WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Xerox Corporation incorporated v. Hossein Mortazavi
Case No. DIR2017-0022
1. The Parties
The Complainant is Xerox Corporation incorporated of Norwalk, Connecticut, United States of America (“United States”), represented Saba & Co. IP, Lebanon.
The Respondent is Hossein Mortazavi of Tehran, Iran (Islamic Republic of).
2. The Domain Name and Registrar
The disputed domain name <iranxerox.ir> (hereafter 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 6, 2017. On December 6, 2017, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On December 9, 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 December 12, 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 December 14, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2018. On January 4, 2018, the Center notified the Respondent’s default.
The Center appointed Jon Lang as the sole panelist in this matter on January 15, 2018. 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 provides document management technology, such as printers, photocopiers and multi-function peripherals as well as related services to businesses and governments of all sizes. It can trace its roots back to 1906. With more than 130,000 employees, the Complainant does business in more than 180 countries across the world and has annual revenues exceeding USD 19 billion. It spends millions of dollars annually to promote its goods and services. Amongst other rankings, the Complainant was listed as one of the world’s most admired companies by Fortune Magazine in 2015 and is also included in a list of “Best Global Brands 2016”, published by Interbrand.
The Complainant has registered over 3,000 domain names worldwide incorporating the XEROX trade name and trademark.
The Complainant owns over 2,700 trademark registrations for XEROX and XEROX variants in different countries around the world, covering goods and services related to its business. For example, in Iran (Islamic Republic of), where the Respondent is based, its registrations include the following:
- Trademark registration for XEROX number 32602, which dates back to February 16, 1969;
- Trademark registration for “XEROX & Device” in Latin characters, publication number 20558 dated October 4, 2015;
- Trademark registration for XEROX in Latin characters, publication number 20587 dated November 8, 2015.
Nothing is known of the Respondent. He has played no part in these proceedings and did not respond to the letter of complaint sent to him on October 31, 2017, requesting that he transfer the Domain Name to the Complainant.
It does not appear that the Respondent has done much, if anything, with his registration. The Domain Name does not resolve to a website.
5. Parties’ Contentions
The following is a summary of the main contentions of the Complainant.
The Domain Name is identical or confusingly similar to the Complainant’s XEROX trademark
Consumers will be confused as to the origin of the Domain Name and will be led to perceive a connection between the Complainant’s trademark and the Domain Name. Consumers will think that the Domain Name is associated with or sponsored by the Complainant, since it incorporates the Complainant’s well-known trademark in addition to the word, “Iran”. The addition of “Iran” to the trademark XEROX is insufficient to differentiate it from the Complainant’s trademark in any meaningful way. The Domain Name is confusingly similar to the Complainant’s XEROX trademark.
The Respondent has no rights or legitimate interests in respect of the Domain Name
There is no evidence in the WhoIs of the Domain Name that the Respondent has used or made 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 is 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 at issue. The name of the Respondent (Hossein Mortazavi), bears no similarity to the XEROX mark or the Domain Name and nothing in the Respondent’s WhoIs information, or website, or the record, demonstrates that the Respondent is commonly known by the Domain Name. The Complainant has not authorized the Respondent to use the XEROX mark in any way.
There is no justification for the Respondent’s registration of the Domain Name; it is an infringement and a commercial exploitation of the XEROX mark with all its positive association and goodwill.
The Respondent can have no legitimate interest in a domain name incorporating the protected and well-known mark, XEROX.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name.
The Domain Name was registered or is being used in bad faith
Paragraph 4(b) of the Policy lists several examples of “bad faith”, which can be demonstrated in the present case.
The lack of active use (passive holding) of the Domain Name does not prevent a finding of bad faith.
Given the distinctiveness, uniqueness and fame of the XEROX trademark and trade name, together with its global presence, there can be no possibility of any good faith use of the Domain Name.
Not only did the Respondent register and acquire the Domain Name in bad faith for commercial gain, he also failed to respond to the letter of October 31, 2017, warning him of the legal implications of his actions, a further indication of bad faith.
The Complainant submits that the Respondent registered and is using the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered or is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the XEROX trademark.
Ignoring the country code Top-Level Domain (“ccTLD”) “.ir” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s XEROX trademark preceded by “Iran”. As the XEROX trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the Policy, the test for confusing similarity involves a comparison between the trademark and the domain name to determine the likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity. Application of the confusing similarity test under the Policy typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
The XEROX trademark is clearly recognizable within the Domain Name. It is a famous mark and whilst not the first word of the Domain Name, is clearly its dominant element. The only real issue therefore is whether the addition of “Iran” renders the Domain Name something other than confusingly similar to the Complainant’s XEROX trademark. Clearly, it does not.
The Panel finds that the Domain Name is confusingly similar to the XEROX trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to ask whether there would be anything inappropriate in such a finding. The answer to that question must be a resounding “no”. It is difficult to conceive of any argument that could be advanced in the circumstances of this Complaint that might assist the Respondent demonstrate that it does in fact have rights or legitimate interests in the Domain Name – it incorporates as its main element the famous XEROX trademark of the Complainant and combines it with an additional word (the geographic term, “Iran”) which is likely only to reinforce the risk of implied affiliation as opposed to ameliorating that risk.
In the circumstances, the Panel concludes that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad Faith
The fact that the Respondent appears to have done nothing with his registration does not prevent a finding of bad faith registration or use. A mere passive holding of a domain name can still amount to bad faith registration or use where a respondent has incorporated another’s famous trademark into a domain name without explanation, fails to respond to a letter of complaint or participate in Policy proceedings, and where any good faith or fair use for the purposes of the Policy would seem somewhat implausible.
Accordingly, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
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 <iranxerox.ir> be transferred to the Complainant.
Date: January 29, 2018