WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atlas Copco AB v. Hamidreza Hamidreza, artasanat
Case No. D2018-0630
1. The Parties
The Complainant is Atlas Copco AB of Nacka, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Hamidreza Hamidreza, artasanat of Tehran, Islamic Republic of Iran, self-represented.
2. The Domain Name and Registrar
The disputed domain name <irancopco.com> is registered with Tucows Inc. (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 22, 2018, 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 March 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2018. On April 16, 2018 the Respondent or person acting on his behalf requested an extension of four days in which to file a Response. This request was granted by the Center on April 16, 2018. The new due date of the Response was April 20, 2018. However, by April 25, 2018, no Response had been received by the Respondent and the Center accordingly notified the Parties on April 25, 2018 that it will proceed to appointment of the Panel.
The Center appointed Antony Gold as the sole panelist in this matter on May 2, 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 this brand, 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 Complainant also owns a number of trade marks for COPCO, including the following:
- Israeli Trade Mark, registration No. 14483, registered on May 2, 1957 for goods in class 7;
- Algerian Trade Mark, registration No. 1/041906, registered on December 13, 1989 for goods in classes 7, 8, 12 and 17.
The Respondent is an individual based in the Islamic Republic of Iran. The disputed domain name was registered by him on May 25, 2017. It resolves to a website, the text of which is mainly in Persian script. The web pages feature photographs of a variety of electrical equipment. Some of the equipment has accompanying Latin script which describes the product shown, for example; “Atlas copco GVS 60 Vacuum pump”, “Atlas copco FD Dryer” and Atlas copco GA 45”. Screen prints of a number of pages from the Respondent’s website, provided by the Complainant, have been translated by it from Persian into English using Google’s website translation facility. One page contains, in translation, the words “Iran Kopco” in conjunction with the statement “Provider of all compressed air products of Atlas Copco Belgium in Iran. The same page has a menu bar running laterally across the page with text buttons comprising (in translation) the words “Services, overhaul and repair”, “Products”, “About Iran Kopco” and “Home”. A translated version of the “About Iran Kopco” page has been provided. This explains that Iran Kopco is a joint stock company and refers to links it has with “international manufacturers such as Atlas Copco Belgium” as well as its ability to provide various Atlas Copco products.
5. Parties’ Contentions
The Complainant says that the disputed domain name incorporates its registered trade mark for COPCO. The generic Top-Level Domain (“gTLD”) suffix “.com” does not distinguish the disputed domain name from the trade mark the inclusion of “iran” within the disputed domain name may even suggest that there is a connection between the geographic location and the Complainant’s trade mark. Accordingly, the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known by the name ATLAS COPCO, nor has it established any rights in that 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 that it is endorsed by the Complainant. The home page of the Respondent’s website contains photographs of air compressors, power generators and power tools similar to those offered for sale by the Complainant. The Respondent asserts that it is acting as a “representative” in the Islamic Republic of Iran for the Complainant but does not make out a case for fair use of the Complainant’s COPCO trade mark under paragraph 4(c)(i) of the Policy. Moreover, 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. 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 using a domain name which incorporates the complainant’s trade mark is that its website should accurately and prominently disclose its relationship with the trade mark holder. However, the Respondent’s website not only lacks a disclaimer of affiliation but, as is evidenced by the translation of his website, actually claims to be “Provider of all compressed air products of Atlas Copco Belgium in Iran”. The Respondent has also made available files for download, including a booklet which features the Complainant’s logo trade mark without any approval from the Complainant. The Respondent is falsely claiming a relationship with the Complainant which it has never enjoyed. Furthermore, section 2.5.1 of the WIPO Overview 3.0 indicates that domain names, such as the disputed domain name, which comprise a third party’s trade mark coupled with a geographical term, are likely to be perceived as affiliated with the trade mark owner.
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. “Copco” has no meaning independent of the Complainant’s trade mark and the Respondent intentionally chose the disputed domain name, based on the Complainant’s registered and well-known trade mark. As there is no relationship between the Parties, the Respondent is misleading Internet users for commercial gain. 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 and is using the disputed domain name to offer repair and maintenance services of ATLAS COPCO products. He is accordingly, intentionally attempting 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.
Furthermore, the Respondent’s organization is called Arta Sanat. According to the Complainant’s searches, this business is an electrical supply store in Teheran. As the website of Arta Sanat indicates that it is in the same line of business as the Complainant, it is even more evident that the Respondent registered the disputed domain name with the Complainant’s trade mark in mind.
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 established, by providing details of its registrations, that it has rights in the trade marks ATLAS COPCO and COPCO.
