WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dassault Systèmes SE v. Esmaeil Beheshti
Case No. DIR2020-0022
1. The Parties
The Complainant is Dassault Systèmes SE, France, represented IP Twins S.A.S., France.
The Respondent is Esmaeil Beheshti, Islamic Republic of Iran (“Iran”).
2. The Domain Name and Registrar
The domain name <3ds.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 October 26, 2020. On October 26, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On October 27, 2020, IRNIC transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on November 2, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2020. The Response was filed with the Center on November 19, 2020. On November 20, 2020, the Complainant submitted a supplemental filing.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on December 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
The Complainant operates in the area of 3D software applications. The Complainant was created in 1981 by Avions Marcel Dassault to develop a new generation of computer-aided design software. The Complainant has more than 20,000 employees in 140 different countries. The Complainant has a revenue of EUR 4.018 billion in 2019, and is listed on the index of the Paris Stock Exchange.
The Complainant is the registered owner of a large number of trademarks consisting in the abbreviation “3DS”, such as the Australian trademark no. 879184, registered on June 14, 2001, Indian trademark no. 1019828, registered on June 25, 2001 and German trademark no. DE30136149, registered on September 4, 2002.
The Complainant has registered several domain names, such as <3ds.com>, <fondation-3ds.com> and <3ds.one>.
According to the Registry, the Domain Name was registered by the Respondent on May 24, 2014. The Domain Name resolves to a website in Persian language, which appears to offer training and links to third-party websites allowing the downloading of the Complainant’s products.
5. Parties’ Contentions
The Complainant argues the Domain Name is identical to the trademark 3DS in which the Complainant has rights. The country code Top-Level Domain (“ccTLD”) “.ir” does not serve to distinguish the Domain Name from the Complainant’s mark.
The Complainant asserts that the Respondent has acquired no trademark in the name 3DS. 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 Respondent’s website makes available downloads of the Complainant’s products protected by copyright. Moreover, there is no element to clarify or disclaim the relationship between the Respondent and the Complainant. On the contrary, the Respondent’s use increases the confusion. The Respondent offers a newsletter “to join in the 3DS family”. Such use cannot, in the opinion of the Complainant, be bona fide.
The Complainant argues that it is implausible that the Respondent was unaware of the Complainant when the Respondent registered the Domain Name. The Respondent’s use of the Domain Name is 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. Moreover, the Respondent has offered to sell the Domain Name for USD 50,000.
The Respondent argues that its intention with the registration was to provide free mechanical software training to students, but today it also offers for sale a training package to recover some of the costs of running the website. The Respondent further argues that the three-letter term “3DS”, is merely a term used in 3D software field, suggesting this is not something the Complainant may use exclusively.
The Respondent disagrees with the Complainant’s allegations, and claims, inter alia, that the Respondent’s website “has been committed to copyright since the beginning of its activity and has not provided any direct download link of cracked software to users and will adhere to this issue”. The Respondent also claims that “you will not find anything about Dassault Systèmes name and its website URL in our website”.
The Respondent denies that it has acted in bad faith. It stresses that the webpage offers training in all the mechanical engineering fields, not just software owned by the Complainant. The Respondent also makes a point of distinguishing the Complainant from globally known technology companies, and argues that the Complainant is not well-known in Iran.
C. Supplemental filings
In a supplemental filing, the Complainant argues, inter alia, that contrary to what is claimed in the Response, the Respondent’s website does indeed make available downloads of the Complainant’s products. In any case, the Panel notes that the Complainant already claimed this in its original Complaint (and Annexes). As the supplemental filing does not add any new evidence of importance to this case, and mainly serves as a rebuttal of the Response, the Panel sees no reason for accepting this supplemental filing, cf. paragraphs 10 and 12 of the Rules.
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 identical to the Complainant’s trademark. For the purpose of assessing confusing similarity, it is permissible for the Panel to ignore the ccTLD “.ir”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)1, section 1.11.
The Panel finds that the Domain Name is identical 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. 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 has explained it provides free mechanical software training to students of the Domain Name, and claimed that the reason for registering the domain name is due to its use of different types of 3D software. However, the Panel also notes that the Respondent, by using a Domain Name identical to the Complainant’s trademark, is offering training of the Complainant’s products and links to
third-party websites for the unauthorized download of the Complainant’s products, which the Panel finds is not a bona fide use under the Policy, 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.
As much as the Panel finds commendable the Respondent’s activity in offering free training of mechanical engineering, it is clear that the Respondent offers products or services relating to the Complainant’s product from a website of a domain name identical to the Complainant’s trademark. Even if the Panel agrees that the Complainant’s trademark consists only of three letters, the Panel notes that the Complainant has been operating at the domain name <3ds.com>, and that the use of the Domain Name is connected with the Complainant’ trademarks and its field of business. The Panel finds that the Respondent’s use of the Domain Name suggests that 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. If the Respondent’s only aim were to set up a webpage for training in mechanical engineering, independent of the Complainant and its trademark, one would expect a different domain name, not a domain name identical to the Complainant’s trademark with a website that includes references to the Complainant’s products.
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 <3ds.ir> be transferred to the Complainant.
Date: December 4, 2020
1 Noting the substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to WIPO Overview 3.0, where appropriate.