WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
De Longhi Benelux SA v. Mohammad Khalaghizadeh
Case No. DIR2016-0018
1. The Parties
The Complainant is De Longhi Benelux SA of Luxembourg, Luxembourg, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Mohammad Khalaghizadeh of Burbank, California, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <kenwoodworld.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 1, 2016. On July 4, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On July 5, 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 of the Respondent. Hard copies of the Complaint were received by the Center on July 7, 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 July 18, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2016. The Response was filed with the Center on August 6, 2016, and in hard copies on August 8, 2016.
The Complainant requested a suspension of the administrative proceedings for 30 days in order to explore a settlement on August 11, 2016. The administrative proceeding was suspended on August 11, 2016. On September 12, 2016, the proceeding was reinstituted at the request of the Complainant.
On September 19, 2016, the Center received a Supplemental Filing from the Complainant. The Center acknowledged its receipt, and informed the parties that it would be forwarded to the Panel, once appointed, who would have the discretion to accept or reject it.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 21, 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 the parent of the De Longhi industrial group. In 2001, the De Longhi group acquired the appliance maker, Kenwood. The Kenwood business had been founded in 1947 in the United Kingdom of Great Britain and Northern Ireland. There are over 200 models of kitchen appliances sold under or by reference to the Kenwood brand. The Complainant's Kenwood business has a presence in over 40 countries. The Complainant's registered trademarks include:
- European Union Trade Mark No. 2201424 for KENWOOD registered on December 18, 2002 for a wide range of goods in International Classes 7, 9 and 11;
- Trademark No. 136133 registered in the Islamic Republic of Iran ("Iran") for a KENWOOD figurative mark which features the word, or a representation of the word, KENWOOD in Farsi and beneath it the word KENWOOD in block capital. This trademark has been registered since October 30, 2006 for a wide range of goods in International Classes 7, 9 and 11. The Complainant refers to this figurative version as the Logotype Mark.
- International Trademark Registration No. 1182770 for KENWOOD registered from July 19, 2013 in respect of a wide range of goods in International Classes 7, 9 and 11. The International Registration designates Iran.
The Complainant also holds numerous domain names. The main domain name from which its Kenwood business is conducted is <kenwoodworld.com>.
From the Supplemental Filing, it appears that in 2005 the Complainant appointed a Mr. Shahidi to "represent" its Kenwood brand products in Iran. That arrangement was terminated with effect from January 16, 2012. More recently, the Complainant has appointed a new business to distribute its products in Iran.
The Respondent has a lengthy history operating distribution and retail businesses in Iran. According to the Respondent, he was appointed by Mr. Shahidi to distribute the Complainant's Kenwood products in Iran. According to the Response, the Respondent's business has increased the sales of the Complainant's Kenwood brand products in Iran by 600 percent.
The disputed domain name was registered in 2010. It was initially registered in the name of the Respondent's technical representative, but was transferred into the Respondent's name in 2014. It appears that the website to which the disputed domain name resolves has been used only to offer for sale the Complainant's Kenwood brand products and to provide after sales services for those products.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 has been registered or is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Before proceeding to the substance of the dispute, the Panel needs to rule on the admissibility of the Complainant's Supplemental Filing.
Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response.
Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) empowers the Panel to determine the admissibility, relevance materiality and weight of the evidence.
The Panel notes that the Respondent has not objected to receipt of the Supplemental Filing. More importantly, the Supplemental Filing can be reasonably characterised as responding to matters raised in the Response. The Panel, therefore, will include the Supplemental Filing in the record for this proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.2.1
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
As summarized in Section 4 above, the Complainant has proven ownership of registered trademarks for KENWOOD and, specifically in Iran, the KENWOOD Logotype Mark.
The disputed domain name differs from the Complainant's trademark by the addition of the word "world" and the country code Top Level Domain ("ccTLD"), ".ir".
Disregarding the ".ir" ccTLD, the disputed domain name is plainly confusingly similar to the Complainant's trademarks and this is fairly conceded by the Respondent. The descriptive term "world" serves only to reinforce the indication that the disputed domain name is associated with the owner of the trademark "Kenwood".
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview 2.0.
The disputed domain name is plainly not derived from the Respondent's name. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. As noted above, in its Supplemental Filing the Complainant admitted it had appointed Mr. Shahidi to "represent" its Kenwood brand in some manner in Iran. The Complainant contends that this appointment did not permit Mr. Shahidi to use the Complainant's trademarks or to delegate or sub-license his rights without the prior approval of the Complainant. It follows that the Complainant claims it did not authorise Mr. Shahidi to authorise the Respondent to use the Complainant's trademarks. The Complainant then contends that the use made by the Respondent of the disputed domain name does not qualify as a bona fide use in accordance with the principles in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. These principles have been accepted as applicable under the Policy. See, e.g., AB Electrolux v. Far Kalaye Pars Co., WIPO Case No. DIR2015-0002.
