WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merck KGaA v. Mohammad Mehdi Ahmadinia
Case No. DIR2015-0015
1. The Parties
The Complainant is Merck KGaA of Darmstadt, Germany, represented by Bettinger Scheffelt Kobiako von Gamm, Germany.
The Respondent is Mohammad Mehdi Ahmadinia of Tehran, Islamic Republic of Iran, self-represented.
2. The Domain Name and Registrar
The disputed domain name <iransevenseas.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 11, 2015. On November 11, 2015, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On November 14, 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 November 13, 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 November 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2015. The Response was filed with the Center on December 3, 2015.
The Complainant submitted a supplemental filing on December 11, 2015. The Respondent submitted a reply to that supplemental filing on December 14, 2015.
The Center appointed James A. Barker as the sole panelist in this matter on December 14, 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 Panel has accepted the following as the factual background of this case. These facts, which are largely drawn from the Complaint and the case file, are not disputed by the parties.
The Complainant is a German corporation which has its principal place of business at Darmstadt, Germany. The Complainant is one of the world's largest pharmaceutical companies employing approximately 40,000 people in 67 countries around the world.
Through its wholly owned subsidiary, Merck Consumer Healthcare Ltd., the Complainant owns the registered trademark SEVEN SEAS throughout the Middle East and world-wide, and in particular the Iranian trademark registration No. 2024/3100 for SEVEN SEAS. Copies of the registration certificates for those marks were attached to the Complaint.
Products offered by the Complainant under the SEVEN SEAS trademark include cod liver oil and other fish oils, as well as nutritional supplements for human consumption. The Complainant also owns a large number of domain name registrations in the generic Top-Level Domain ("gTLD") and country code Top-Level Domain ("ccTLD") spaces, with its primary website located at "www.merckgroup.com".
From 2009 to 2014, the Complainant marketed its healthcare products in Iran through its authorized distributor Metsco Ltd, located in Lebanon. The Complainant terminated its contractual relationship with Metsco in 2014. In October 2014, the Respondent suggested that his company be appointed as an authorized distributor of the Complainant's products. The Complainant declined, indicating to the Respondent that it had appointed another party as its exclusive representative in Iran. Copies of correspondence to the Complainant from the Respondent, to this effect, were attached to the Complaint.
The case file does not indicate the date on which the disputed domain name was registered by the Respondent. The WhoIs details for the disputed domain name indicate that those details were "last updated" on October 15, 2014. So it is evident that the disputed domain name has been registered for at least that long.
The Panel notes that the disputed domain name reverted, on November 16, 2015 (as evidenced in the Complaint) to a website largely in Farsi, but with links in English to a variety of healthcare products including "Cod Liver Oil", "Maxepa®", "JointCare", and "Minadex®", among others.
The Complainant contacted the Respondent a number of times, directly and through its agent, requesting transfer of the disputed domain name. The Respondent did not reply to these approaches.
5. Parties' Contentions
The Complainant says that the disputed domain name is confusingly similar to its mark. The disputed domain name incorporates that mark entirely, adding only the country name "iran" and the corresponding ccTLD ".ir".
The Complainant also says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent's website refers to "Arman Setad", whereas the WhoIs details identify the Respondent as Mohammad Mehdi Ahmadinia. The Respondent is not affiliated with the Complainant, and is not commonly known by the disputed domain name. The Complainant terminated its relationship with its sole authorized distributor for Iran in September 2014. The Respondent does, in fact, provide the Complainant's products via his website, but these cannot be genuine products and, accordingly, the Respondent's use of the disputed domain name does not represent a bona fide offering. Alternatively, if the Respondent is not actually offering the Complainant's goods at all, his use of the disputed domain name cannot be a bona fide offering.
