WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wirtgen Group Holding GmbH v. Abkouh

Case No. DIR2017-0009

1. The Parties

The Complainant is Wirtgen Group Holding GmbH of Windhagen, Germany, represented by Saba & Co. Intellectual Property s.a.l. (Offshore) Head Office, Lebanon.

The Respondent is Abkouh of Tehran, Islamic Republic of Iran, internally represented.

2. The Domain Names and Registrar

The disputed domain names <hamm.ir>, <vogele.ir> and <wirtgen.ir> are registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2017. On the same date, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain names. On March 5, 2017, 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 March 8, 2017.

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 March 14, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2017. The Respondent did not submit a Response. Accordingly, on April 4, 2017, the Center notified the Respondent's default. The Respondent sent emails to the Center on April 4, 10, 12, 16, and 19, 2017, explaining its default by reference to a national holiday, questioning the jurisdiction of the Panel, and subsequently seeking a further two weeks in which to file a Response.

The Center appointed Alan L. Limbury as the sole panelist in this matter on April 12, 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.

On April 20, 2017 the Center communicated to the Parties the Administrative Panel Procedural Order No.1 made by the Panel that day, allowing the Respondent two additional weeks (the period it sought) to make a substantive submission in response to the Complaint; requesting the Complainant to submit a copy of the Registration Agreement within one week; and extending the due date for the Panel's decision to May 11, 2017.

The Complainant submitted a copy of the Registration Agreement to the Center on April 21, 2017.

The Respondent submitted a Response on May 1, 2017.

On May 9, 2017, on behalf of the Panel, the Center requested the Respondent to provide, by May 13, 2017, translations into English of certain parts of Annex 6 to its Response; gave the Complainant the opportunity to respond to the Respondent's translations by May 17, 2017; and extended the decision due date to May 22, 2017.

The Respondent provided translations on May 9, 2017. The Complainant responded by providing its own translations on May 11, 2017 together with a Supplemental Submission.

4. Factual Background

The Complainant, Wirtgen Group Holding GmbH, is the sole shareholder of Wirtgen Road Technologies GmbH which, in turn, is the sole shareholder of each of Wirtgen GmbH, Joseph Vögele AG and Hamm AG. The Complainant also owns 98 percent of the shares in Wirtgen Qeshm Ltd., an Iranian company. The Wirtgen group offers machinery for roadbuilding, mining and the production of asphalt.

Wirtgen GmbH is the registrant of the trademark WIRTGEN in many countries, including Germany, No. 988231 registered on July 26, 1979 and the Islamic Republic of Iran, International registration No. 770482, registered on October 20, 2001. Joseph Vögele AG is the registrant of the trademark VÖGELE in many countries, including Germany, No. 884030 registered on August 5, 1971 and the Islamic Republic of Iran, International registration No. 450098, registered on December 11, 1979. Hamm AG is the registrant of the trademark HAMM in Germany, No. 2075236 registered on August 18, 1994 and the Islamic Republic of Iran, International registration No. 1298968, registered on December 18, 2015. Wirtgen Qeshm Ltd. is the registrant of the trademark WIRTGEN and design in the Islamic Republic of Iran, No. 185644 registered in 2011.

The Respondent's representative, who owns the majority of the shares in the Respondent, is a former sales representative of Wirtgen Qeshm Ltd. in the Islamic Republic of Iran. Each of the disputed domain names was registered by the Respondent on August 30, 2011. They resolve to the Respondent's website "www.abkouh.com", which offers the Complainant's products and prominently displays the WIRTGEN, VÖGELE and HAMM trademarks, as well as the Wirtgen Group logo:

5. Parties' Contentions

A. Complainant

The Complainant submits that it is appropriate for it to file this Complaint because all the companies are under its common control.

It says each of the disputed domain names is identical or confusingly similar to a trademark in which the Complainant has rights (through its control of its subsidiaries) and that the Respondent has no rights or legitimate interests in respect of the disputed domain names, which were registered and are being used in bad faith.

As to legitimacy, the Complainant says there is no evidence in the WhoIs of the disputed domain names that the Respondent has used, or made demonstrable preparations to use, the disputed domain names or a name corresponding to a disputed domain name in connection with a bona fide offering of goods and services; or been commonly known by the disputed domain names; or made legitimate and noncommercial or fair use of them (or given an explicable reason as to why the Respondent chose them) without intent to mislead consumers or harm the reputation of the Complainant's marks.

Because the disputed domain names solely incorporate the Complainant's registered trademarks and are automatically redirected to the "www.abkouh.com" website, which displays those trademarks and the Wirtgen Group logo, the Complainant says the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. The adoption of a domain name that is essentially identical to or does not distinguish itself from another's trade mark will involve an impermissible impersonation of the trade mark owner. See Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227.