So far as the materials submitted by the parties indicate, it appears that the Respondent is actually offering goods from the website and there is no credible suggestion that the Respondent is offering goods other than genuine Kenwood brand products from the website. Nor, as the Respondent points out, does the Respondent's registration of the disputed domain name foreclose the Complainant from registering a domain name based on or featuring its trademark. The real point of contention is whether or not there has been an adequate disclaimer about the nature of the Respondent's relationship or, as the Complainant puts it, absence of a relationship.
The website to which the disputed domain name resolves features very prominently the Complainant's Logotype Mark (or the Farsi portion of it) and, as one might expect, numerous images of the Complainant's Kenwood brand products. There is no express statement indicating that the Respondent is not an official licensee or authorised distributor on the Respondent's website. The Respondent instead invokes the disclosures on the "About us" and "Rules and Regulations" pages of the website.
According to the English translation of the relevant pages provided by the Respondent, the "About us" page consists of about one and a half pages of text. It states (amongst other things):
"Kenwood Internet Store has commenced its activity in Iran in 2010, as subsidiary of Kenwood Home Appliances Distribution Network.
Ken Online System is formed based on specialization and experience of selling Kenwood Products, so we are only obliged to sell Kenwood Products. Offering only a single brand by our system is an evidence of our specialization in this area.
All rights of Ken Online Site belong to Nakhl Store, having trade license No.2960, under coverage of Supreme Council of Supervision on the State Guild Organizations."
The "Rules and Regulations" page includes the following statements:
"*Kenwoodworld, Ken Online & Kenwood Online Shop have been used in this document interchangeably.
All contents of Ken Online site belongs to Nakhl Store, holder of trade license No.2960, under coverage of Supreme Council of Supervision on Guild Organization. Using contents of Kenwoodworld by sites and personal weblogs is authorized, provided that the source or site address is stated; otherwise, owners of Ken Online are authorized to prosecute through legal authorities."
Thus, both pages do identify that the website is owned by "Nakhl Store". The relationship, if any, between Nakhl Store (or the Respondent) and the Complainant is not explained.
The Respondent's website is not identical to the Complainant's website. It does have, however, a similar feel or appearance, in particular a "clean" uncluttered presentation against a white background. The Respondent's website itself, given the prominent use of the Complainant's Logotype Mark and the form of presentation of the products on offer does convey the appearance of being an official or authorised website or could easily be mistaken for that. Under the way UDRP panels have applied the Oki Data criteria, the Panel concludes the website does not disclose the nature of the Respondent's relationship to the Kenwood brand and the Complainant sufficiently clearly. On the contrary, the description of who the Respondent is could be regarded as misleadingly suggesting that the Respondent is a subsidiary of the owner of the Kenwood "brand". Further, the explanation of the lack of their relationship should be much more prominent and, as the Complainant contends, not buried away on the "About us" or "Rules and Regulations" pages.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered or Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been either registered or used in bad faith by the Respondent. As with a number of dispute resolution policies adopted for some ccTLDs, this is different to the requirement under the UDRP where both registration and use in bad faith must be proved. Under the Policy, it is sufficient to show only registration in bad faith or use in bad faith. It is not necessary to establish both. See, e.g., Hewlett-Packard Company v. Tehran Falnic Company, WIPO Case No. DIR2009-0002.
Generally speaking, a finding that a domain name has been registered or is being used in bad faith requires an inference to be drawn that the respondent in question has registered or is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
There cannot be any doubt that the Respondent was aware of the Complainant's trademark when the disputed domain name was registered. The Respondent himself admits to having been deeply and successfully involved in mass distribution and retailing of household appliances in Iran since 1991. The website was also set up expressly to distribute the Complainant's Kenwood brand products.
As noted above, the Respondent says he engaged in all of this activity with the express authorization of Mr. Shahidi. There is a dispute about this as the Complainant appears to deny this. Despite some misgivings about both the timing and the frankness of the disclosures made by the Complainant, it is unnecessary for the Panel to make a decision on that aspect of the case. The fact is that Mr. Shahidi's relationship with the Complainant was terminated from January 16, 2012. Whatever authority he had, if any, ended. The Respondent, however, has continued to use the Complainant's trademarks very prominently and, in circumstances where the Respondent has not made adequate disclosure of the nature of its relationship to the Complainant, without rights or legitimate interests under the Policy. The Respondent's continued use, without adequate disclosure of the nature of its relationship to the Complainant in these circumstances constitutes use in bad faith under the Policy. See, e.g., Aktiebolaget Electrolux v. Mohammad Aghakhani, WIPO Case No. DIR2014-0008.
Accordingly, the Panel finds the Complainant has established the third requirement under 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 <kenwoodworld.ir> be transferred to the Complainant.
Warwick A. Rothnie
Date: October 5, 2016
1 Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy ("UDRP") the Panel refers to the UDRP jurisprudence and principles where appropriate.