The Respondent's website fails the third requirement cited in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (setting out the principles by which a distributor of a complainant's products might establish a right or legitimate interest). In particular, the Respondent's website does not accurately disclose his relationship with the Complainant. On the contrary, the Respondent's website prominently displays the Complainant's trademark and logo, as well as representing that he or his company is the Complainant's representative, all of which are likely to confuse consumers into believing that the Respondent's website originates with the Complainant.
The Complainant also says that the Respondent has registered and has used the disputed domain name in bad faith. At no time before or after the Respondent registered the disputed domain name was the Respondent ever an authorized registrant of the disputed domain name. The Complainant has appointed another party as its exclusive representative in Iran. The Respondent has no affiliation with the Complainant or access to authorized channels for the Complainant's trademarked goods.
The Respondent says that the Complaint is related to a dispute currently pending before the International Chamber of Commerce ("ICC"), Court of Arbitration, between Arman Setad Company Limited ("Arman Setad"), and Metsco Ltd, filed on April 15, 2015. The Respondent says that this proceeding under the Policy should either be dismissed or stayed until a resolution of the ICC case.
The Respondent says that, under a distributorship agreement between Arman Setad and Metsco Ltd, Arman Setad was appointed as an exclusive agent to market and sell Seven Seas products in Iran. The Respondent has no basis other than the Complainant's assertions to determine if Metsco Ltd is no longer the authorized agent for the Complainant. At the time of entering the distribution agreement, Metsco Ltd was the authorized agent of the Complainant in the Middle East, and the Complainant has admitted as much, stating that "From 2004 until 2014 Complainant has marketed its healthcare products in Iran through Arman Setad, agent of Metsco". The Respondent is the Managing Director of Arman Setad, and registered the disputed domain name pursuant to its distributorship agreement with Metsco Ltd and has been using it since then.
The Respondent denies that the disputed domain name is confusingly similar to the Complainant's mark, but says that it is a different name.
The Respondent says that he has rights or legitimate interests in the disputed domain name. The Respondent's company, Arman Setad, was appointed as the exclusive agent to market and sell the Complainant's products in Iran by the Complainant's admitted agent, Metsco Ltd. The Respondent registered the disputed domain name in connection with that distributorship agreement and has been using it for many years.
Finally, the Respondent says that his use of the disputed domain name is clearly not in bad faith.
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. The Panel notes that the Policy is, with one notable exception discussed below, substantially similar to the Uniform Domain Name Dispute Resolution Policy ("UDRP") and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy.
A. Supplemental Filings
Both the Complainant and the Respondent made supplemental submissions: that is, submissions in addition to and after the Complaint and the Response.
Paragraph 15 of the Rules prescribes that the Panel shall decide a complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable. The Complainant argued that it should be permitted to file a further submission to respond to documents attached to the Response which the Complainant did not have access to before filing the Complaint. The Respondent's further filing sought to restate his arguments made in the Response, with respect to the concurrent dispute before the ICC.
The filings were not requested by the Panel pursuant to paragraph 12 of the Rules. The objective of the Policy and the Rules is to ensure a speedy and inexpensive determination of the relevant issues. Unless a compelling reason is presented, such as new facts relevant to the determination, that requires a response, it would be contrary to the objective of the Policy to invite or allow supplementary pleadings and evidence. As noted by the panel in Harrods Limited v. Brad Shaw, WIPO Case No. D2004-0411, the relevant principles are that "additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission". Further, and as noted by the Complainant itself, whether it is appropriate to admit an unsolicited supplemental filing will depend inter alia on its relevance to the issues in the case, whether the Panel considers the content of the submission essential to reaching a fair decision on the facts. See NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984.
The Panel has reviewed the submissions and does not consider there to be compelling reasons to admit the further filings in this case. In relation to the Complainant's argument for its supplemental filing, it is necessarily the case in most proceedings that the Complainant will not have prior access to documents later filed by the Respondent – including the Response itself. Such an argument does not, by itself, therefore provide a basis for admitting a further submission. The Complainant's supplemental filing addresses a number of features of the Response which speak for themselves (e.g., pointing to particular terms of the distribution agreement). The Respondent's supplemental filing merely restates some arguments made in the Response. For these reasons, the Panel does not consider that the supplemental filings to be essential for it to reach a fair decision and, as such, has not further considered them in rendering this decision.
