WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zeller + Gmelin GmbH & Co. KG v. Amir Daryoosh Bashiri
Case No. DIR2017-0011
1. The Parties
The Complainant is Zeller + Gmelin GmbH & Co. KG of Eislingen, Germany, represented by Maiwald Patentanwaltsgesellschaft mbH, Germany.
The Respondent is Amir Daryoosh Bashiri of Tehran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name, <zeller-gmelin.ir> (the "First Domain Name") and <divinol.ir> (the "Second Domain Name") (together the "Domain Names"), are registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2017. On April 11, 2017, the Center transmitted by email to IRNIC a request for registrar verification in connection with the First Domain Name. On April 12, 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 April 19, 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 April 21, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2017.
On April 25, 2017, the Respondent submitted an informal communication indicating that he was prepared to sell the First Domain Name and another domain name, the Second Domain Name. The Complainant requested the suspension of the proceeding on April 28, 2017, which was suspended by the Center on the same day until May 28, 2017. The suspension was subsequently extended following requests from the Complainant until June 27, 2017. On June 27, 2017, the Complainant requested the reinstitution of the proceeding and the addition of the Second Domain Name in a further submission relating the inter partes correspondence leading up to and during the period of the suspension and evidencing the Complainant's interests in respect of the Second Domain Name. The proceeding was reinstituted on June 28, 2017.
The Response due date was July 11, 2017. The Respondent did not submit any response.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 18, 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.
The Panel, having studied the case file, issued Procedural Order No. 1 on June 24, 2017, granting the Complainant's request that the Second Domain Name be added to this administrative proceeding (for further discussion on the point, see section 6B below) and inviting the Respondent to submit his comments on the addition of the Second Domain Name by 4pm (Geneva time) on July 27, 2017. On July 24, 2017, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Second Domain Name. On July 26, 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.
The Respondent did not respond to Procedural Order No. 1.
4. Factual Background
The Complainant is a German-based producer of lubricants, industrial chemicals and printing inks. It was founded in 1866 and has its operating website connected to its domain name, <zeller.gmelin.de>. It is the registered proprietor of several trade mark registrations of or including its name, one of those registrations being United States of America Registration No. 2560871 registered on April 16, 2002 (application filed February 11, 1999) ZELLER+GMELIN (word mark) in classes 1, 2 and 3 for a variety of chemicals, varnishes, printing inks, colorants, detergents, soaps and essential oils.
The Domain Names were registered on October 9, 2015 and connected to webpages indicating that a website was "coming soon".
In the course of 2015, the Complainant was negotiating through a Mr. Amin Babai, an Iranian based in Germany, for the distribution of the Complainant's products in the Islamic Republic of Iran. In October 2015 the Complainant learnt of the registration of the First Domain Name by the Respondent and asked Mr Babai if he knew of the Respondent. Mr. Babai stated that the Respondent was a business partner of his father. The Complainant then informed Mr. Babai that the negotiations were at an end in light of this unauthorized behavior on the part of the Respondent.
On August 18, 2016, the Complainant's attorneys wrote to the Respondent informing the Respondent of the Complainant's trade mark rights, observing that the Respondent had hitherto failed to accede to the Complainant's requests for cancellation or transfer of the First Domain Name and demanding that the First Domain Name be cancelled or transferred. The Complainant was not then aware of the Second Domain Name. The Respondent did not reply.
As indicated above, on April 25, 2017, following the notification of the Complaint, the Respondent submitted an informal communication indicating that he was prepared to sell the First Domain Name and another domain name, the Second Domain Name. In the ensuing correspondence between the parties the Respondent demanded EUR 6,000 for the Domain Names. The Complainant was not prepared to offer more than EUR 1,500 and indicated that the offer was not to be taken as an admission that the Respondent had any right or legitimate interest in respect of the Domain Names. The Respondent stood by his EUR 6,000 price.
The submission of the Complainant seeking the addition of the Second Domain Name demonstrates to the satisfaction of the Panel that DIVINOL is the trade mark under which the Complainant sells its automotive lubricants. The Complainant is the registered proprietor of a number of DIVINOL trade mark registrations including by way of example United Kingdom of Great Britain and Northern Ireland Registration No. 1440299 registered January 24, 1992 (application filed September 18, 1990) DIVINOL (word) in class 4 for lubricants.
5. Parties' Contentions
The Complainant contends that the Domain Names are in substance identical to its ZELLER+GMELIN and DIVINOL trade marks, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered and are being used in bad faith.
The Respondent did not reply to the Complainant's contentions by way of a formal Response, but provided an explanation for his registration of the Domain Names in an email dated April 25, 2017 reading verbatim as follows:
"Following the submission of your complaint about registration domains Zeller-gemellen.ir and Divinol.ir to be announced:
according to the laws of iran registration domains with (.ir) suffix is open to all and anyone can use any name or brand name without permission from the individuals or legal entities to register and also the exploited. And I based on Freedom of registered domains in iran i did to register these domains.
till now no action about these names on the Internet and outside it.
