WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atlas Copco AB v. On behalf of havayaran-atlascopco.com / alireza ahkami
Case No. D2018-0629
1. The Parties
The Complainant is Atlas Copco AB of Nacka, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is On behalf of havayaran-atlascopco.com of Dusseldorf, Germany / alireza ahkami of Villa Park, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <havayaran-atlascopco.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2018. On March 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2018, the Registrar 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 March 26, 2018 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 amendment to the Complaint on the same date.
The Center verified that the Complaint together with the amendment to 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 April 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on May 3, 2018. 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 manufacturer and distributor of a diverse range of mechanical equipment, including compressors, air treatment systems, mining equipment and power tools. Its head office is in Sweden. It was founded in 1873 and now conducts business, directly or through distributors, in approximately 180 countries. In the Islamic Republic of Iran, the Complainant trades through an exclusive distributor.
The Complainant’s trading style is Atlas Copco and it has registered a number of trade marks for ATLAS COPCO, including International trade mark Registration No. 997914 for ATLAS COPCO, in logo form, registered on October 20, 2008 in multiple classes, including class 7 (machine tools). This trade mark is in force in a number of countries, including in the Islamic Republic of Iran. The Complainant has also registered various domain names which incorporate its trade mark, including <atlascopco.com>, <atlas-copco.com> and <atlas-copco.info>.
The disputed domain name was registered on August 15, 2017. The screen prints of the website to which the disputed domain name resolves contains a banner at the top of the home page which features the Complainant’s stylized ATLAS COPCO logo. This logo is also reproduced on other pages of the website. A number of the screen prints of the Respondent’s website, provided by the Complainant, have been translated from Persian to English using Google’s website translation facility. One such page features the Complainant’s logo on the left hand side and on the right is a section of text headed, in translation, “Compressor Components”, with a sub-heading “Atlas Copco Company”. Beneath that is a paragraph of text which opens with the words “The Atlas Copco Company has been established to sell and procure parts and repairs of Atlas Copco compressors. The company, with the attention of experienced and experienced personnel, is ready to cooperate….[etc.]|”. A further page contains, in translation, the claim “Hawaier – representative of the Atlas Copco”.
5. Parties’ Contentions
The Complainant says that the disputed domain name entirely incorporates its ATLAS COPCO trade mark. The addition of the term “havayaran” does not assist in distinguishing the disputed domain name from the Complainant’s trade mark and may suggest that there is a connection between the Respondent and the trade mark. The business which operates through the website at “www.havayaran.com” is probably owned by, or connected with, the Respondent. The generic Top-Level Domain (“gTLD”) “.com”, does not serve to distinguish the disputed domain name from the Complainant’s trade mark.
The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The website to which the disputed domain name resolves does not comprise a bona fide offering of goods and services. The overall look and feel of the Respondent’s website is similar to that of the Complainant’s website and the appearance of the equipment featured on the Respondent’s website is similar to the equipment offered for sale by the Complainant. The Respondent asserts that it is acting as a “representative” of the Complainant in the Islamic Republic of Iran, but its use of the Complainant’s trade mark does not constitute a bona fide offering of goods and services as a reseller of trademarked goods; see sections 2.4, 2.5 and 2.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and the decision of the panel in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Specifically, one of the four conditions in Oki Data Americas, Inc. for establishing fair use by a respondent who purports to sell a complainant’s products is that its website should accurately and prominently disclose its relationship with the trade mark holder. However, the Respondent does not only fail to disclaim any affiliation with the Complainant but, as is evidenced by the translation of his website, the Respondent has wrongly claimed to be the “Atlas Copco Company” in the Islamic Republic of Iran and “representative of the Atlas Copco”. This is untrue and the Respondent’s use on his website of the Complainant’s logo is without the approval of the Complainant.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The disputed domain name itself suggests an affiliation with the Complainant and the look and feel of the Respondent’s website supports the website’s explicit claims of association with the Complainant. As there is no relationship between the Parties, the Respondent is misleading Internet users for commercial gain. The Respondent intentionally chose the disputed domain name, based on the Complainant’s well-known ATLAS COPCO trade mark. There is no disclaimer on the Respondent’s website to explain that there is not any relationship between him and the Complainant. Rather, the Respondent has claimed to be a representative of the Complainant. The Respondent is using the disputed domain name to offer repair and maintenance services of the Complainant’s products and intentionally to attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of his website. As is evident from, by way of example, the decision of the panel in Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, the form of websites which mislead Internet users in this manner constitutes evidence of both bad faith registration and use under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the registered trade mark ATLAS COPCO, full details of one of those marks having been set out above. For the purpose of comparing the disputed domain name with the Complainant’s trade mark, the gTLD “.com” is disregarded, as domain extensions are a technical requirement of the Domain Name System.
The remainder of the disputed domain name comprises the Complainant’s ATLAS COPCO trade mark in its entirety, preceded by the word “havayaran” and a hyphen. While the Complainant has not provided any explanation as to why it believes the owner or operator of the website at “www.havayaran.com” is connected with the Respondent, as stated in section 1.8 of the WIPO Overview 3.0 where the relevant trade mark is recognizable within the disputed domain, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity. The nature of such term(s) may however be on assessment of the second and third elements.
