itisaluna was not interested with that domain name.
3- Too many emails ware sent to Itisaluna regarding the domain name Etisaluna.com and there was no reply.
Now the domain name is for sale, if Itisaluna are interested the asking price is 16,000 USD.”
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainants have service mark and trade name rights in ITISALUNA and the domain name <etisaluna.com> is confusingly similar to a service mark and a trade name in which the Complainants have rights.
As a consequence, the action brought by the Complainants meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Viewing this situation in light of paragraph 4(c) of the Policy, what the Respondent has done to date is not a bona fide offering of goods or services. There is no evidence whatsoever that the Respondent has been commonly known by the domain name, nor that the Respondent holds any trademark or service mark rights in the name.
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. The Complainant showed that the Respondent has neither a license nor any other permission to use the domain name in dispute. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by its using the disputed domain name. Nor has the Respondent shown that it has been known by the disputed domain name.
The Respondent has not made non commercial or fair use of the domain name. Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, which, if shown by the Respondent to be present, shall be evidence of the Respondent’s rights or legitimate interests in respect of the domain name. However, the primary burden is on the Complainant to show that the Respondent has no such rights or legitimate interests. As has been shown above, once the Complainant has made out a prima facie case, paragraph 4(c) of the Policy gives examples of how a respondent may demonstrate rights or legitimate interests in a domain name. The Respondent has not done so.
It appears from the evidence that when the Respondent registered the domain name it knew that “Itisaluna” was the name of the Complainants. Thus the Panel is satisfied that the Respondent registered very similar name “etisaluna” as a domain name because “Itisaluna” was the name of the Complainants and would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration, however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case.
In this case, the Panel finds that the Respondent was clearly aware of the goodwill and reputation of the ITISALUNA service mark.
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainants’ trademark at the time of the registration of the disputed domain name may be considered as an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
It is also apparent to the Panel that the Respondent has registered this domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainants for valuable consideration in excess of its out-of-pocket costs directly related to the domain name.
It would appear that the Respondent willingly indicated false or incomplete contact information in the Registrar’s database. The Panel agrees that the Respondent provided false contact information mainly for the purpose of remaining unreachable by all ways other than e-mails. While this is not an express ground of bad faith under Paragraph 4(b), giving false contact information is widely recognized as an indication of bad faith in domain name registration. The Panel has confirmed the conclusion of other WIPO UDRP Panels: that the address provided by Respondent has actually no apparent connection to the Respondent. Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796 (December 2, 2003); Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 (October 2, 2002).
In view of the above, the Panel finds that the Respondent has registered and used the domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
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 <etisaluna.com> be transferred to the Complainants.
Date: June 25, 2008