WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Xerox Corporation v. Noorollah Hasan Pour
Case No. DIR2016-0010
1. The Parties
The Complainant is Xerox Corporation of Norwalk, Connecticut, United States of America, represented by Saba & Co. IP, Lebanon.
The Respondent is Noorollah Hasan Pour of Kelardasht, Mazandaran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <xerox.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2016. On March 31, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On April 2, 2016, 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 April 4, 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 the Respondent of the Complaint, and the proceedings commenced on April 6, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2016. Apart from the brief emails with an offer to sale the disputed domain name, no formal response was received. On April 27, 2016, the Center notified the parties of the commencement of the Panel appointment process.
The Center appointed James A. Barker as the sole panelist in this matter on May 6, 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
The Complainant is a multinational company which provides document management technology, such as printers, photocopiers and multi-function peripherals, as well as related services to businesses and governments of all sizes. The Complainant has more than 130,000 employees, and does business in more than 180 countries across the world, with annual revenues exceeding USD 19 billion, and spends millions of dollars annually to promote its goods and services. The Complainant was listed as one of the world's most admired companies by Fortune Magazine. Further, a list of "Best Global Brands 2015", provided by Interbrand, shows the Complainant ranking as number 71 in the top 100 of best known brands in the world.
The Complainant owns over 2,700 trademark registrations for XEROX and variants in different countries around the world, including in the Islamic Republic of Iran where the Respondent is based. This includes a trademark registration in Iran that dates back to 1969.
The Complainant has registered domain names incorporating the XEROX tradename and trademark in more than 1,995 ".com" domain names, 58 new generic Top-Level Domains, and 1,368 country code Top-Level Domains, with a total of 3,421 domain names.
The Complaint provides a screenshot of the website at the disputed domain name. That screenshot shows a website with a number of simple links listed (apparently) in Farsi, and with a box in the center prominently displaying the disputed domain name at its centre.
In the absence of a formal Response, there is no information in the case file about the identity of the Respondent.
Neither the Registrar verification nor the WhoIs details give a clear indication of when the disputed domain name was registered by the Respondent. Only the creation date has been provided, which is October 5, 2011. Regardless, the Complainant has very long-standing trademark rights which arose before the development of the Internet and so clearly predate any conceivable registration.
5. Parties' Contentions
The Complainant says that the disputed domain name is relevantly identical to its registered mark.
The Complainant says that there is no evidence that the Respondent has rights or legitimate interests in the disputed domain name. In particular, there is no evidence that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services, has been commonly known by the dispute domain name, or is making a legitimate noncommercial or fair use of it. Rather, the Respondent, is offering the disputed domain name for sale, which demonstrates the Respondent's desire to make a profit from the unauthorized use of the Complainant's mark.
The Complainant also says that the disputed domain name was registered and is being used in bad faith. The Complainant refers again to the Respondent's offering of the disputed domain name for sale. The Respondent also did not comply with a warning letter sent to it by the Complainant in January 2016.
The Respondent did not submit a formal Response.
However a communication was received by the Center on April 6, 2016, in response to the notification of the Complaint, from an email address with the name Reza Afi. That email stated merely "hello this domain is for sale and price is very few 300 usd do you want to buy it?". On the same day, the Center also received an email in the name of the Respondent, stating similarly "it is for sale and price is 300 $ do you want to buy it?".
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 XEROX, in various jurisdictions. The Complainant has also been successful in proceedings under the Uniform Domain Name Dispute Resolution Policy1 ("UDRP") in administrative proceedings, in which the panel recognized the Complainant's trademark rights: see, e.g., Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313.
The Panel has no difficulty in also finding that the disputed domain name is relevantly identical to the Complainant's XEROX mark. It is well-established in prior 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" country code domain name extension is, at best, irrelevant in considering this second element of paragraph 4(a)(i) of the Policy, or might even mislead consumers into the belief that the disputed domain name is Complainant's domain name for the Islamic Republic of Iran: Marks and Spencer Plc v. Ali Ebrahimi, WIPO Case No. DIR2015-0001.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although its substantive allegations are brief, the Complainant has made a credible prima facie case against the Respondent, and provided evidence of its business reputation, its trademarks, correspondence with the Respondent. As outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1, once such a 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.
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:
"(1) 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
(2) 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
(3) 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 formal 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. The case file only suggests, and the Respondent has confirmed, that its intention is to sell the disputed domain name. In the circumstances of this case, such an intention cannot be a basis for rights or legitimate interests in the disputed domain name.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad Faith
Paragraph 4(b)(i) of the Policy provides that bad faith may 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.
Almost immediately after the Complaint was notified in this case, the Respondent (and another individual with some apparent relationship to the Respondent) replied offering the disputed domain name for sale. The website at the disputed domain name also offers it for sale.
It is also inconceivable that the Respondent was unaware of the Complainant's trademark rights and registered the disputed domain name other than because of its association with the Complainant. The term "Xerox" appears prominently on the Respondent's website, and is the only relevant element of the disputed domain name. To the Panel's knowledge, that term is exclusively associated with the Complainant's business. The XEROX mark is also very well-known world-wide, and has been for many years.
In these circumstances, it is hard to imagine a good faith reason for the Respondent's registration and use of the disputed domain name.
The Respondent has failed to offer any evidence contradicting the Complainant's case. The Respondent also failed to respond to a letter of demand from the Complainant which, in the circumstances of this case, is further evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
For these reasons, the Panel finds that the Complainant has also 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 <xerox.ir> be transferred to the Complainant.
James A. Barker
Date: May 20, 2016
1 While the Complaint is brought under the Policy, and not the UDRP, given the similarities between the two, the Panel considers UDRP precedent relevant to the current proceedings, and will refer to it throughout.