WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Emerson Electric Co. / RIDGID, Inc. v. Mohamadali Jalali
Case No. DIR2018-0005
1. The Parties
The Complainant is Emerson Electric Co. / RIDGID, Inc. of St. Louis, Missouri, United States of America (“United States”), represented by Saba & Co. Intellectual Property, Lebanon.
The Respondent is Mohamadali Jalali of Tehran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <ridgid.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2018. On February 1, 2018, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On February 7, 2018, 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 February 28, 2018.
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 the .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the .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 2, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2018. On March 23, 2018, the Center notified the Respondent’s default.
The Center appointed Antony Gold as the sole panelist in this matter on April 3, 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 is a company based in Missouri, United States. The division of the Complainant to which these proceedings relate, Ridgid Tool Company, manufactures and sells power tools, hand tools and associated services and software. Ridgid Tool Company was founded in 1923 in Ohio, United States and, in 1966, it became part of the Complainant. It operates in over 140 countries.
The Complainant has registered a large number of trade marks for RIDGID (the “RIDGID trade mark”), including, by way of example only:
- United States Trade Mark No. 0419190 for RIDGID (stylised word mark), registered on February 5, 1946, in class 8;
- United States Trade Mark No. 1652178 for RIDGID (combined word and logo mark), registered on July 30, 1991, in class 8;
- Islamic Republic of Iran Trade Mark No. 25445 for RIDGID (stylised word mark), registered on May 19, 1964, in classes 7 & 8.
The Complainant also owns many domain names connected to its business, including <ridgid.com>, which was registered by it on December 6, 1995.
The Respondent is an individual based in the Islamic Republic of Iran. The disputed domain name was registered by him on July 29, 2017. It points to a website, the home page of which is prominently branded RIDGID in several locations and features photographs of RIDGID-branded goods. The website offers for sale goods purporting to be those of the Complainant, including hand tools and power tools. Many of the products shown are branded with the Complainant’s RIDGID trade mark and are accompanied by descriptions of them in Persian script.
5. Parties’ Contentions
The Complainant says the disputed domain name is identical to its RIDGID trade mark as it is comprised solely of that mark. The Complainant refers to Syngenta Participations AG v. Maksim Ivanov, WIPO Case No. D2016-0310, a decision under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) in which the panel found that a domain name incorporating a trade mark in its entirety can be sufficient to establish, at least, confusing similarity.
The Complainant asserts that the Respondent has no rights or legitimate interest in the disputed domain name. There is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods and services. The Complainant points to a decision under the UDRP, Multi Media, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Mikhail Kovalevskiy, WIPO Case No. D2017-2035, in which the panel found that capitalising on a complainant’s trade mark for commercial gain, through a website resolved to by a domain name, cannot amount to a bona fide offering of goods or services. The RIDGID trade marks, have since inception, been associated with the Complainant and its products and services and as such, the Respondent would not have registered the disputed domain name other than for the purpose of creating an impression of a connection with the Complainant.
There is no evidence that the Respondent has been commonly known by the disputed domain name. The Respondent’s name has no similarity to it and the Complainant has not authorised the Respondent to use its RIDGID trade mark.
The Respondent is not an authorised distributor, or manufacturer of the Complainant’s products and a commercial relationship has never existed between them. The Complainant has not sponsored or endorsed the Respondent’s activities.
Moreover, the Respondent is not making a legitimate and noncommercial or fair use of the disputed domain name. The website resolved to by the disputed domain name is being used to offer for sale goods bearing the Complainant’s RIDGID trade marks.
Accordingly, none of the circumstances demonstrating rights or legitimate interests, as set out in paragraph 4(c) of the Policy, have been made out by the Respondent.
The Complainant says the disputed domain name has been registered or is being used in bad faith. The Respondent is using the Complainant’s RIDGID trade marks on the website resolved to by the disputed domain name as well as on the products themselves. This demonstrates an awareness of the Complainant’s business, and its RIDGID trade marks at the time the disputed domain name was registered by the Respondent, as well as an intention to create a sense of affiliation with the Complainant.
The website is being used as an online platform for the sale of products bearing the Complainant’s RIDGID trade mark. The website resolved to by the disputed domain name allows Internet users to create accounts to purchase and make online payments for goods bearing the RIDGID trade marks. The Respondent is accordingly using the disputed domain name in bad faith to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trade marks, as to the source, sponsorship or affiliation of the website resolved to by the disputed domain name; see LEGO Juris A/S v. Mansoureh Mirzaei Ghaleh Mirzaei, WIPO Case No. DIR2014-0010.