B. Concurrent Arbitration Proceedings
The Respondent pointed to a concurrent dispute between his company Arman Setad and Metsco Ltd, the previous licensee of the Complainant, which is subject to arbitration in the ICC. The Respondent says that this irDRP proceeding should either be dismissed or stayed until a resolution of the ICC case.
Relevantly, paragraph 18(a) of the Rules provides that, "[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision". In this connection, the Panel considers that "legal proceedings" include formal arbitration proceedings.
The Panel declines to suspend or terminate the present proceeding. The Respondent provided no details about the relationship between the ICC proceedings and the dispute in this case, or details of the nature of that dispute between Arman Setad and Metsco Ltd. Further the ICC proceedings are not a dispute that involves the Complainant. In these circumstances, there is little basis for the Panel to exercise its discretion under paragraph 18(a) of the Rules.
C. Identical or Confusingly Similar
The Complainant provides evidence of its registered trademark rights for SEVEN SEAS, including in Iran. The Panel finds that the disputed domain name is confusingly similar to that mark. That mark is wholly incorporated in the disputed domain name, adding only the geographic term "iran" as a prefix. Consistently with many past cases, recent cases under the Policy have found that the entire incorporation of a complainant's mark in a domain name can establish confusing similarity to that mark. See, e.g., Honeywell International Inc. v. KKT Commercial Vehicle Systems LLC, WIPO Case No. DIR2015-0014.
Further, as this Panel has previously found in REHAU AG + Co v. Mahdi Ghanaei, WIPO Case No. DIR2015-0012, it is well-established that the addition of the ".ir" ccTLD extension is irrelevant in considering paragraph 4(a)(i) of the Policy, 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.
The addition of the geographic term "iran" as a prefix to the disputed domain name in this case is no different. Consistently with similar cases under the UDRP, past decisions under the Policy have found that the addition of the country name "iran" to a domain name does not alter confusion with the complainant's mark. See, e.g., Hewlett-Packard Company v. Tehran Falnic Company, WIPO Case No. DIR2009-0002; Dell Inc. v. Mojtaba Behnoudi, WIPO Case No. DIR2006-0006. As such, the Panel does not accept the Respondent's argument that the disputed domain name is relevantly different to the Complainant's mark.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
The more difficult issue in this case is whether the Respondent lacks any rights or legitimate interests in the disputed domain name. The Respondent claims to have such rights, on the basis that his company was licensed to distribute the Complainant's products by Metsco Ltd, which until late 2014 was the Complainant's one-time authorized distributor in Iran. On the other hand, the Complainant argues that the Respondent has no such rights or legitimate interests, because the disputed domain name is registered in the name of the Respondent personally, and not the company he represents (Arman Setad). Alternatively, the Complainant argues that the Respondent cannot have ongoing rights or legitimate interests, because the Complainant terminated its relationship with Metsco Ltd, in September 2014. As such, the Respondent cannot claim any ongoing rights from whatever distribution arrangement it had with Metsco Ltd.
The Panel does not accept the first of these arguments advanced by the Complainant. If the Respondent is the Managing Director and CEO of Arman Setad, it necessarily follows that he is the agent of that company. As the agent of that company, the Panel does not consider it significant for the disputed domain name to be registered in the name of the Respondent rather than in the name of his company.
