WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cummins Generator Technologies Limited v. Saeed Ahmadi
Case No. DIR2020-0019
1. The Parties
Complainant is Cummins Generator Technologies Limited, United Kingdom, represented by Saba & Co. IP, Lebanon.
Respondent is Saeed Ahmadi, Islamic Republic of Iran (“Iran”).
2. The Domain Name and Registrar
The disputed domain name <stamford.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2020. On August 26, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On August 30, 2020, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on September 1, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2020. On September 23, 2020, the Center notified Respondent’s default.
The Center appointed Roberto Bianchi as the sole panelist in this matter on October 1, 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
Complainant, founded in 1904, is a manufacturer of power generation products. Complainant is part of Cummins Inc. (“Cummins”), a worldwide leader in power solutions. Cummins designs, manufactures, sells and services diesel and alternative fuel engines, diesel and alternative-fueled electrical generators, and related components and technology. Cummins has a network of 500 company-owned and independent distributor facilities and approximately 7,500 dealer locations in over 190 countries and territories.
Complainant owns, inter alia, the following trademarks in Iran:
STAMFORD, Registration No. 37234, dated January 29, 1972, in class 7, and STAMFORD, Registration No. 320829, dated January 26, 2019, also in class 7. These marks cover machine tools, dynamos, motors (other than for land vehicles), machine coupling and transmission components (except for land vehicles), agricultural machines, incubators for eggs, electric generators, alternators, joints (parts of engines), motors and engines, generators, electric alternators, couplings and belting, and parts and fittings for these goods.
Complainant’s affiliated company Cummins Intellectual Property, Inc. owns the <stamford-avk.com> domain name, registered on July 22, 2009.
The disputed domain name was registered by the current registrant on June 17, 2017, according to IRNIC’s verification response.
At the time of rendering the Decision, as well as according to the evidence submitted by Complainant, the disputed domain name resolved to a website whose first page displayed a logo and the name “Saadi Co.” The text of the website is in Persian or Farsi except for the terms “Elemax”, “Stamford power generation” and “Volvo”, written in Latin characters. Numerous photographs of power generators and other equipment are shown on the website.
5. Parties’ Contentions
Complainant contends as follows:
The disputed domain name is identical to Complainant’s well-known STAMFORD trademark. The disputed domain name includes Complainant’s well known trademark and will thus lead consumers to think, incorrectly, that the disputed domain name is associated with or sponsored by Complainant.
Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence in the WhoIs record of the disputed domain name that Respondent has been commonly known by the disputed domain name; or has used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, or is making a legitimate and noncommercial or fair use of the disputed domain name. There is no explicable reason as to why Respondent chose the disputed domain name.
Respondent has no authorization to use Complainant’s STAMFORD mark. Complainant confirms that Respondent is not an authorized distributor or manufacturer of Complainant’s products. There is no business relationship whatsoever between Complainant and Respondent.
Complainant does not consent to Respondent’s use and exploitation of the STAMFORD mark in the disputed domain name or on its affiliated website. The disputed domain name is being used to sell electric engines and STAMFORD generators. By using the STAMFORD mark without Complainant’s authorization, the website creates the impression that it is an authentic STAMFORD website for Iran. Indeed, there is no reason for Respondent to use the well-known STAMFORD mark other than to trade off the established goodwill in the STAMFORD mark. Consequently, Respondent’s actions constitute trademark infringement, cybersquatting and copyright infringement.
The disputed domain name was registered or is being used in bad faith. Since Complainant had already registered its mark in Iran, it is very likely that Respondent must have been aware of Complainant’s mark and products at the time of registering the disputed domain name. The disputed domain name wholly incorporates Complainant’s STAMFORD mark, only adding a country-code Top Level Domain (“ccTLD”), which cannot serve to distinguish Respondent’s use. Moreover, the disputed domain name is very similar to Complainant’s domain name <stamford-avk.com>, which was registered 11 years ago in 2009. This makes it even more likely that Respondent was aware of Complainant’s rights and registered the disputed domain name in bad faith.
The website at the disputed domain name contains the STAMFORD mark on its home page, in addition to photos of Complainant’s STAMFORD generators in order to attract Internet users for commercial gain. This unauthorized use of the mark and product photos creates a likelihood of confusion among consumers and misleads them about the business relationship between the Respondent and Complainant and the source of the products sold.
