WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eclisse S.R.L. v. Amirhosen Arefniya
Case No. DIR2019-0004
1. The Parties
The Complainant is Eclisse S.R.L. of Pieve Di Soligo, Italy, represented by Dr. Modiano & Associati S.p.A..
The Respondent is Amirhosen Arefniya of Tehran, Iran (Islamic Republic of).
2. The Domain Name and Registrar
The disputed domain name <eclisse.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2019. On April 8, 2019, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On April 10, 2019, 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 10, 2019.
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 15, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2019. On May 6, 2019, the Center notified the Respondent’s default.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 10, 2019. 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 was founded on January 10, 1989 and manufactures sliding doors, door frames and locksmiths’ goods, particularly for sliding doors and windows, counting with 10 subsidiaries worldwide and 30 representative offices throughout the world.
The Complainant is the owner, amongst others, of the following trademark registrations:
- Italian Trademark Registration No. 0000551997 for ECLISSE registered on April 18, 1991, successively renewed;
- European Union Trademark Registration No. 000380931 for ECLISSE registered on November 18, 1998, successively renewed; and
- International Trademark Registration No. 576896 for ECLISSE registered on October 22, 1991, successively renewed.
The disputed domain name <eclisse.ir> was registered on October 16, 2018. Currently it displays a landing page depicting the Complainant’s logo underlined by the messages “sürme karpi sistemleri” (“sliding door systems” in Turkish) and “coming soon” as well as texts in Persian.
5. Parties’ Contentions
The Complainant asserts to be a renowned brand and a benchmark for the sliding and pocket doors’ industry, having become a leader in that field, with 10 subsidiaries and more than 30 representatives worldwide, it has also extensively used the ECLISSE trademark for almost 30 years.
The Complainant further asserts that the disputed domain name is confusingly similar to its renowned trademark since it incorporates entirely the ECLISSE trademark, being the “.ir” country code Top-Level Domain (“ccTLD”) irrelevant and insufficient to avoid confusion.
As to the absence of rights or legitimate interests in the disputed domain name, the Complainant argues that:
(a) no agreements, authorizations or licenses have been granted to the Respondent to use the Complainant’s trademarks, trade name or company name;
(b) there is no evidence that the Respondent has trademark rights over ECLISSE or is known by the disputed domain name or the ECLISSE mark;
(c) the webpage that resolves from the disputed domain name depicts the Complainant’s logo underlined by the messages “sürme karpi sistemleri” (“sliding door systems” in Turkish) and “coming soon” as well as texts in Persian which in an unofficial translation reads “The official representation of Italy’s Aachen New Generation door sliding system”, what does not characterize a bona fide or legitimate use of the disputed domain name; and
(d) it is difficult to infer a legitimate use of the disputed domain name by the Respondent in view of the reproduction of the Complainant’s renowned trademark.
According to the Complainant, the registration of the disputed domain name, decades after the use and promotion of the ECLISSE trademark internationally was clearly done in bad faith given the Respondent’s actual and undoubtful knowledge of the Complainant in view of the reproduction of the Complainant’s logo in the webpage that resolves from the disputed domain name, as well as the mention to the Complainant’s products (sliding door systems) and an indication that the Respondent would be the representative of the Complainant, what is not true. The Complainant further indicates that the use of the ECLISSE trademark in its entirety without plausible good faith use and the intentional attempting to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known trademark are unambiguous evidence of the registration and use of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the ECLISSE trademark.
The disputed domain name includes the Complainant’s trademark in its entirety. In this case, the “.ir” ccTLD is not to be taken into account as already established in case law under the Policy.
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s 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
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or
(iii) the respondent 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 or service mark at issue.
In that sense, the Complainant states that no agreements, authorizations or licenses have been granted to the Respondent to use the Complainant’s trademarks, trade name or company name.
Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with a finding as to the absence of a right or legitimate interest.
The Respondent’s use of the disputed domain name in connection with a landing page that depicts the Complainant’s logo underlined by the messages “sürme karpi sistemleri” (“sliding door systems” in Turkish) and “coming soon” as well as texts in Persian which appear to indicate that a misrepresentation does not characterize a bona fide or legitimate use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered or Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the Respondent’s webpage which reproduces the Complainant’s logo and seeks to pass itself as the official representative of the Complainant, not only clearly indicating full knowledge of the Complainant’s trademark but also an attempt of misleadingly diverting consumers for the Respondent’s own commercial gain.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
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 <eclisse.ir> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: May 15, 2019