Accordingly there is no doubt that at the time of the disputed domain names' registration, the Respondent was fully aware of the Complainant's trademark rights in the Islamic Republic of Iran.

Further, the right to resell products does not create the right to use a mark more extensively than required to advertise and sell the product. The use of a mark as a domain name clearly goes further than what is required merely to resell products. See Motorola, Inc. v NewGate Internet, Inc., WIPO Case No. D2000-0079.

The sales representation agreement, which expired in 2015 and was not renewed, did not authorise the Respondent to use the trademarks HAMM, WIRTGEN and VÖGELE as domain names. The Respondent has refused a request by the Complainant to transfer the disputed domain names.

As to registration in bad faith, the Complainant says the Respondent was a former sales representative of Wirtgen Qshem Ltd. The "contract expired on March 19, 2014 [sic] and was not renewed." The Complainant confirms that the Respondent is just a normal customer of Wirtgen Qshem Ltd. in Iran, as shown by an invoice dated October 24, 2016, issued from Wirtgen Qshem Ltd. to the Respondent (Annex 26). Based on the above, there is no doubt that the Respondent was aware of the Complainant's marks and registered the disputed domain names in bad faith.

As to use in bad faith, the Complainant says the disputed domain names are all redirected to the Respondent's website at "www.abkouh.com" which incorporates only the Complainant's trademarks, thereby misleading consumers into believing that they were using the Complainant's domain names and entering its website.

Annex 28 shows that the Respondent is announcing on the "www.abkouh.com" website that it is the official representative of the Complainant's subsidiary in the Islamic Republic of Iran, while in fact it is not since 2015. There is no doubt that the Respondent clearly intends to trade on the Complainant's name to generate further profit by redirecting consumers to that website. This further proves that the offering of goods was not done bona fide as the Respondent did not accurately disclose the registrant's relationship with the trademark owner. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The use on the Respondent's website of the Wirtgen Group logo trademark would further mislead website visitors regarding the relationship between the Respondent and the Complainant.

The Complainant says the above facts show the Respondent registered and is using the disputed domain names in bad faith to redirect Internet users to its website for commercial gain, citing BPG SRL v. Liqian Hunanchangsha, WIPO Case No. D2016-0215.

The Complainant seeks the transfer to it of the disputed domain names.

B. Respondent

The Respondent submits that it and its representative should together be regarded as the Respondent. On this basis the Respondent says it has been offering the Complainant's goods and services since 2003 as a sales representative and since 2008 as a registered dealer of the Complainant's subsidiary, Wirtgen Qeshm Ltd. By agreement in 2010, the Respondent ceased sales of new Wirtgen, Hamm and Vögeler machinery and concentrated on used machines, parts and after sales services.

The use of the trademarks HAMM, WIRTGEN and VÖGELE by the Respondent was approved in 2008 by the Complainant's Iranian subsidiary.

Through customary notations which remain on its website, the Respondent says it distinguished itself from the trademark owner in English as well as in the Persian language. The website content is designed in Persian so that Iranian visitors can easily tell that they are about to visit a dealer (the Respondent) as distinct from the subsidiary or the manufacturer(s). The content remains the same, still demonstrating only the Complainant's products in Persian, that were previously exported to the Respondent (as dealer) and the Complainant's subsidiary in the Islamic Republic of Iran.

The Respondent says it is commonly known in the Islamic Republic of Iran as the Complainant's dealer and is registered with various Governmental and non-governmental organizations in the Iranian construction machinery market.

The Complainant's contentions on redirection of the disputed domain names to the "www.abkouh.com" website are unpersuasive because "www,abkouh.com" is the trade name of the Respondent which used to be the authorized dealer. The "www.abkouh.com" website maintains the same content from the disputed domain names, ensuring long term benefits to the trademark owner through contact with prospects and visitors, so this brings the necessary transparency to the Respondent's business through the disputed domain names.

The Respondent does not deny the apparent similarity between the disputed domain names and the incorporated marks but says it never conducts any business affairs as mentioned in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 involving abuse of the respective trademarks.

The Respondent seeks denial of the Complaint and a finding of Reverse Domain Name Hijacking.

C. Complainant's Supplementary Submission

The Complainant made a Supplementary Submission as well as providing the requested translation. The Rules, paragraph 12 provide that, in addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties. The Panel takes note of the Complainant's translation and that part of the Complainant's Supplementary Submission which denies the Respondent's claim of Reverse Domain Name Hijacking but otherwise declines to receive that Submission.

6. Discussion and Findings

Since the Respondent initially questioned the jurisdiction of the Panel, it is appropriate to note that the .irDRP applies to each of the disputed domain names by virtue of paragraph 8 of the registration agreement, "Terms and Conditions for the Registration of an Internet Domain Name (under .ir)", which provides that the Registrant agrees to be bound by the .irDRP which is incorporated into that agreement by reference and made a part thereof.