The Panel does accept the second of these arguments advanced by the Complainant. The Complainant provides evidence of communications with the Respondent in October 2014. The Respondent does not deny the content of those communications. In early October 2014, the Complainant informed the Respondent that "[a]s you know Merck CH has worked through an Agent in the Middle East: METSCO, thus we only have a business relationship with METSCO and not with Arman Setad. The business relationship with METSCO has been terminated and we are as you know evaluating our strategy and way forward in Iran […] we regret to have to inform you that the choice has been made to work with one of the other companies that have also quoted for the business." The Respondent sent a follow up email, asking for the reasons that he was not chosen as the Complainant's partner in Iran and who was the alternative choice. The Complainant replied that it was not at liberty to communicate its internal decision-making process, and stated that "[w]e are sorry that we are not able to offer you a more favourable answer to your interest in becoming an agent for us in Iran."
Whatever may have been the prior agreement between the Respondent and Metsco Ltd, the clear import of these communications is that it was plain to the Respondent, at least from October 2014, that he was not the authorized agent of the Complainant in Iran. It should have been equally apparent to the Respondent that Metsco Ltd cannot have continued to license the Complainant's rights after its agreement with the Complainant was terminated. Despite this, the Respondent continued to operate a website at the disputed domain name, offering health care products, and did not respond to further communications from the Complainant seeking the transfer of the disputed domain name.
To the extent that the Respondent offers the Complainant's products via his website (a matter which is not entirely clear from the case file), the Complainant points out that such an offering cannot be of authorized products, but rather of "grey" or "black" market products, or counterfeits. If the Respondent is offering competing products, he is doing so in connection with a domain name that, for the reasons set out above, is confusingly similar to the Complainant's mark, and by using the Complainant's mark on his website.
Neither such uses can be a basis for rights or legitimate interests in the disputed domain name. The offer of grey/black market products, in the circumstances of this case, would not establish rights or legitimate interests, based on the criteria set out in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). As noted in WIPO Overview 2.0: "[n]ormally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder." Alternatively, even if the Respondent is offering only the trademarked goods for sale (a matter which is not entirely clear), at the least, the Respondent's website does not prominently disclose the Respondent's relationship with the Complainant.
If the Respondent is offering competing products on its website, such a use would be a type of "bait and switch" which previous UDRP panel decisions have determined cannot be a basis for relevantly establishing a right or legitimate interest. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., supra.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
E. Registered or Used in Bad Faith
For somewhat similar reasons to those set out above in relation to paragraph 4(a)(ii) of the Policy, the Panel finds that the disputed domain name has been used in bad faith, under paragraph 4(a)(iii) of the Policy.
It is notable that under the Policy, unlike the UDRP, a complainant need only establish registration or use of the disputed domain name in bad faith, rather than establishing both registration and use in bad faith. Deutsche Telekom AG v. Kaweh Kalirad, WIPO Case No. DIR2008-0002.
The evidence indicates that the Respondent has continued to use the disputed domain name in connection with a website which trades on an association with the Complainant's mark. However, the Respondent is not authorized to use that mark by the Complainant. And, from its communications with the Complainant in October 2014, it is obvious that the Respondent was fully aware that he was not authorized by the Complainant to use that mark.
The Respondent places some reliance on having derived rights to register the disputed domain name from his company's distribution agreement with Metsco Ltd. However, the communications cited above indicate that the Respondent was aware that the Complainant's agreement with Metsco Ltd had ceased in 2014. The terms of the 2004 distribution agreement also do not clearly indicate that the Respondent was entitled to register the Complainant's mark in a domain name. That agreement was apparently limited in time: 12 months with the option of renewal. The Respondent did not provide evidence of such a renewal. And, even if it had been renewed, the distribution agreement does not appear to provide any rights for the Respondent to register the Complainant's mark in a domain name. Regardless, it is not necessary for the Panel to consider whether the Respondent may have registered the disputed domain name in good faith. This is because the evidence sufficiently indicates that the Respondent relevantly used the disputed domain name in bad faith under the Policy, for the reasons set out above.
In these circumstances, the Panel finds that the Complainant has established its case under 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, <iransevenseas.ir>, be transferred to the Complainant.
James A. Barker
Date: December 28, 2015