WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gefran SPA v. Behnaz Daneshvar
Case No. DIR2019-0014
1. The Parties
The Complainant is Gefran SPA of Italy, represented by Convey Srl, Italy.
The Respondent is Behnaz Daneshvar, Iran (Islamic Republic of).
2. The Domain Name and Registrar
The disputed domain name <gefraniran.ir> (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 11, 2019. On December 11, 2019, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On December 14, 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 December 18, 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 December 30, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2020. On January 24, 2020 the Center notified the Respondent’s default.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 31, 2020. 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 active in the sector of industrial automation since 1969 and owner of the trademark GEFRAN since many years, with many international and national trademark registrations worldwide, including in Iran (Islamic Republic of). Since 1998, the Complainant is listed on the Italian Stock Exchange. Today, the Complainant has 900 employees in its production facilities worldwide and 17 sales offices located around the world with revenues of about EUR 135.000.000, in 2018.
The Complainant owns trademarks for the names GEFRAN and GEFRAN SIEI, such as International Trademarks No. 852323, No. 901327, No. 901328, all designating also Iran (Islamic Republic of), and European Union Trademarks, No. 004435152, No. 003918851. Among the above trademarks, the earlest registration dates back to January 11, 2005.
The Complainant has registered several domain names consisting of or comprising the trademark GEFRAN under several different Top-Level Domains, including <gefran.com>, <gefran.it>, <gefran.cn>, <gefran.eu> and <gefran.co.uk>. The corresponding websites generate a significant number of visits by Internet users every day as the accounts on the social media LinkedIn and YouTube.
According to the Registrar, the Domain Name was registered by the Respondent with the Registrar on November 6, 2018. At the time of filing the Complaint, and at the time of drafting the decision, the Domain Name resolved to a webpage purporting to sell the Complainant’s and its competitors’ products.
5. Parties’ Contentions
The Complainant argues the Domain Name is confusingly similar to the trademarks GEFRAN and GEFRAN SIEI in which the Complainant has rights. The addition of the geographical term “iran” only increases the level of confusion of Internet users.
The Complainant asserts that the Respondent has never been authorized to use the Domain Name, nor is the Respondent commonly known by the Domain Name. The Respondent has not provided any evidence of the use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Complainant argues that GEFRAN is neither a generic English term, nor descriptive, and it is not a dictionary word, rather it is an inherently distinctive trademark which solely refers to the Complainant. The Respondent has used the Domain Name to redirect Internet users to a website dedicated to an Iranian company active in the sector of industrial automation (Sepehr Sanat Co.), where products of both the Complainant and Complainant’s competitors are promoted. Such use, in the opinion of the Complainant, cannot be bona fide, as it creates the impression of a commercial connection between the Respondent and the Complainant. The website does not contain an express disclaimer which would make the real/lack of connection between the Complainant and the Respondent.
The Complainant argues that it is implausible that the Respondent was unaware of the Complainant when the Respondent registered the Domain Name. The Complainant is well known throughout the world. The Respondent’s use of the Domain Name is further evidence of such knowledge. This demonstrates that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location, or of a product or service on the Respondent’s website or location in accordance with paragraph 4(b)(iv) of the Policy. The failure to respond to the Complainant’s cease and desist letters is further evidence of 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 trademark rights. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name is confusingly similar to the Complainant’s trademark. The addition of the geographical term “iran”, does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. For the purpose of assessing confusing similarity, it is permissible for the Panel to ignore the country code Top-Level Domain (“ccTLD”) “.ir”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing the Complainant’s trademark or otherwise make use of the trademark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered rights. The Respondent’s use of the Domain Name is not bona fide in the circumstances where the website at the Domain Name purports to sell the Complainant’s and its competitor’s products, WIPO Overview 3.0, section 2.8.
The Panel finds the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad Faith
Taking into account the Respondent’s use of the Domain Name, the Panel concludes on the balance of probability that the Respondent knew of the Complainant and its business when the Respondent registered the Domain Name.
The Respondent has attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The fact that the Respondent has not responded to cease and desist letters and the Complaint, further points to bad faith.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
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 <gefraniran.ir> be transferred to the Complainant.
Date: February 10, 2020