WIPO Arbitration and Mediation Center
Assa Abloy AB v. Goharbarane Sharif / Mohammad Reza Rahmani Zanjani
Case No. DIR2016-0005
1. The Parties
The Complainant is Assa Abloy AB of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondents are Goharbarane Sharif of Tehran, the Islamic Republic of Iran and Mohammad Reza Rahmani Zanjani of Tehran, the Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain names <assa-abloy.ir> and <assaabloy.ir> are registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 10, 2016. Hard copies of the Complaint were received by the Center on February 11, 2016. On February 11, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain names. On February 13, 2016, IRNIC transmitted by email to the Center its verification response stating that the disputed domain names had transferred to a new registrant. The Center notified the Complainant of this transfer on February 17, 2016, and the Complainant submitted an amended Complaint in light of this on February 24, 2016.
The Center verified that the Complaint and amended Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for the .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 Respondents Sharif and Rahmani of the Complaint and amended Complaint, and the proceedings commenced on February 26, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2016. No Response was received, and accordingly the Center notified the Respondents' default on March 18, 2016
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on March 24, 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.
3.1 Supplementary Evidence
On March 30, 2016, the Complainant filed supplementary evidence consisting of several communications between the Complainant's representative and an individual allegedly named "Siavash Siavash", initiated on February 11, 2016 by this person. Mr. Siavash claimed to know the "owner" of the disputed domain names (without specifying the identity of said owner). In said communications, this individual provided details on the alleged position of the owner, specifically that: 1) the owner knew of the proceedings and decided not to file a Response; 2) the owner was allegedly willing to cooperate with the Complainant by giving up the disputed domain names for a "reasonable offer"; and 3) the owner acquired the disputed domain names with the expectation of becoming a partner of the Complainant.
The Panel admitted this supplementary evidence, and issued Procedural Order No. 1 on April 5, 2016, in order to give all the parties an opportunity to be heard in this case. The Procedural Order is transcribed hereinafter:
"With regard to the supplementary evidence sent by the Complainant to the Center on March 30th, 2016, this Panel determines the following:
- The Complainant has informed the Panel of a series of communications held via e-mail between the Complainant's representative and a person who claims to know the Respondent, and has submitted copies of these e-mails.
- According to the chain of e-mails forwarded to the Panel, the first contact made by <[..]@yahoo.com> was made on February 11, 2016, a day after the filing of the Complaint. This means that this evidence was not available to the Complainant when the Complaint was filed.
- This Panel has determined to admit this supplementary evidence and analyze it when issuing the final in this case.
- To safeguard equitable proceedings, the Respondent is hereby granted a period of three days to submit comments regarding the said e-mails.
The term that Respondent has to submit comments is April 8, 2016."
The Respondent Rahmani filed a late reply to Procedural Order No. 1 on April 11, 2016 (discussed infra).
4. Factual Background
The Complainant is Assa Abloy AB, a Swedish supplier of door opening solutions.
The Complainant owns several trademark registrations for ASSA ABLOY, including in the Islamic Republic of Iran.
The Complainant also owns several generic Top-Level Domain (gTLD) and country code Top-Level Domain (ccTLD) names comprised of or containing the ASSA ABLOY mark.
The disputed domain name <assaabloy.ir> was registered by Goharbane Sharif on October 13, 2013, and transferred by Mr. Sharif to Mohammad Reza Rahmani Zanjani on February 10, 2016, the date the Complaint was filed with the Center.
The disputed domain name <assa-abloy.ir> was registered by Goharbane Sharif on October 13, 2013, and transferred by Mr. Sharif to Mohammad Reza Rahmani Zanjani on February 11, 2016, the day after the Complaint was filed with the Center.
The disputed domain names are inactive.
5. Parties' Contentions
The Complainant argued the following:
-That it is the largest global supplier of door opening solutions.
-That it has operations in more than 70 countries, with leading positions in Europe, North America and the Asia Pacific region, and that it is successful in its field.
-That it has been widely recognized by the media for its innovation and success.
-That it also operates in the Middle East, with its main office located in Dubai, United Arab Emirates.
-That it is the owner of trademark registrations for the mark ASSA ABLOY in many countries across the world, including the Islamic Republic of Iran, where the mark was registered in 2003.
-That the trademark ASSA ABLOY has acquired the status of a well-known trademark, especially within the door opening solutions industry, where it is the market leader at a worldwide level.
The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant alleges:
-That the disputed domain names are identical and confusingly similar to the registered trademark ASSA ABLOY, as they incorporate it in its entirety.
-That ASSA ABLOY is a highly distinctive trademark and that it has no meaning in the English or Persian languages.
-That the addition of the ccTLD ".ir" has no impact on the similarity between the disputed domain names and the Complainant's trademark.
-That the disputed domain names could easily be mistaken for the Complainant's ASSA ABLOY trademarks.
-That Internet users are likely to think that the disputed domain names are in some way connected to the Complainant, when in fact they are not.
