WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Council of Shopping Centers, Inc. v. Mehdi Montakhabi
Case No. DIR2016-0029
1. The Parties
The Complainant is International Council of Shopping Centers, Inc. of New York, United States of America, represented by Scoolidge Kleiman, LLP, United States of America.
The Respondent is Mehdi Montakhabi of Tehran, Islamic Republic of Iran, self-represented.
2. The Domain Name and Registrar
The disputed domain name, <icsc.ir> (the “Domain Name”), is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2016. On September 19, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On September 21, 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 September 20, 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 September 22, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2016. Three separate submissions from Farzaneh Azadasl, Parizad Corporation (“Parizad”) and Avadis Mall Solutions (“Avadis”) were filed on October 11, 2016. The Response from Mehdi Montakhabi was filed with the Center on October 11, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 18, 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.
The Complaint cited three respondents, namely Parizad, its Managing Director, Dr. Farzaneh Azadasl, and Mehdi Montakhabi, the person identified by the Registrar as the registrant of the Domain Name and the person in whose name the Response was filed. Parizad and Dr. Farzaneh Azadasl have presented separate submissions in which they basically inform that they do not have ownership or control of the Domain Name and that they are not the proper respondent. While the Panel approaches this case on the basis that Mehdi Montakhabi is the appropriate Respondent, the activities of other parties directly or indirectly concerned with usage of the Domain Name will be addressed.
4. Factual Background
The unchallenged evidence of the Complainant is that it is a trade organization established in 1957 for the shopping center industry on whose behalf it conducts research, organizes conferences and generally provides educational and information services for its members.
The Complainant owns the trade mark ICSC, which is registered at the United States Patent and Trade Mark Office under No. 2,893,230 dated October 12, 2004 for goods and services associated with its business.
The Respondent is an author with several books to his credit concerned with the fast food industry and with the management of shopping centers. The Respondent registered the disputed domain name in 2015.
On or around August 8, 2016 the Complainant became aware of the Domain Name and that it appeared to be being used by Parizad to re-direct Internet users to a website at “www.mall-books.ir”.
On August 8, 2016 the Complainant’s representative wrote to Dr. Farzaneh Azadasl, Managing Director of Parizad, drawing the latter’s attention to the Complainant’s rights in respect of the ICSC trade mark and seeking inter alia either transfer or cancellation of the Domain Name.
Dr. Farzaneh Azadasl responded on August 11, 2016, seeking further information as to the Complainant’s rights, undertaking not to use the Domain Name in relation to any goods or services similar to the Complainant’s goods and services, but declining to agree to any transfer or cancellation of the Domain Name, stating that Parizad does not have ownership of the Domain Name.
On August 19, 2016 the Complainant’s representative wrote to Dr. Azadasl noting that steps had been taken to disable the Domain Name and requesting that further steps be taken to cancel the Domain Name.
The Panel has now visited the Respondent’s website. The Domain Name links briefly to a page indicating that the Domain Name has been sold and then redirects to a website at “www.fastfoodbook.ir”, available in Farsi and English operated by Parizad and promoting a book by the Respondent claiming “to provide a comprehensive picture of all aspects of the Iranian Fast Food Industry to investors and entrepreneurs that intend to develop their businesses”. In the English version of the website, a section headed “About The Publisher” reads:
“Parizad is one of the SBUs of Avadis Holding Group; Providing Mail innovatine commercialization management and consultancy services. Parizad is the first knowledge-based corporation in knowledge leadership for Shopping Center Management, Retails Brands and related industries in Iran. We are not only a leading book publisher for authors around world who are interested in being in IRAN marketplace but also develop and fulfill national educational needs to improve Iranian Shopping Mall industry productivity and efficiency(…)”.
Avadis has a website at “www.mall-solutions.ir”. Under the heading of “News” the website had the following statement1 :
“Avadis Mall solutions is the provider of comprehensive services for multi-function commercial complexes and international retail brands in Iran. Our services are delivered under international standards with an eye to local conditions and in close cooperation with the Iran Council of Shopping Centers (IRISC) and International Council of Shopping Centers (ICSC).”
This message no longer appears on that website; however, the homepage now features a message reading:
“Regarding icsc representative team email to us; hereby, Avadis Mall Solutions informs its customers & networks that despite of its managers and advising team members’ mecsc membership, we are not interested in being misunderstood by anyone to be related with mecsc and icsc except than the mentioned membership.”
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is identical to its ICSC registered trade mark, that the Respondent has no rights in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
B. Respondent
The Respondent denies the Complainant’s contentions. He is a prolific author and lists fifteen books that he has had published, most of them dealing with fast food and at least one of them concerned with the management of shopping centers.
The Respondent produces evidence to show that as of July 2011 the Domain Name was owned by the Isfahan Computer Services Council. He contends that it was then owned by a number of other registrants prior to his acquisition of it in 2015. His explanation for having acquired the Domain Name is as follows:
“My books publication policy is that all the original Books has as its websites and sponsors, for all these 4 years which I was involved in preparing the book ‘Successful Marketing Strategies for High-Tech Firms’, I tried to find a good domain name for it and after a long time I found a suitable one: [the Domain Name] which was used by Isfahan Computer Services Council (ICSC) for years in ICT field and finally I purchased it in 2015.”
