WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Math Works, Inc. v. Amir Alipour, Refah Cultural Foundation
Case No. D2014-2063
1. The Parties
The Complainant is The Math Works, Inc. of Natick, Massachusetts, United States of America, internally represented.
The Respondent is Amir Alipour, Refah Cultural Foundation of Tehran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <matlabonline.com> is registered with Realtime Register B.V. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2014. On November 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2014. The Center received an informal email communication in English from the Respondent on November 27, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of the panel appointment process on December 23, 2014.
The Center appointed Kaya Köklü as the sole panelist in this matter on January 9, 2015. 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 company which has designed and marketed technical computing software for scientists and researchers since the 1980’s. Among its products is the “Matlab software”. This software is worldwide renowned in the mathematical, engineering and scientific community. The software is made available online by the Complainant to licensed users through a web browser.
The Complainant is the owner of various trademark registrations for the mark MATLAB claiming protection for various goods and services in relation to software and software services. The first MATLAB trademark registration dates back to June 9, 1992. In addition, the Complainant is also the owner of two Community trademarks, registered on October 23, 1998 and May 17, 2014.
The Complainant further owns and operates various domain names like <mathworks.com> and <matlab.com>.
The disputed domain name was created on April 4, 2009.
The Respondent is an individual from Tehran, Islamic Republic of Iran. According to the revealed registration data, it appears that the Respondent is acting on behalf of an association named “Refah Cultural Foundation”.
At the time of the decision, the disputed domain name resolved to a website in Persian language, which the Panel is not able to read and understand. However, the Respondent confirmed in its email communication to the Center that it provides training and consulting services particularly to university students for the Complainant’s MATLAB software.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant’s MATLAB trademark.
The Complainant argues that the mere difference between the disputed domain name and the Complainant’s trademark is the addition of the term “online”. The Complainant is of the opinion that this difference does not negate the confusing similarity with its trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its trademark. The Complainant further alleges that the Respondent has never used and does not intend to use the MATLAB trademark in connection with a bona fide offering of goods and services.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly believes that due to the wide recognition of the MATLAB trademark, the Respondent was or should have been aware of the trademark when registering and using the disputed domain name.
The Respondent did not submit a formal Response.
However, the Center received an email communication on November 27, 2014, from the Respondent in English language.
In its email communication, the Respondent alleges that until the Complaint, it was not aware that there is an online version of the MATLAB software available. It is asserted that due to applied Internet filtering systems in the Islamic Republic of Iran, the Respondent was not able to access the Complainant’s main website at “www.mathworks.com” and obtain knowledge about the online version of MATLAB software.
It is further argued that it only provides training services to university students in Persian language, however without indicating whether these services are provided with or without commercial purposes. Finally, it is alleged that only Persian speaking users will search and use the services provided on the website linked to the disputed domain name.
An explicit request to deny the Complainant was not filed by the Respondent.
6. Discussion and Findings
According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the MATLAB trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant has been the owner of various MATLAB trademarks since the 1990’s.
The disputed domain name is confusingly similar to the Complainant’s MATLAB trademark as it fully incorporates the mark. It differs only by the addition of the term “online”. In the Panel’s view, the addition of such generic term does not negate the confusing similarity between the Complainant’s trademark MATLAB and the disputed domain name. The Panel finds that this additional incorporation is purely descriptive and does not create a new distinctiveness separate from the Complainant’s MATLAB trademark. On the contrary, the full inclusion of the Complainant’s trademark in combination with the generic term “online”, which simply indicates an availability on the Internet, even enhances the false impression that the disputed domain name is somehow officially related to the Complainant. The Panel concludes that the disputed domain name is likely to confuse Internet users in their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s MATLAB trademark in the disputed domain name.
Further, there is no indication in the current record that the Respondent is commonly known by the disputed domain name. Also, the Respondent has failed to demonstrate one of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of a right or legitimate interest in the disputed domain name. In particular, the Respondent has failed to show that the disputed domain name has been or is intended to be used in connection with a bona fide offering of goods or services. In this regard, the Respondent failed to demonstrate that his provided services to university students are legitimate and of noncommercial nature. The Respondent did not even argue in its email communication of November 27, 2014 that it provides the alleged services in relation to the Complainant’s MATLAB software without any intent for commercial gain.
Although, the Panel is not able to read and understand all information available in Persian language on the website linked to the disputed domain name, it appears that the Respondent tries to attract Internet users by using the Complainant’s trademark as part of the disputed domain name and on the website itself. As correctly indicated by the Complainant, there would have been a variety of other domain names available to the Respondent to offer any of its alleged teaching services without infringing the MATLAB trademark.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel is of the opinion that the Respondent intentionally attempted to attract, allegedly for commercial gain, Internet users to his websites by creating a likelihood of confusion among users and/or to otherwise take advantage of the Complainant’s MATLAB trademark.
The Panel is convinced that the Respondent must have been well-aware of the Complainant’s renowned MATLAB trademark when it registered the disputed domain name in 2009. At the date of registration of the disputed domain name, the Complainant’s MATLAB trademark was already renowned and in use for many years worldwide.
Another indication for bad faith registration and use is that the Respondent has deliberately chosen a confusingly similar domain name fully incorporating the Complainant’s trademark, amended only by the addition of the generic term “online”. In the Panel’s view, this does not create any new distinctiveness, neither in relation to the identity of the Respondent nor to its provided services. On the contrary, by preferring a registration of the disputed domain name with the generic Top-Level Domain (“gTLD”) “.com” instead of e.g. a country code top-level domain (“ccTLD”) for Islamic Republic of Iran, it appears to the Panel that it is the Respondent’s malicious intent to mislead not only Internet users from Islamic Republic of Iran who are looking for authorized products or services by the Complainant, but also from other countries. There is at least a sufficient likelihood that an Internet user could misinterpret the disputed domain name in a way that the Respondent is providing authorized access to MATLAB software on the web or that it is at least somehow authorized by the Complainant to use its trademark MATLAB – none of which is true according to the current record.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
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 <matlabonline.com> be transferred to the Complainant.
Date: January 22, 2015