In this case, the disputed domain name incorporates the entirety of the Complainant’s trade mark. See section 1.7 of the WIPO Overview 3.0. “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trade mark and the disputed domain name to ascertain confusing similarity.
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
Whilst the word “havayaran” may be distinctive in its own right and has no obvious connection with the Complainant, the Complainant’s trade mark is incorporated in its entirety in the disputed domain name and is clearly recognisable within it.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show use 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
(ii) it can show that it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Previous UDRP panel decisions have established that, if a complainant establishes a prima facie case that none of the above grounds are applicable, the burden of production shifts to the respondent
Circumstances (ii) and (iii) above are, on the facts as outlined above, inapplicable; there is nothing to suggest that the Respondent has been known by the disputed domain name and the website to which it points is plainly commercial in character. The issue which requires consideration is whether the evidence available to the Panel indicates that the Respondent has been using the disputed domain name in connection with a bona fide offering of goods and services.
As the Complainant has pointed out, whilst the decision in Oki Data, related to circumstances in which the respondent was an authorized distributor of the complainant’s products, the principles are also of application to websites operated by other resellers and distributors. The four criteria applied in Oki Data are cumulative, in that, each of them has to be found to be present in order for a respondent’s website to be considered to comprise a bona fide offering of goods and services. The Complainant has focused on one of the criteria, namely whether the Respondent’s website accurately discloses its relationship with the Complainant.
There has been no challenge by the Respondent to the accuracy of the translation of the screen prints of his website submitted by the Complainant and obtained using Google’s website translation facility. Those show web pages which makes express assertions that the Respondent is the “Atlas Copco Company” and therefore able to “sell and procure parts and repairs of Atlas Copco compressors”. On another webpage there is an assertion that “Hawaier” is a “representative of the Atlas Copco”, which suggests a slightly different form of business relationship with the Complainant. However, both statements assert some form of close commercial connection between the Parties and the extensive use of the Complainant’s stylized logo throughout the Respondent’s website reinforces this message.
The Complainant asserts that the Respondent’s website does not contain any form of disclaimer which accurately and prominently discloses the lack of any form of relationship with the Complainant. In the absence of any challenge by the Respondent to this claim, it is accepted by the Panel. In these circumstances, the omission of wording by the Respondent which disclaims any relationship with the Complainant and thereby reduces the likelihood of confusion on the part of Internet users, is significant.
As there is no disclaimer on the Respondent’s website, the Panel finds that the form of the website does not meet the criteria applied in Oki Data to determine whether a reseller’s offer of goods and services should be considered bona fide. There is nothing in the evidence available to the Panel to suggest that the Respondent might be able to establish a right or legitimate interest on any other basis and, indeed, he has not attempted to do so. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s ATLAS COPCO mark is inherently distinctive. The registration by the Respondent of the disputed domain name, which incorporates the trade mark in its entirety, albeit in conjunction with the word “havayaran”, points to an awareness of the Respondent of the Complainant and its business as at the date of registration.
Moreover, as explained at section 3.1.4 of the WIPO Overview 3.0 “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”.
The fact that, at some point following the date of registration, the Respondent pointed the disputed domain name to a website which purportedly offered for sale the Complainant’s products which are similar to the Complainant’s products strongly suggests that this was the purpose for which the disputed domain name was registered. Furthermore, whilst the disputed domain name incorporates the word “havayaran”, there is nothing in the screen prints provided from the Respondent’s website which mentions goods or services connected with this name; only the Complainant’s products are referred to, which reinforces the perception that the primary objective of the Respondent in registering the disputed domain name was in order to assert a commercial connection with the Complainant.
Internet users seeing the Respondent’s website will be misled by its content and appearance into believing that the website is operated by, or with the approval of, the Complainant and the Respondent has taken no steps to attempt to dispel that confusion. The Panel’s view of the position is similar to that expressed by the panel in Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747; “By virtue of its extensive use and advertising since the 1960s, the Complainant and its trade mark VALENTINO enjoy a significant reputation worldwide and a strong online presence. There is no doubt that that the Respondents were aware of the Complainant and its trade mark when they registered the disputed domain names, given that they have reproduced the Complainant’s trade marks and have listed VALENTINO products for sale on their websites. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith. The Panel determines that the Respondents’ purpose of registering the disputed domain names was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded products to their own websites for financial gain”.
Paragraph 4(b) of the Policy sets out, without limitation, four circumstances which, if found by a panel to be present, will be considered as evidence of bad faith registration and use of a domain name. The circumstance set out at paragraph 4(b)(iv) of the Policy is, in summary, if, by using a domain name a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Respondent’s conduct falls squarely within these provisions. The Panel accordingly finds that the disputed domain name has both been registered and is being used in bad faith.
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 <havayaran-atlascopco.com be transferred to the Complainant.
Date: May 17, 2018