Respondent, after receiving Complainant’s legal notice, did not respond or comply with Complainant’s demands. Respondent’s failure to respond to cease and desist letters from Complainant constitutes evidence of bad faith.
Respondent did not respond to the Complaint and is in default.
6. Discussion and Findings
A. Identical or Confusingly Similar
By submitting printouts taken form the corresponding official trademark database, Complainant has shown that it owns two trademark registrations for STAMFORD in Iran. See section 4 above. Therefore, the Panel finds that Complainant has rights in this mark for purposes of Policy paragraph 4(a)(i).
The Panel notes that the disputed domain name consists of the STAMFORD mark plus the “.ir” ccTLD. Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel notes that there is no evidence showing that the registrant of the disputed domain name i.e., Respondent is known – commonly or otherwise – by the disputed domain name. Thus, Policy paragraph 4(c)(ii) is inapplicable.
Complainant says that Respondent has no authorization to use Complainant’s STAMFORD mark, or to manufacture or distribute Complainant’s products, and that it has no business relationship whatsoever to Respondent. The Panel does not see any evidence to the contrary.
In use of its general powers under Rules paragraph 10(a), the Panel visited the website at the disputed domain name, which is written in Persian or Farsi.1 Aside from Cummins and Stamford equipment, the website at the disputed domain name contains several photos, drawings and mentions of generators and other products from competitors of Complainant, such as Elemax, Perkins, and Volvo. A basic translation of the content of the website at the disputed domain name from Persian into English (by using Google Translate) rendered descriptive texts about these generators and their main characteristics. At the end of the text, appears the address in Tehran and other contact details of Respondent’s business. Based on this translation, the Panel did not see any claim or statement indicating that Respondent might be an agent, a licensee or a distributor of Complainant’s products. This supports Complainant’s above contentions about its lack of any relationship to Respondent. The content of the website at the disputed domain name also indicates that Respondent is using Complainant’s STAMFORD mark for commercial gain, without any authorization from Complainant, to advertise and market products from competitors of Complainant. Clearly, this use of the disputed domain name is neither a bona fide use under Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers under Policy paragraph 4(c)(iii). Thus, Complainant has succeeded in raising a prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain name.
For its part, Respondent failed to present any explanation for its reasons to register or use the disputed domain name as shown. Moreover, the nature of the disputed domain name carries a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0). In consequence, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered or Used in Bad Faith
Complainant has shown that it owns a registration of its STAMFORD mark in Iran since 1972, thus predating the registration of the disputed domain name by well over 40 years. In addition, Complainant’s affiliated company, Cummins Intellectual Property, Inc., owns the <stamford-avk.com> domain name since 2009. See section 4 above. The Panel also notes that the website at the disputed domain name includes a text stating, “Cummins generator technologies factory was established in 1904 to produce generators (power generators) under the STAMFORD and AVK brands”2 , as well as photos and drawings of power generators and other equipment. This content indicates that Respondent perfectly knew of, and targeted Complainant, its STAMFORD mark and power-generating products at the time of registering the disputed domain name. In the circumstances of this case, this means that the registration of the disputed domain name was in bad faith.
As seen above, the disputed domain name, which entirely reproduces Complainant’s STAMFORD mark, is being used without any authorization from Complainant to advertise and market not only Stamford generators but also generators and other equipment from competitors of Complainant. It is clear that Respondent has intentionally attempted to attract, for commercial gain, Internet users presumably looking for Complainant’s Stamford products to his website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website or location. According to Policy paragraph 4(b)(iv), this is a circumstance of registration and use in bad faith of the disputed domain name.
Lastly, the Panel notes that Respondent failed to submit any explanation in its own favor.
The Panel concludes that the disputed domain name was registered and is being used in bad faith. Thus, the requirement of the irDRP, paragraph 4(a)(iii) (“your domain name has been registered or is being used in bad faith“) has been entirely satisfied.
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 <stamford.ir> be transferred to Complainant.
Date: October 15, 2020
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8 (May a panel perform independent research in assessing the case merits? 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 (…)”)
2 As translated from Persian into English by using Google Translate.