WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mouser Electronics Inc v. Mehdi Shafie

Case No. D2017-1693

1. The Parties

The Complainant is Mouser Electronics Inc of Mansfield, Texas, United States of America (“United States”), represented by PETILLION, Belgium.

The Respondent is mehdi shafie of Zwolle, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <iranmouser.com> (the “Disputed Domain Name”) 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 September 1, 2017. On September 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 4, 2017, the Registrar 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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2017.

The Center appointed John Swinson as the sole panelist in this matter on October 4, 2017. 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 Mouser Electronics Inc, a company based in the United States. The Complainant distributes semiconductor and electronic components to electronic design engineers and other buyers. According to the Complaint, the Complainant ships globally to over 550,000 customers in 170 countries.

The Complainant owns numerous registered trade marks, including United States registered trade mark number 2207030 for MOUSER (the “Trade Mark”) which was registered on December 1, 1998.

The Complainant owns a domain name which incorporates the Trade Mark, being <mouser.com>, at which it promotes the Trade Mark in connection with its products (the “Complainant’s Website”). The domain name for the Complainant’s Website was registered on April 21, 1995.

The Respondent is mehdi shafie, an individual of the Netherlands. The Respondent did not file a Response, and consequently little information is known about the Respondent.

The Disputed Domain Name was registered on November 17, 2014.

The website associated with the Disputed Domain Name displays the Trade Mark, a modified version of the Complainant’s “M” logo and offers for sale electronic components and related products similar to those provided by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Complainant has registered rights in the Trade Mark. The Disputed Domain Name incorporates the Trade Mark in its entirety with the mere addition of a descriptive term.

The addition of the term “Iran” is a mere geographical description and does not provide any distinction from the Trade Mark. In fact, the term “Iran” serves to emphasise the potential geographical location of the Complainant’s business and increases the likelihood of confusion as Internet users may mistake the website at the Disputed Domain Name to be a website of the Complainant’s devoted to its customers in the Islamic Republic of Iran.

Accordingly, the Disputed Domain Name is confusingly similar to the Trade Mark.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not commonly known by the Disputed Domain Name and has not acquired trade mark or service mark rights in the Disputed Domain Name.

The Respondent’s registration and use of the Disputed Domain Name was not authorised by the Complainant. In the absence of any licence or permission from the Complainant to use the Trade Mark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name can be reasonably claimed.

The Disputed Domain Name resolves to a website offering identical or similar products to those sold through the Complainant’s Website. The Respondent has copied the Complainant’s “M” logo and simply added the word “Iran” to the logo. Such use does not constitute legitimate or fair use according to the Policy.

Registered and Used in Bad Faith

The Respondent registered the Disputed Domain Name in bad faith. At the time of registering the Disputed Domain Name, the Respondent must have known of the Complainant and the Trade Mark as the Complainant’s trade marks are well known all over the world, as shown by search engine results and the Complainant’s presence on social media and in press articles. A simple trade mark search at the time of registration of the Disputed Domain Name would have revealed the Complainant’s trade mark registrations.

This is further evidenced by the fact that the Respondent used the Disputed Domain Name to offer products identical or similar to those sold by the Complainant and that the Respondent copied the Complainant’s “M” logo to include on the website at the Disputed Domain Name and simply added the word “Iran” to the logo.

The Respondent is using the Disputed Domain Name in bad faith, by preventing the Complainant from reflecting the Trade Mark in a corresponding domain name. The effect of the registration is to affect the Complainant’s business by attracting Internet users looking for information about the Complainant or the Trade Mark and creating confusion for those users.

The use of the Disputed Domain Name and its similarity to the Trade Mark suggests an endorsement of, or affiliation with the Complainant. This impression is increased by the inclusion of the Complainant’s “M” logo and the Trade Mark on the website at the Disputed Domain Name.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark 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.

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.

The Respondent’s failure to file a Response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark is included entirely in the Disputed Domain Name and the inclusion of the geographical term “Iran” and the generic Top-Level Domain (“gTLD”) “.com” does nothing to detract from this similarity.

The Complainant is successful on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:

- The Panel accepts the Complainant’s submission that the Respondent is not a licensee or otherwise authorised by the Complainant to use the Disputed Domain Name.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law trade mark rights in relation to the Trade Mark.

- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of services. At the time the Complaint was filed, the website associated with the Disputed Domain Name was substantially similar in appearance to the Complainant’s Website and included a modified version of the Complainant’s “M” logo. Further, the same type of products to those provided by the Complainant is available for purchase from the website at the Disputed Domain Name. In the circumstances, this is not a bona fide use of the Disputed Domain Name under the Policy, as the website at the Disputed Domain Name creates a misleading impression of being somehow affiliated with the Complainant, when in fact this is not the case.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Panel reasonably considers that the Respondent sought to use the Disputed Domain Name to mislead Internet users to believing it to be associated with the Complainant, presumably for commercial gain.

The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Name in bad faith.

The Complainant has been operating its online shop since 1998 and its brand is well known internationally. The Complainant has demonstrated the importance of its intellectual property by registering the Trade Mark in numerous countries and a domain name associated with its business (which contains the Trade Mark).

Based on the evidence provided by the Complainant, the Panel finds that the Respondent had knowledge of the Trade Mark at the time of registering the Disputed Domain Name. The reputation of the Trade Mark and the fact that the website associated with the Disputed Domain Name closely resembles the Complainant’s Website and includes a slightly modified version of the Complainant’s “M” logo indicates that the Respondent was aware of the Complainant when registering the Disputed Domain Name.

The Panel finds that the Respondent sought to take advantage of the reputation of the Complainant’s business and the Trade Mark, and registered the Disputed Domain Name because of this reputation. This is further evidenced by the fact that the Respondent is offering products for sale which are the same or similar to those provided by the Complainant. The Panel reasonably considers that the Respondent registered and is using the Disputed Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the website at the Disputed Domain Name. This is evidence of bad faith registration and use (see paragraph 4(b)(iv) of the Policy).

In light of the above, and the Respondent’s failure to provide evidence to the contrary, the Panel finds that the Complainant has succeeded on the third element 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 <iranmouser.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: October 18, 2017