The Respondent has also failed to reply to a cease and desist letter sent by the Complainant’s representatives on November 24, 2017. Previous panels have held that such a failure provides further evidence of a respondent’s bad faith; see, for example, LEGO Juris A/S v. Mostafa Barati Abyazani, WIPO Case No. DIR2014-0007.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The details the Complainant has provided of its trade mark registrations for RIDGID, are set out above. The Complainant has accordingly established that it has rights in those marks.
When assessing the degree of similarity between the disputed domain name and a complainant’s trade mark, the generic or country code Top Level Domain, being, in this case “.ir” for the Islamic Republic of Iran, is disregarded as it is a technical requirement of registration.
The disputed domain name incorporates the Complainant’s RIDGID trade mark solely and in its entirety. It is accordingly identical to it. The Panel therefore finds that the disputed domain name is identical to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, three circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(i) before any notice to it of the dispute, it had 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
(ii) it had been commonly known by the domain name, even if it had acquired no trademark or service mark rights; or
(iii) it was 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.
Dealing with these grounds in reverse order, the use of the disputed domain name to point to a website purporting to advertise and offer goods for sale is commercial in character. Furthermore, there is no evidence which might suggest that the Respondent is commonly known by the disputed domain name or that it has ever acquired any trade mark rights in RIDGID. The circumstances set out at 4(c)(ii) and 4(c)(iii) of the Policy are accordingly inapplicable.
Whether the Respondent’s website to which the disputed domain name points might fall within the circumstances set out at paragraph 4(c)(i) of the Policy and be considered to comprise a bona fide offering of goods and services requires more detailed consideration.
The Complainant has not provided a translation of any part of the Persian language script of the website. It is usually helpful to have some idea of the written content of a website in these circumstances. Paragraph 10(a) of the Policy empowers the Panel “to conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.” The circumstances in which a panel might typically take this course under the UDRP, the corresponding provisions of which are effectively the same as those of the Policy, are outlined at section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name”.
The Panel has accordingly visited the website to which the disputed domain name points, using Google’s website translation function. Even allowing for possible variances between the true meaning of the wording on the Respondent’s website and the wording produced by the Google translation function, there is nothing on the website which might conceivably amount to a statement that the Respondent has no authorised, or other, form of relationship with the Complainant. Moreover, the Panel notes, from having also visited the Complainant’s website at “www.ridgid.com”, that the power tools sold by the Respondent feature the same distinctive orange and yellow casing as those offered for sale by the Complainant. So, to the extent that tools shown on the Respondent’s website are genuinely for sale, they are either the Complainant’s tools or have been manufactured in order to look like them.
The impression created by the Respondent’s website is that it is being operated by it the Complainant, or with its approval, and there is a complete lack of visual cues which might lead an Internet user to appreciate that the Respondent has no commercial relationship with it. In cases where UDRP panels have considered the position of a reseller of a complainant’s goods, panels require, amongst other matters, the respondent’s website accurately and prominently to disclose its relationship with the Complainant if it is to be considered a bona fide offering of goods and services; see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Respondent’s website does not do this and clarity on the Respondent’s status is important in order to ensure that Internet users are not deceived as to his connection, or lack of connection, with the Complainant.
As explained at section 2.1 of the WIPO Overview 3.0, once a complainant under the UDRP has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. The Complainant has made out a prima facie case and the Respondent has failed to respond either to the cease and desist letter sent to him by the Complainant’s representatives or to the Complaint. In the absence of any response from the Respondent, he has failed to satisfy that burden.
For these reasons, the Panel finds that the Respondent does not have any rights or legitimate interests with respect to the disputed domain name.
C. Registered or Used in Bad Faith
The disputed domain name contains the Complainant’s RIDGID trade mark in full and no other letters or words. Having regard to the use to which the Respondent has put the disputed domain name following registration and his evident awareness of the Complainant’s business, the Panel finds that the disputed domain name was registered by the Respondent in order to establish the website to which the disputed domain name resolves and thereby to take advantage of the Complainant’s reputation in its RIDGID trade marks.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out in paragraph 4(b)(iv) of the Policy are, in summary, if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Respondent’s conduct falls squarely within this provision. He has established a website, prominently branded with the Complainant’s RIDGID trade mark and offering the Complainant’s products for sale. There is nothing that might correct the misleading impression which the combination of the disputed domain name (comprising, as it does, the Complainant’s trade mark solus) and the features of the website to which it points, will create in Internet users that the website is authorised by, or affiliated with, the Complainant. The Panel accordingly finds that the disputed domain name has been both registered and is also being used 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 disputed domain name <ridgid.ir> be transferred to the Complainant.
Date: April 17, 2018