Paragraph 4(a) of the .irDRP provides:

"You are required to submit to a mandatory administrative proceeding in the event that a third party (a 'complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that

i. your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

ii. you have no rights or legitimate interests in respect of the domain name; and

iii. your domain name has been registered or is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three Elements is present."

The Center is the only Provider appointed by IRNIC. Accordingly the Panel, duly appointed by the Center, has jurisdiction to determine this Complaint.

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.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the HAMM, WIRTGEN and VÖGELE trademarks registered by its subsidiaries. In this respect the Policy does not differ from the Uniform Domain Name Dispute Resolution Policy ("UDRP").¹ See Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796. See also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.8:

"In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP."

Each of the disputed domain names comprises in its entirety a trademark in which the Complainant has rights, save for the absence of the umlaut from the domain name <vogele.ir> and the addition in each case of the ".ir" country code Top-Level Domain, neither of which is of material significance. Accordingly the Panel finds that each of the disputed domain names is identical or confusingly similar to a trademark in which the Complainant has rights.

The Complainant has established this element.

B. Rights or Legitimate Interests

Paragraph 4(c) of the irDRP provides:

"… Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

1. before any notice to you 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 Panel finds that the HAMM, WIRTGEN and VÖGELE marks are distinctive and widely known. The Complainant's assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the disputed domain names on the part of the Respondent. As under the UDRP, the evidentiary burden therefore shifts to the Respondent to show that it does have rights or legitimate interests in the disputed domain names. See, e.g., Dr. Ing. h.c. F. Porsche AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0002 and Inter IKEA Systems BV (IISBV) v. Abbas Ghaffarian, WIPO Case No. DIR2016-0011.

The Respondent provides a translation of the Official Sales Representative Contract dated March 21, 2013, by which Wirtgen Qeshm Ltd. granted the Respondent full and exclusive trade rights for Wirtgen Group, Fogel [sic] and Ham [sic] road construction machinery spare parts and accessories. Article 3 provided:

"Duration of the present contract is from March 21, 2013 until March 20, 2015 for a period of two solar calendar years which will be extended every year by the day based upon agreement of the parties. It must be noted that the obligations remaining towards customers from the parties of the contract will not terminate upon termination of the contract."

The Respondent says it is commonly known in the Islamic Republic of Iran as the Complainant's dealer. The Panel takes this to mean that the Respondent is commonly known as Abkouh, not that it is commonly known by any of the disputed domain names. All the evidence provided by the Respondent of its registration with various Governmental and non-governmental organizations in the Iranian construction machinery market pre-dates the expiry of the Official Sales Representative Contract. There is no evidence that the Official Sales Representative Contract was extended beyond March 20, 2015.

The Respondent annexes correspondence (Annex 3) showing a draft flyer for the Respondent depicting the HAMM, WIRTGEN and VÖGELE trademarks, which was approved by the Managing Director of Wirtgen Qeshm Ltd. Comments on the draft from Wirtgen GmbH by Telefax to the Respondent dated March 12, 2008 included:

"When everything is done, you will have some more space on the page and the space between Voegeler, HAMM WIRTGEN Logo and the text above and below can be a little bit more."

The Panel concludes that in 2008 the use by the Respondent of the trademarks HAMM, WIRTGEN and VÖGELE for advertising purposes was approved by the Complainant's Iranian subsidiary.

The current content of the Respondent's website at "www abkouh.com", to which the disputed domain names resolve, bears a 2010 copyright notice, indicating that the display of the Complainant's trademarks commenced while the Respondent was an authorized dealer.

Those parts of the Respondent's website on which the Respondent relies in support of its contention that Iranian visitors can easily tell that they are about to visit a dealer (the Respondent) as distinct from the subsidiary or the manufacturer(s) read:

1. "ABKOUH.COM sales and service" (in English);

2. "Abkouh Geno Private Joint Stock" (in translation);

3. "Welcome to Abkouh" (in English);

4. "Copyright 2010 Abkouh.com. Design by Vahid Jahani" (in English);

5. Registered sales and supporting service dealer to Wirtgen Group (Iran South)" (in translation);

6. "Wirtgen Vogele and HAMM [official] Genuine parts center" (in translation);

7 "Dealer sales and service center Add in Tehran Spare parts market" (in translation).

The Complainant agrees with the Respondent's translation of item 6 in this list but translates item 5 as:

"Official representative of sale and supporting services to Virtgen [sic] Group (South)".

Irrespective of the differences in translation, the overall representation conveyed by the Respondent's website is that Respondent is presently an authorized, official dealer in genuine WIRTGEN, VÖGELE and HAMM parts, sales and service. The Respondent accepts that it used to be the Complainant's authorized dealer, while the Complainant confirms that the Respondent is presently a normal customer of Wirtgen Qshem Ltd. In the Islamic Republic of Iran (Annex 26).