The fact that COPCO is not registered as a trade mark in the Islamic Republic of Iran, where the Respondent is based, is not material; it is not a requirement of paragraph 4(a)(i) of the Policy for a complainant’s trade mark rights to subsist in the country in which the respondent is based or to be in force in the countries to which a respondent’s website is directed. As explained at section 1.2.1 of the WIPO Overview 3.0; “Where the complainant holds a nationally or regionally registered trade mark or service mark, this prima facie satisfies the threshold requirement of having trade mark rights for purposes of standing to file a UDRP case”. See also Horten Advokatpartnerselskab v. Domain ID Shield Service CO., Limited / Krutikov Valeriy Nikolaevich, WIPO Case No. D2016-0205.
For the purpose of considering identicality or confusing similarity, the gTLD” suffix “.com” is ignored, as a domain name extension is a technical requirement of the Domain Name System.
The disputed domain name comprises the word “iran’, widely recognized as denoting the Islamic Republic of Iran, followed by the Complainant’s COPCO trade mark in its entirety and without any alteration. The use of “iran” does not avoid a finding of confusing similarity between the Complainant’s COPCO trade mark and the disputed domain name. In this respect, as stated in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical or otherwise) would not prevent a finding of confusing similarity. The nature of such term may however bear on assessment of the second and third elements Section 1.7 of the WIPO Overview 3.0 explains that the test for confusing similarity “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”. In other words, for the purposes of paragraph 4(a)(i) of the Policy, the material consideration is the recognisability of the Complainant’s trade mark, within the disputed domain name.
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 in the evidence available to the Panel which suggests 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 further consideration is whether the evidence 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 (supra) 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. These show a mixed picture as to exactly what form of commercial connection Internet users are likely to assume subsists between the Complainant and the Respondent, based on the website content. In the “About Iran Kopko” section of the website the Respondent refers to his business “Arta Industries, Atlas Mehr (Joint Stock Company) with the name of Iran Kopko enjoying years of experience [etc]”. Later in the same paragraph, the Respondent refers to its dealings with “Important international manufacturers such as Atlas Copco Belgium, Festo and Siemens Germany, Switzerland etc”. Taken out of context, these portions of the Respondent’s website might suggest to the Internet user that the Respondent is an independent company, rather than a subsidiary of the Complainant or an authorized distributor of it.
But even these sections of the Respondent’s website suggest some form of commercial relationship with the Complainant which, according to the Complainant, is wholly untrue. Moreover other parts of the Respondent’s website, such as the photographs of the Complainant’s products on the home page, the claim to be “Provider of all compressed air products of Atlas Copco Belgium in Iran” and the use of the Complainant’s stylized ATLAS COPCO trade mark are such that the overall impression created by the website is that the Respondent’s business has some form of close commercial connection with the Complainant. Furthermore, the screen prints provided by the Complainant do not point to any “Copco”-branded goods or services of the Respondent, suggesting that the website is primarily seeking to exploit a claimed connection with the Complainant rather than genuinely to promote any separate products produced by “Iran Kopko”.
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 lack of wording by the Respondent, which corrects any misunderstanding on the part of Internet users about the true position by disclaiming any relationship with the Complainant, is significant, not least because of the inherent propensity of the disputed domain name to confuse Internet users. See, for example, the decision of the panel in Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031 (relating to <listerineturkiye.com>) in which the panel said; “[T]he Panel considers impermissible impersonation is not just limited to cases where the Domain Name takes the form “<trademark.tld>”. It may also occur where there is a domain name that incorporates a trade mark with some descriptive feature”. In this case, the addition of the Turkish word for “Turkey” is such a descriptive feature. Indeed, the most natural reading of the Domain Name is that it relates to the trade mark owner’s own activities in that particular territory”.
As there is no disclaimer on the Respondent’s website, the Panel finds that the form of the Respondent’s website does not meet the criteria applied in Oki Data to determine whether a reseller’s offer of goods and services is bona fide. There is nothing in the evidence available to the Panel to suggest that the Respondent might be able to establish rights or legitimate interests 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 only known use to which the disputed domain name has been put since it was registered by the Respondent in May, 2017 has been to point to a website which features the Complainant’s ATLAS COPCO branding and products.
The fact that the Respondent appears to be taking advantage of the Complainant’s more obvious reputation in its ATLAS COPCO trade mark rather than any reputation it may have in its COPCO trade mark, is immaterial. The Respondent evidently believes that coupling the geographic indicator “iran” with the Complainant’s COPCO mark will be effective in attracting Internet users to the website at the disputed domain name which features multiple references to the Complainant’s ATLAS COPCO products and contains misleading indications about the Respondent’s relationship with the Complainant, as discussed above.
In the circumstances of the case it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant. Such a belief is relevant when considering whether the Respondent’s registration of the disputed domain name was in bad faith.
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 this provision. The Panel accordingly finds that the disputed domain name was 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 <irancopco.com> be transferred to the Complainant.
Date: May 16, 2018