WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arkema France v. Mohammad Farzaneh
Case No. DIR2015-0019
1. The Parties
Complainant is Arkema France of Colombes, France, represented by In Concreto, France.
Respondent is Mohammad Farzaneh of Tehran, the Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <arkema.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 30, 2015. On December 30, 2015, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On January 2, 2016, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on January 5, 2016.
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 Respondent of the Complaint, and the proceedings commenced on January 7, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2016. On January 28, 2016, the Center notified Respondent's default.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on February 10, 2016. 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
Complainant, a chemical company, owns many registrations for its family of marks including the term "Arkema". For example Complainant is owner of International Trademark registration No. 847,865 for the word mark ARKEMA in classes 1 – 5, 16, 17, 37 – 39, 40 – 42 and 45, which specifically designates, among other territories, the Islamic Republic of Iran.
The disputed domain name was registered January 4, 2015. When these proceedings commenced, the website to which the disputed domain name routed promoted products in the same field as Complainant's, made extensive use of Complainant's ARKEMA family of marks, and displayed a photograph of one of Complainant's building fronts in France which also prominently featured Complainant's registered logo. The website presently displays a message indicating that the account has been suspended.
5. Parties' Contentions
Complainant avers that it was established in 1981 and to date has a presence in 50 countries throughout the world, with 137 production sites and more than three dozen commercial subsidiaries.
Summarizing its basic legal contentions, Complainant alleges that (1) the disputed domain name is identical or confusingly similar to Complainant's trademarks, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered or is being used in bad faith, all in violation of the Policy.
On this basis, Complainant seeks transfer.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The Panel agrees that the disputed domain name <arkema.ir> is identical to Complainant's trademarks in the sense of the Policy.
Panels usually disregard the domain name suffix (or Top-Level Domain ("TLD")) in evaluating identity and confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
Omitting the ".ir" country code TLD (the "ccTLD"), the disputed domain name comprises Complainant's trademark in its entirety.
The Panel finds therefore that the disputed domain name is identical to the registered trademark of Complainant and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(c) of the Policy lists circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. A complainant must show a prima facie case that the respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is shown if a respondent does not rebut the complainant's prima facie case.
The potentially applicable circumstances listed in paragraph 4(c) relevant to this proceeding include: (i) the use of the disputed domain name in connection with a bona fide offering of goods or services; and (ii) being commonly known by the disputed domain name. The fact that the website promotes commercial offerings eliminates any possibility that the circumstances of paragraph 4(c)(iii) (i.e., legitimate noncommercial or fair use of the disputed domain name) could be established in favor of Respondent.
Complainant makes uncontroverted allegations that Respondent has no authorization or license to use Complainant's trademarks and that Respondent is not known by the disputed domain name. The Panel accepts as true these undisputed allegations.
Complainant also notes that Respondent is deceptively presenting itself as authorized by Complainant to sell "the same" products. The Panel finds under the circumstances that while Respondent's website suggests that Respondent is authorized by Complainant, Respondent is in fact using the disputed domain name to sell products in competition with Complainant.
The Panel concludes that a prima facie case has been established. Refraining from any response, the Panel finds that Respondent has not rebutted Complainant's prima facie case and has not established any of the circumstances of paragraph 4(c) of the Policy to support the existence of Respondent's rights or legitimate interests in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered or Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration or bad faith use, is also established, as elaborated below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion with a complainant's mark, may be evidence of bad faith registration and bad faith use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623.
Examining the circumstances in this case, the Panel finds that Respondent was undoubtedly aware of Complainant's ARKEMA marks, which Respondent deliberately added to the ".ir" ccTLD to create confusion and attract Internet users to its website for commercial gain. Therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith.
Respondent's website shows that the disputed domain name is used to promote and commercialize products similar to those sold by Complainant. The Panel concludes that this activity evidences bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088); DaimlerChrysler Corporation and DaimlerChrysler Service North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070 (citing Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031).
The Panel further finds that Respondent's display of Complainant's marks without authorization and Respondent's decision to refrain from responding to these proceedings are cumulative evidence of use in bad faith.
The Panel concludes that the record establishes both the elements of bad faith registration and bad faith use by Respondent. Either of these elements alone is sufficient under the third element of the irDRP.
The requirements of the third element of Policy Paragraph 4(a) are fulfilled.
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 <arkema.ir> be transferred to Complainant.
Nasser A. Khasawneh
Date: February 18, 2016
1 While the Complaint has been brought under the Policy, and not the Uniform Domain Name Dispute Resolution Policy ("UDRP"), given the similarities between the two, the Panel considers UDRP precedent relevant to the current proceedings, and will refer to it throughout.