WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
D'Addario & Company, Inc. v. Shahnam Ghasedi
Case No. DIR2016-0042
1. The Parties
The Complainant is D'Addario & Company of Farmingdale, New York, United States of America ("USA"), represented Squire Patton Boggs (US) LLP, USA.
The Respondent is Shahnam Ghasedi of Tehran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <daddario.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 December 22, 2016. On December 23, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On December 25, 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 December 28, 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 January 4, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2017. On January 25, 2017, the Center notified the Respondent's default.
The Center appointed Dawn Osborne as the sole panelist in this matter on February 9, 2017. 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 manufacturer of musical instrument strings and other musical equipment and accessories. It has been in business for over 40 years and has a web site at "www.daddario.com". It owns the registered trade mark D'ADDARIO registered in 1978 in the USA and has used this mark since at least 1974.
The Domain Name has been attached to a web site selling D'Addario products which uses the Complainant's name and logo trade marks prominently across the top of the pages of the Respondent's site, looks very much like the official site of the Complainant and which has copied sections of the Complainant's site albeit that these are then translated into the Farsi language.
The Domain Name was registered on July 26, 2014.
5. Parties' Contentions
The Complainant is a family owned manufacturer of musical instrument strings and other musical equipment and accessories. It has been in business for over 40 years and has a web site at "www.daddario.com". It owns the registered trade mark D'ADDARIO registered in 1978 in the USA and has used this mark since at least 1974.
The Complainant did not authorise the Respondent to register the Domain Name or use the Complainant's mark.
The Respondent's web site attached to the Domain Name offers for sale D'ADDARIO branded products. The Respondent registered the Domain Name to intentionally and misleadingly divert Internet users to the Respondent's web site and to buy products from the Respondent under the false pretence that the Respondent's web site is sponsored or endorsed by or is affiliated with the Complainant. The web site displays the Complainant's name and logo as a banner across the top of the pages of the Respondent's web site. The Complainant's PLANET WAVES trade mark and other trade marks are also featured on the Respondent's web site.
The Domain Name registered in 2016 incorporates the whole of the Complainant's D'ADDARIO mark and is identical to the mark save for the ".ir" country code Top-Level Domain ("ccTLD"). The Respondent copied material from the Complainant's web site and used it on the Respondent's web site attached to the Domain Name after translation into the Farsi language including an "About D'Addario" section that gives the history of the Complainant in New York and a page about how to identify counterfeit products. This is not a legitimate noncommercial or fair use.
The Complainant did not grant the Respondent any rights or legitimate interests in respect of the Domain Name or the Complainant's trade mark. The Complainant has not authorised the Respondent to sell any of the Complainant's products and does not know if they are genuine or counterfeit. The Respondent has not been commonly known by the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Identical or Confusingly Similar
The Complainant is a manufacturer and provider of musical instrument equipment and products and is the owner of the D'ADDARIO trade mark in the USA for its products with first use in commerce recorded as 1974.
The Domain Name consists of a name identical to the Complainant's registered mark D'ADDARIO save for the omission of the punctuation mark after the D which is not representable in a domain name and the addition of the ccTLD ".ir" which is generally disregarded for purposes of comparison under the Policy. Accordingly, the Panel finds that the Domain Name is for practical purposes identical to a mark in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
It is clear from the content of the site that the Respondent is aware of the significance of the name "D'ADDARIO" as the site attached to the Domain Name uses the Complainant's name and mark in its logo form. The usage is not fair as the site uses the Complainant's name and logo as a masthead on its web site pages and has copied sections from the official site of the Complainant, but does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use confusing. As such it cannot amount to the bona fide offering of goods or services. The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant's name and logo in this fashion. As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration or Use in Bad Faith
The content of the Respondent's web site makes it clear that he is aware of the Complainant's rights. It seems clear that the use of the Complainant's trade mark as a Domain Name, with the Complainant's name and logo as used by the Complainant as a masthead across the top of the pages of the Respondent's web site in imitation of the Complainant's official web site and use of sections copied from the Complainant's site about the Complainant's history in New York including the same image for that page copied from the Complainant's site on the web site at the Domain Name will lead members of the public to believe that the Respondent's web site is that of the Complainant and not merely that of a reseller. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site satisfying paragraph 4(b)(iv) of the Policy.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb 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 Domain Name <daddario.ir> be transferred to the Complainant1.
Date: February 17, 2017
1 Alternatively, if that is not possible under the .ir Rules that the Domain Name be cancelled.