The Respondent has no rights or legitimate interests in respect of the domain names
The Complainant argues:
-That the Respondent(s) does/do not have any trademark registrations for ASSA ABLOY or ASSA-ABLOY, and that the Respondent(s) has/have not been using ASSA ABLOY or ASSA-ABLOY in any other way that would give him/them legitimate rights over said trademarks.
-That there is no evidence showing that the Respondent(s) has/have been commonly known as <assa-abloy.ir> and/or <assaabloy.ir>.
-That the Complainant has not granted any license or authorization to the Respondents to use its trademark ASSA ABLOY.
-That the Respondents knew of the ASSA ABLOY trademark at the time of obtaining the disputed domain names, which was driven by the fame and goodwill of the Complainant's trademarks.
-That the registration of ASSA ABLOY as a trademark in the Islamic Republic of Iran in 2003 was prior to the registration of the disputed domain names.
-That the disputed domain names are not currently being used, a fact that evinces passive holding by the Respondents.
The domain names have been registered or are being used in bad faith
The Complainant states:
-That its trademark ASSA ABLOY is well-known within its industry.
-That the fact that the disputed domain name <assaabloy.ir> was transferred the day when the Complaint was filed and communicated to Mr. Sharif by the Complainant, and that the disputed domain name <assa-abloy.ir> was transferred one day after this fact, constitutes proof of bad faith and evidence of cyberflight by Respondent Sharif.
-That the Complainant had sent a cease and desist letter to Respondent Sharif, and that no reply was received.
-That, even if the disputed domain names are currently inactive, the passive holding of the Respondents is in bad faith.
-The Complainant asserts that Respondent Sharif had previously registered several other domain names incorporating well-known trademarks.
As indicated above, although neither of the Respondents submitted a Response by the Response due date, Respondent Rahmani did submit a (late-filed) reply to Procedural Order No. 1. In its discretion the Panel will consider this filing, which in summary says as follows:
The beneficial owner of the disputed domain names is neither Mr. Sharif nor Mr. Rahmani, but is in fact a "company active in the security business" named "FAS Co." This company has directed that the disputed domain names be transferred from Respondent Sharif to Respondent Rahmani so that the latter can "take[ ] care" of them.
FAS Co. has registered the disputed domain names in the hopes of attracting the attention of the Complainant, with the eventual goal of becoming the Complainant's partner for the Iranian market. FAS Co. has also attempted to contact the Complainant by email to propose a partnership arrangement, to no avail.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain names are 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 names; and
(iii) The disputed domain names have been registered or are being used in bad faith.
This Panel deems it appropriate to cite s issued in accordance with the Uniform Domain Name Dispute Resolution Policy (UDRP). This is so because the irDRP is based upon, and is a variant of, the UDRP, and the present case requires the analysis of matters widely dealt with in UDRP proceedings.
A. Respondent Identity
Given the circumstances of the present case, there remains an issue regarding who is to be properly considered the Respondent.
The holder of the domain name registrations at the time when the Complaint was filed, Mr. Sharif, has been properly named as a Respondent under the definition of "Respondent", according to the Rules.1 The current holder of the domain name registrations, Mr. Rahmani, has also been properly named as a Respondent under this definition.
No evidence was submitted by Respondent Rahmani towards demonstrating the truth of the assertions made in his reply, however it does serve the purpose of verifying Respondent Rahmani's knowledge of the Proceedings, his affiliation with Respondent Sharif, and the alleged intentions of becoming a partner of the Complainant.
Moreover, both Respondents give the impression of acting in concert within a short time to achieve a particular purpose, in this case to transfer the disputed domain names out of the ownership of Respondent Sharif to Respondent Rahmani who was conveniently available, to facilitate the evasion and obstruction of the current administrative proceedings (see mutatis mutandi COMUTO v. DONGYUNQIU/shi lei, WIPO Case No. DCO2014-0038).
In view of the above, this Panel is inclined to conclude that both Respondents constitute a group of persons acting in concert and, therefore, will consider them as a single Respondent in this case (see mutatis mutandi Inter-Continental Hotels Corporation v. Mr. Tuan / Mr. Miko / Miss Ha Phuong, WIPO Case No. D2014-1987; and Hermex Iberica, S.A. v. HerMeX Dating / BuyBestDomains.com, WIPO Case No. D2015-1295).
This Panel notes that further findings under section 6 would not be different should the two Respondents be considered as unrelated individuals, since the Complainant, as mentioned below, has proven all the substantive requirements in respect of both the previous and the current named registrants (see mutatis mutandi Inter-Continental Hotels Corporation, supra.)
Regarding Respondent Sharif's transfer of the disputed domain names immediately after the filing of the Complaint, while Respondent Rahmani appears to claim that this was done for benign reasons of corporate domain name management, in reality this appears to be an instance of what is known as "cyberflight", a tactic undertaken by a registrant, among other reasons, to evade a Policy proceeding. The Panel would not wish to encourage or reward such behavior by not naming Mr. Sharif as a Respondent to this proceeding.
