WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
REHAU AG + Co v. Mahdi Ghanaei
Case No. DIR2015-0012
1. The Parties
The Complainant is REHAU AG + Co of Rehau, Germany, represented by Rauschhofer Rechtsanwälte, Germany.
The Respondent is Mahdi Ghanaei of Tabriz, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <rehau.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2015. On September 16, 2015, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On September 19, 2015, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on September 21, 2015.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 September 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2015. On October 22, 2015, the Center notified the Respondent’s default.
The Center appointed James A. Barker as the sole panelist in this matter on October 27, 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 German partnership that has its principal place of business in Rehau, Germany. The Complainant is a global polymer processing company supplying products in the construction, automotive, and industry sectors. The Complainant employs more than 19,000 employees at more than 170 locations world-wide.
The Complainant is the owner of a number of registered marks for REHAU. These include international marks, registered in 1965 and 1998, Community marks registered as early as 1998, and marks registered in the United States of America.
The Complainant is also the registrant of various domain names that incorporate its mark, including under various country code Top Level Domains (ccTLDs), e.g., <rehau.fr> and <rehau.uk>.
The disputed domain name has a “creation date” of April 10, 2015.
5. Parties’ Contentions
The Complainant argues that, without the “.ir” extension, the disputed domain name is identical to its trademarks, since the disputed domain name incorporates the Complainant’s mark entirely. Because of this, an Internet user viewing a website located at the disputed domain name would likely assume that the website and/or the operator is somehow sponsored by, or affiliated with, the Complainant, or has at least the consent of the Complainant to use the disputed domain name.
The Complainant argues, secondly, that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name is not being used by the Respondent actively but, rather, redirects to another domain name (<aty.ir>). The website at that other domain name (apparently presented in Farsi) appears to advertise various industrial products, such as window-frames. The Complainant says that the disputed domain name has redirected to that other domain name since at least November 2014, based on information in the WayBackMachine Internet archive. The Respondent is intentionally attempting to attract, for commercial/criminal gain, Internet users by creating confusion with the Complainant’s mark. Besides this, the Complainant says that the Respondent tried to sell the disputed domain name to the Complainant at differing prices, between EUR 1,500 and 5,000. To this effect, the Complaint attaches email correspondence to the Complainant from the Respondent.
Thirdly, the Complainant says that the Respondent registered and has used the disputed domain name in bad faith. The previous registrant of the disputed domain name was Mr. Abdollah Ghanai, a close relative of the present Respondent Mr. Mahdi Ghanaei. Mr. Abdollah Ghanai has been the managing director of a company that has been a customer of the Complainant.
The Complainant says that its REHAU mark is distinctive and has no meaning in any language other than as a trademark identifying the Complainant. The Complainant says that it defies common sense to believe that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademarks, and coincidentally uses the disputed domain name in connection with similar products as the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 was registered or is being used in bad faith.
These elements are discussed as follows.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must show two things to succeed in demonstrating that the disputed domain name is identical or confusingly similar to its trademark.
The first is to show that it in fact has rights in a trademark. The Complainant has demonstrated such rights in this case by providing evidence of its trademark registrations for REHAU, in various jurisdictions.
It is notable that the Complainant’s mark is apparently based on the geographic location – Rehau – where the Complainant has its principal place of business. The fact that its mark is derived from this location does not, however, put in question the validity of the Complainant’s marks. As noted in paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)1 , some geographical terms can be protected under the UDRP, if the complainant has shown that it has rights in the term and that the term is being used as a trademark for goods or services. The Complainant’s various trademark registrations are clearly sufficient to demonstrate that the Complainant has rights in that term as a mark.
The Complainant must secondly establish that the disputed domain name is identical or confusingly similar to its mark. The Panel finds that the disputed domain name is relevantly identical to the Complainant’s mark, as that mark is entirely incorporated in the disputed domain name. It is well-established in prior panel decisions under the UDRP that the entire incorporation of a complainant’s mark in a domain name is sufficient for a finding in this respect. See e.g., AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758, and the cases cited in that one; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102. It is well-established that the addition of the “.ir” ccTLD extension is, at best, irrelevant in considering this second element of the Policy paragraph 4(a)(i), or might even mislead consumers into the belief that the disputed domain name is the Complainant’s domain name for the Islamic Republic of Iran: Marks and Spencer Plc v. Ali Ebrahimi, WIPO Case No. DIR2015-0001.
Accordingly, the Panel finds that the disputed domain name is identical to the REHAU trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides illustrative circumstances which, if found by the Panel, would demonstrate a respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you [the Respondent] of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent provided no Response to the Complainant’s allegations against it and, as such, has provided no evidence of any rights or legitimate interests in the disputed domain name of these kinds. There is no other evidence in the case file for this case that would suggest that the Respondent has such rights.
In addition, the Complainant has made a credible prima facie case against the Respondent, and provided evidence of its business, its trademarks, and correspondence with the Respondent. As outlined in the WIPO Overview 2.0, paragraph 2.1, once such prima facie case is made, the burden of production shifts to the respondent. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In these circumstances, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered or Used in Bad Faith
An example of bad faith in paragraph 4(b)(iv) of the Policy is that: “by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.” The evidence in this case suggests that the Respondent has registered and used the disputed domain name for this purpose.
The Complainant’s mark is apparently well-known, and the Respondent has registered an identical domain name which redirects Internet users to a website advertising products similar to the business of the Complainant. The Complainant also avers that the Respondent is a close relative of the managing director of a previous customer of the Complainant. This evidence suggests that the Respondent intentionally sought to create confusion and profit from it. The use of the disputed domain name in this connection provides for a clear finding of bad faith under paragraph 4(b)(iv) of the Policy.
The Panel notes that the Complainant provides evidence that the Respondent sought to sell the disputed domain name to the Complainant for EUR 5,000, following an initial offer from the Complainant to buy the disputed domain name from the Respondent for EUR 1,500. For the reasons set out above, it is not necessary for the Panel to also consider whether this offer is further evidence of bad faith. In this respect, paragraph 4(b)(i) of the Policy provides that bad faith may also be found in circumstances indicating that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs. The evidence is equivocal as to whether such a sale was the Respondent’s primary motivation. Rather, the evidence is more suggestive that the Respondent opportunistically sought to “bid up” the Complainant’s initial offer to settle this dispute by offering to purchase the disputed domain name. However, the Panel considers that such evidence contributes to an overall finding of bad faith.
Accordingly, the Panel finds that the disputed domain name was registered, and has been used, in bad faith for the purposes of 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 <rehau.ir> be transferred to the Complainant.
James A. Barker
Date: November 9, 2015
1 While the Complaint was brought under the Policy and not the Uniform Domain Name Dispute Resolution Policy (UDRP), given the textual similarities between the two, the Panel find relevant to the present dispute decisions rendered under the UDRP, as well as secondary UDRP materials (such as the WIPO Overview 2.0), and will refer to them throughout.