He then goes on to explain that he contacted Parizad as the sponsor of his books with a view to getting Parizad’s permission, pending completion of his website for his book, to re-direct the Domain Name to their website at “www.mall-books.ir” so that it did not remain inactive. However, in August 2016 Parizad informed him that they were not willing to permit continued re-direction of the Domain Name as they had received complaints from the Complainant’s representative.
The Respondent complains that the Complaint was launched without any advance warning to him. He states that the Domain Name is a suitable one for him as it was previously used in the field of Information and Communications Technology (“ICT”) by its original owner and his book “Successful Marketing Strategies for High-Tech Firms” for which the Domain Name was acquired is also concerned with the field of ICT.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered or is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the letters “icsc”, which in capitalized form constitutes the Complainant’s trade mark ICSC, and the “.ir” country code Top-Level Domain (“ccTLD”) identifier. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for panels to ignore the ccTLD identifier where it serves no purpose other than a generic technical purpose having no impact on the distinctiveness of the disputed domain name at the second level.
Thus the comparison is ICSC with “icsc” and the Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s ICSC trade mark.
C. Rights or Legitimate Interests
As indicated in section 3 above, there were three entities named as respondents in the original complaint. The Complainant contends that none of them has any relevant right or legitimate interest on the basis that none of them is using the Domain Name for any bona fide offering of goods or services, none of them is known by the Domain Name or anything similar to it and none of them is making a legitimate noncommercial or fair use of the Domain Name.
The Complainant contends that the Domain Name features its primary trade mark, yet the Complainant has granted no permission to anyone to use its trade mark for the Domain Name. Additionally, the Complainant points out that the website to which the Domain Name re-directs is concerned with shopping centers, which is its area of interest. Indeed, as set out in section 4 above, the website of an associated company of Parizad, Avadis, makes express reference to the Complainant by reference to the acronym “ICSC” and its international standards.
The Panel finds on the evidence before it that the Complainant has made out a prima facie case under this element of the Policy, a case calling for an answer from the Respondent.
The only one to have claimed any right or legitimate interest in respect of the Domain Name is the Respondent Mehdi Montakhabi, the other two respondents named in the Complaint, having expressly disavowed any such right or legitimate interest.
The Respondent contends that he has a legitimate interest in respect of the Domain Name because he acquired it to promote his book “Successful Marketing Strategies for High-Tech Firms”, which is a book concerned with ICT and an earlier owner of the Domain Name, Isfahan Computer Services Council, used the Domain Name in the same field.
The Panel is not impressed by that argument. What is required is a justification for the Respondent’s use of the letter combination, “ICSC”. However “ICSC” is not the acronym of the title of his book “Successful Marketing Strategies for High-Tech Firms” and the Respondent is not commonly known by the Domain Name and, on the evidence before the Panel, “ICSC” is not an acronym for anything associated with the Respondent.
The Respondent has failed to rebut the Complainant’s prima facie case. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered or Used in Bad Faith
On or around August 8, 2016 the Complainant became aware of the Domain Name and that it appeared to be being used by Parizad to re-direct Internet users to a website at “www.mall-books.ir”.
While Parizad disclaimed any right or interest in respect of the Domain Name when first written to by the Complainant’s representative, it did nonetheless acknowledge that it was using the Domain Name and, as is evident from its “www.mall-books.ir” and “www.fastfoodbook.ir” websites, it has a significant interest in the subject of shopping centers. The former of those two websites describes Parizad as the publisher of SOUK, the First Iranian Retail and Shopping Centers’ Industry Magazine. It therefore operates in much the same business area as the Complainant.
Parizad’s associated company, Avadis2 , with its website at “www.mall-solutions.ir” is also heavily engaged in the field of malls and shopping centers. As can be seen from section 4 above, the website originally made reference to the Complainant and its international standards. That message has now changed following the Complainant’s representative’s letter of complaint, but the fact is that before the Complaint was launched Avadis was well aware of the existence of the Complainant, its trade mark and its international standards, which are clearly regarded as important to the industry.
As indicated in section 4 above, the Respondent is an author with several books to his credit concerned with the management of shopping centers. The Respondent has claimed he contacted Parizad as the sponsor of his books with a view to getting Parizad’s permission, pending completion of his website for his book, to re-direct the Domain Name to Parizad’s website at “www.mall-books.ir”.
Is it conceivable that the Respondent was unaware of the Complainant? The Panel is satisfied on the evidence before it that the Respondent, who is clearly a prolific writer in the field of fast food outlets and shopping centers and closely associated with Parizad, was aware of the Complainant and its trade mark ICSC and acquired the Domain Name for that significance and with the Complainant in mind when it became available. The Respondent has subsequently permitted his sponsor to make use of the Domain Name to re-direct Internet users to Parizad’s website at “www.mall-books.ir”.
The Panel believes it likely that Internet users, on seeing the Domain Name, would believe it to be a domain name of or authorized by the Complainant. Clearly, those engaged or wishing to engage in the industry in the Islamic Republic of Iran will have been aware of the Complainant and its trade mark. Were it otherwise the Avadis website would have had no reason to make any mention of it.
The Panel finds that the Domain Name has been registered in bad faith and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <icsc.ir>, be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: October 21, 2016
1 The Complainant has provided evidence of this earlier content of Avadis’ website. This section of the Avadis’ website was not present when the Panel visited it on October 20, 2016.
2 From the Avadis website Parizad appears to be a member of the Avadis Group of companies.