B. Identical or Confusingly Similar
The disputed domain names <assaabloy.ir> and <assa-abloy.ir> are confusingly similar to the Complainant's trademark ASSA ABLOY, as they include said trademark in its entirety. In the case of the disputed domain name <assa-abloy.ir>, the disputed domain name incorporates a hyphen between "assa" and "abloy". This hyphen does not avoid confusing similarity between this disputed domain name and the Complainant's trademark (see Aktiebolaget Electrolux v. Ramin Derakhshan, WIPO Case No. DIR2014-0012; Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281; and mutatis mutandi Dell Inc. v. Mojtaba Behnoudi, WIPO Case No. DIR2006-0006).
The addition of the ccTLD ".ir" to both of the disputed domain names is immaterial for purposes of assessing confusing similarity. See Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541.
From this Panel's perspective, the addition of the ccTLD ".ir" might even mislead consumers into the belief that the disputed domain names are the official domain names of the Complainant for the Islamic Republic of Iran (see Marks and Spencer Plc v. Ali Ebrahimi, WIPO Case No. DIR2015-0001).
Therefore, the first element of the Policy has been met.
C. Rights or Legitimate Interests
In accordance to paragraph 4(c) of the Policy the following examples are circumstances in which the Respondent may have rights to, or legitimate interests in, the disputed domain names:
(i) Before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) The Respondent (as individual, business, or other organization) has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has provided enough evidence to prove that it is the owner of registrations for the ASSA ABLOY trademark in several countries, including a 2003 registration in the Islamic Republic of Iran, where the Respondents have declared to reside.
The Complainant has indicated that it has not granted any type of authorization or license to the Respondents for the use of the ASSA ABLOY trademarks.
As the disputed domain names are passively held, there has been no use of them that could give rise to rights or legitimate interests under Policy paragraphs 4(c)(i) or 4(c)(iii) (i.e., for a bona fide offering or for noncommercial use).
In addition, neither Respondent Sharif's nor Respondent Rahmani's names have any connection with ASSA ABLOY. This shows that neither of them are or have been known as "assaabloy.ir" or "assa-abloy.ir", and that Policy paragraph 4(c)(ii) does not apply.
Respondent Rahmani stated the reason for acquiring the disputed domain names – as an intent to attract the Complainant's attention for an eventual partnership. This intent does not give rise to any rights or legitimate interests.
None of the circumstances set forth in paragraph 4(c) of the Policy apply to the facts of the current case. Therefore, the second element of the Policy has been met.
D. Registered or Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or the Respondent has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain names; or
(ii) the Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites or locations or of a product or service on its websites or locations.
Considering the claim of passive holding made by the Complainant, this Panel will analyze the facts of the present case under the doctrine set forth in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, as follows:
i) The Complainant's wide reputation has been recognized by UDRP panels, with whom this Panel agrees (see e.g., ASSA ABLOY AB v. P D S AB, WIPO Case No. D2000-0442). Therefore this Panel considers that the evidence filed by the Complainant adequately proves that the ASSA ABLOY mark is widely known;
ii) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names;
iii) Respondent Sharif and Respondent Zanhani own or have owned several domain name registrations incorporating third party trademarks (or variations thereof) such as the following:
a) Respondent Sharif: <microsoftcrm,ir>, <debitmastercard.ir>, <general-electric.ir> and <generalelectric.ir>.
b) Respondent Rahmani: <vivabarca.ir>, <paymentpal.ir>, <persepolisnews.ir>, <mihangroup.com> and <myphotoshop.ir>.
Therefore, the Respondents show a pattern of registering and acquiring domains incorporating trademarks of third parties.
iv) As discussed above, the record shows evidence of cyberflight, which constitutes evidence of bad faith (see PREPADOM v. Domain Drop S.A. (PREPADOM-COM-DOM), WIPO Case No. D2006-0917; and Humana Inc. v. CDN Properties Incorporated, WIPO Case No. D2008-1688).
Taking into account the foregoing facts, it is not possible to think of any plausible actual or contemplated active use of the disputed domain names by the Respondents that would not be illegitimate. The arguments and evidence filed by the Complainant, result in a bad faith inference concerning the registration and passive holding of the disputed domain names (see mutatis mutandi Telstra Corporation Limited v. Nuclear Marshmallows, supra; Williams-Sonoma, Inc. v. Rafael Chavez, WIPO Case No. DMX2012-0001; NS2.COM Internet S/A v. Jesús Manuel Jiménez García, WIPO Case No. DMX2011-0027; J. García Carrión, S.A. v. Mª José Catalán Frías, WIPO Case No. D2000-0239; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464; and Montes De Piedad Y Cajas De Ahorro De Ronda, Cádiz, Málaga, Almería Y Antequera (Unicaja) v. Fernando Labadia Pardo, WIPO Case No. D2000-1402).
In light of the above, under the Telstra doctrine, the passive holding of the disputed domain names constitutes bad faith in accordance with the Policy (see Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615).
The third element of the Policy has been met.
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 names <assa-abloy.ir> and <assaabloy.ir> be transferred to the Complainant.
Date: April 13, 2016
1 "Respondent means the holder of a domain-name registration against which a complaint is submitted." Rules, paragraph 1.