However, if you were interested to buy these two domain I am willing to sell and transfer both domains (Zeller-gmellen.ir and Divinol.ir), so if you would like, announce it as soon as possible.
The Panel interprets this as a contention that under the law of the Islamic Republic of Iran, the Respondent was free to register the Domain Names without the permission of the Complainant and so registered them, but has not made any use of them and is willing to sell them to the Complainant.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are 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 Names; and
(iii) The Domain Names have been registered or are being used in bad faith.
B. Preliminary Issue – the addition of the Second Domain Name.
The addition of domain names to a Complaint which has already been filed and notified to the respondent is dealt with in section 4.12.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), which reads as follows:
"4.12.2 Addition of domain names following complaint notification
Requests for addition of domain names to a complaint after it has been notified to the respondent and the proceedings have formally commenced would be addressed by the panel on appointment.
Except in limited cases where there is clear evidence of respondent gaming/attempts to frustrate the proceedings (e.g., by the respondent's registration of additional domain names subsequent to complaint notification), panels are generally reluctant to accept such requests because the addition of further domain names would delay the proceedings (which are expected to take place with due expedition). Moreover, a panel declining such request would not prevent the filing of a separate complaint where such additional domain names may be addressed.
In those cases where panels would grant such a request, the complainant would need to hold relevant trademark rights and the proposed additional domain names would need to be prima facie registered by the same or related respondent. Moreover, in the event a panel would grant such a request, it may also order partial or full re-notification of the proceeding (which may impact case timelines)."
In this case the existence of the Second Domain Name was not known to the Complainant at the time of the filing of the Complaint. Its existence was drawn to the Complainant's attention by the Respondent's email of April 25, 2017, which is quoted in full at 5B above.
The Complainant has trade mark rights in respect of DIVINOL, the Respondent is the proprietor of the Second Domain Name1, which was registered on the same day as the First Domain Name, and the Respondent clearly regards it as appropriate that the Domain Names should be dealt with together whether by way of sale (see the above-mentioned email) or under the Policy (the Respondent has not seen fit to argue the contrary despite the opportunity afforded him by Procedural Order No. 1).
In the particular circumstances of this case the Panel sees no purpose in ordering re-notification of the Complaint.
As indicated in section 3 above the Panel accedes to the Complainant's request that the Second Domain Name be added to this administrative proceeding.
C. Identical or Confusingly Similar
The First Domain Name comprises the Complainant's ZELLER+GMELIN trade mark (albeit replacing the "+" with a hyphen) and the ".ir" country-code Top Level Domain ("ccTLD") identifier. The Second Domain Name comprises the Complainant's DIVINOL trade mark and the ".ir" ccTLD identifier.
The Panel finds that the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights.
D. Rights or Legitimate Interests
The Complainant contends that the Respondent registered the Domain Names without the Complainant's permission yet knowing that they featured trade marks of the Complainant. The Complainant contends that the Respondent's purpose was to sell the Domain Names to the Complainant. The Respondent makes no denial, simply stating that under the law of the Islamic Republic of Iran he was entitled to do so, presumably on a first come first served basis. The Respondent has expressed himself willing to sell the Domain Names to the Complainant for EUR 6,000, which represents a significant profit.
The Panel is required under the Policy to adjudicate this dispute by reference to the Policy, not the law of the Islamic Republic of Iran. Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances any one of which, if found by the Panel to be proved, shall demonstrate a respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) of the Policy. They comprise (i) use or planned use of the domain name for a bona fide offering of goods and services; (ii) evidence to show that the respondent is commonly known by the domain name; and (iii) 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.
None of the examples set out in paragraph 4(c) of the Policy is applicable and the Panel is unable to conceive of any proper basis upon which the Respondent can claim rights or legitimate interests in respect of the Domain Names. Indeed, the Policy was introduced primarily to deal with registrants registering the trade marks of others as domain names without the permission of the trade mark owners and with a view to selling them to the trade mark owners at a profit.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered or Used in Bad Faith
Paragraph 4(b)(i) of the Policy provides inter alia that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, namely circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name.
That is the Complainant's allegation, which has not been denied by the Respondent, and which has been borne out by the evidence. All that the Respondent has done has been to contend, without specification, that the law of the Islamic Republic of Iran entitles him to do what is expressly condemned by the .ir Domain Name Dispute Resolution Policy to which he subscribed when he registered the Domain Names.
The Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <zeller-gmelin.ir> and <divinol.ir>, be transferred to the Complainant.
Date: July 28, 2017
1 In response to the Center's request for registrar verification on July 26, 2017, IRNIC has confirmed that the Respondent is the registrant of the Second Domain Name.