Accordingly it appears that the Respondent registered the disputed domain names in 2011 in order to perform the functions of an authorized dealer and, since the Official Sales Representative Contract expired in 2015, has continued to use the disputed domain names as a normal customer of Wirtgen Qshem Ltd. in order to perform the functions of an unauthorized dealer. There is no evidence that the Respondent has been dealing in or promoting any products other than those of the Complainant.

Paragraph 2.3 of the WIPO Overview 2.0 provides:

"Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to 'corner the market' in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles..."

The reference to Oki Data principles is to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Oki Data precedent has been followed under the irDRP: see AB Electrolux v. Far Kalaye Pars Co., WIPO Case No. DIR2015-0002 and De Longhi Benelux SA v. Mohammad Khalaghizadeh, WIPO Case No. DIR2016-0018.

The Complainant cites Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227. The disputed domain name in that case was <unofficialblackberrystore.com>. The panelist said:

"6.18. This Panel believes that in a case where the domain name used by a distributor is essentially identical to a trade mark (or a domain name that incorporates a trade mark without some distinguishing feature) then it is strongly arguable that there are no rights or legitimate interests (and there is also bad faith) even if the Oki Data requirements might be satisfied.

6.19. […] The rationale for this approach is that the intentional adoption of a domain name that is essentially identical to or does not distinguish itself from another's trade mark will involve an impermissible impersonation of the trade mark owner."

The Respondent does not deny the apparent similarity between the disputed domain names and the incorporated marks but says it never conducts any business affairs as mentioned in Research in Motion Limited v. One Star Global LLC, supra, involving abuse of the respective trademarks. The website to which the domain name resolved in that case offered both the complainant's Blackberry goods and the goods of others.

It appears to this Panel that the Respondent's website does actually offer the Complainant's goods and is used to sell only the Complainant's trademarked goods. However, since the expiry of the Official Sales Representative Contract in 2015, when the Respondent ceased to be an authorized dealer, its website does not accurately and prominently disclose the registrant's relationship with the trademark holder. Instead, it continues to represent that it is the website of an authorized dealer in the goods of the Wirtgen Group. Accordingly, although the Respondent might have had a legitimate interest in the disputed domain names while it was an authorized dealer, the current site's failure accurately and prominently to disclose the Respondent's relationship with the trademark holders means that the Respondent has failed to establish that, as at the date when the Complaint was filed, it is using the disputed domain names in connection with a bona fide offering of goods or services.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant has established this element.

C. Registered or Used in Bad Faith

Whereas the UDRP requires proof of both registration in bad faith and use in bad faith, the irDRP requires proof of registration in bad faith or use in bad faith.

Paragraph 4(b) of the irDRP provides that, for the purposes of paragraph 4(a)(iii), certain circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and [sic] use of a domain name in bad faith. The Complainant relies on sub-paragraph 4(b)(iv):

"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

The decision in BPG SRL v. Liqian Hunanchangsha, WIPO Case No. D2016-0215, cited by the Complainant, is not persuasive because the domain name in that case was being used to redirect users to a competitor of the Complainant. In the present case the disputed domain names are being used to direct users to a reseller of the Complainant's goods.

The disputed domain names were registered at a time when the Respondent was an authorized dealer in the Complainant's goods, with approval to display the Complainant's trademarks on a flyer for its business. Under these circumstances, the Panel is not satisfied that the disputed domain names were registered in bad faith.

Since the Respondent ceased to be an authorized dealer, however, it has continued to represent on the website to which the disputed domain names resolve, by prominent depiction of the Complainant's trademarks and group logo and by the statements made, that it is an authorized dealer. As in the case of HID Global Corporation v. Ali Amir Aslankhan, WIPO Case No. DIR2017-0002, it seems likely that the use of the Complainant's group logo and the WIRTGEN, VÖGELE and HAMM trademarks would cause people to assume the website at the disputed domain names is endorsed by the Complainant.

Accordingly the Panel finds that the Respondent is using the disputed domain names intentionally to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's marks as to the sponsorship, affiliation, or endorsement of its website. This is so despite the fact that the Respondent is offering genuine goods of the Complainant which it purchases from the Complainant's Iranian subsidiary.

The Panel concludes that the Respondent is using the disputed domain names in bad faith.

The Complainant has established this element.

7. Reverse Domain Name Hijacking

Since the Complainant has established all the elements required to entitle it to the relief which it seeks, there is no basis for a finding of Reverse Domain Name Hijacking.

8. Decision

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 <hamm.ir>, <vogele.ir> and <wirtgen.ir> be transferred to the Complainant.

Alan L. Limbury
Sole Panelist
Date: May 13, 2017

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.