WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Karma Automotive LLC v. Arash Ebrahimpour
Case No. DIR2020-0028
1. The Parties
The Complainant is Karma Automotive LLC, United States of America (“United States”), represented by Saba & Co. IP, Lebanon.
The Respondent is Arash Ebrahimpour, Iran (Islamic Republic of).
2. The Domain Name and Registrar
The disputed domain name <karmaautomotive.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2020. On December 24, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On December 26, 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 January 20, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2021. On February 10, 2021, the Center notified the Respondent’s default.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on February 24, 2021. 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 organized under the laws of United States, which manufactures and develops advanced technologies in the automotive industry, producing and commercializing luxury hybrid and electric cars, among others, since 2016, the Karma Revero car. The trademark KARMA was first used in 2011 by Fisker Automitive, which was acquired by the Complainant in 2014.
The Complainant holds a large portfolio of registered trademark rights in the trademark KARMA in many jurisdictions, including:
International Trademark Registration No. 1042260 KARMA, word, registered on June 8, 2010, in class 12;
International Trademark Registration No. 971143 KARMA, word, registered on June 5, 2008, in class 12;
United States Trademark Registration No. 4118804 KARMA, word, registered on March 27, 2012, in class 12; and,
United Arab Emirates Trademark Registration No. 35 241178 KARMA, figurative, registered on November 9, 2017, in class 35, (collectively the “KARMA mark”).
The Complainant owns and operates a website reflecting its trademarks, containing information and promoting its vehicles, under the domain name <karmaautomotive.com> (registered on April 9, 2014).
The disputed domain name was created on July 19, 2016 and registered by the Respondent on September 19, 2017. It resolves to a parked website in Persian language operated by a third party, which offers the disputed domain name for sale including a third party link, where the disputed domain is listed with a minimum price of IRR 15,000,000.
5. Parties’ Contentions
A. Complainant
Key contentions of the Complaint may be summarized as follows:
The KARMA mark is famous and globally known. The Karma Revero GT car was elected luxury car of the year by the Green Car Journal’s 2020.
The disputed domain name is incorporating the famous KARMA mark in its entirety and the Complainant’s name, creating a likelihood of confusion and association. The disputed domain name creates the impression that it is the Complainant’s website for Iran (Islamic Republic of).
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s name bears no similarity to the disputed domain name and the Complainant has not authorized the use of the KARMA mark. There is no reason for the Respondent to use the arbitrary and famous KARMA mark, but to trade off its established goodwill.
The disputed domain name was registered in bad faith, without any authorization or any legitimate interests, to attract Internet users for commercial gain by creating a likelihood of confusion and misleading them about an apparent business relationship with the Complainant. Due to the fame of the KARMA mark, it can be inferred that the Respondent knew of this trademark when he registered the disputed domain name. The Respondent’s actions constitute trademark infringement and cybersquatting. The disputed domain name misappropriates the KARMA mark to make any Internet user familiar with this trademark or the Complainant believe that exists an affiliation. Not linking the disputed domain name to an active website does not strip the Respondent from bad faith. The Respondent failed to respond to a warning letter sent on June 23, 2020 by the Complainant, insisting on his illegitimate actions despite this warning.
The Complainant has cited previous decisions under the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) considered supportive of its position, and requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules. Noting the substantive similarities between the Policy and the UDRP, the Panel will refer to prior UDRP cases and doctrine where appropriate.
A. Identical or Confusingly Similar
The Complainant indisputably has rights in the registered KARMA mark. The disputed domain name incorporates this mark in its entirety, followed by the term “automotive”, which does not prevent a finding of confusing similarity between the mark and the disputed domain name. The KARMA mark is clearly recognizable in the disputed domain name, and the country code Top-Level Domain (“ccTLD”) “.ir” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8, and 1.11.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.
The Complainant’s prima facie assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions.
A core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the KARMA mark in its entirety adding the term “automotive”, which also points to the Complainant and its notorious trademark, reproducing the Complainant’s company name and its corporate website’s domain name (<karmaautomotive.com>). Therefore, the Panel considers that the disputed domain name creates the impression that it refers to the Complainant’s official website for Iran (Islamic Republic of), suggesting sponsorship or endorsement by the Complainant with a risk of implied affiliation.
It is further to be noted that there is no evidence in the file of Respondent’s demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with any bona fide offering of goods or services. The disputed domain name is inactive, although it was registered more than three years ago (in 2017), being linked to a parked website, which offers it for sale.
It is further remarkable the Respondent has not replied to the Complaint, not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as a right or legitimate interests in the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all the case cumulative facts and circumstances point to consider that the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered or Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establishes that the disputed domain name has been registered or is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0. The Panel considers such standard appropriate in the present case.
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:
(i) the disputed domain name incorporates the Complainant’s KARMA mark in its entirety adding a term (“automotive”), which reproduces the Complainant’s company name and domain name, creating a likelihood of confusion or implied affiliation and the impression that the disputed domain name refers to the Complainant’s official website for Iran (Islamic Republic of), suggesting sponsorship or endorsement by the Complainant;
(ii) the Complainant’s trademark is notorious in its sector and the Complainant operates internationally;
(iii) the disputed domain name is inactive although it was registered by the Respondent more than three years ago, being linked to a parked website which offers it for sale for a minimum price (IRR 15,000,000) that exceeds the normal documented out-of-pocket costs directly related to its registration;
(iv) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.
It is further to be noted that the Respondent has registered, at least, two other domain names incorporating third parties’ trademarks related to the ccTLD “.ir”, which have been subject of previous proceedings under the Policy1 . These domain names were equally inactive and linked to websites offering them for sale. The Panel considers that these circumstances corroborate the Respondent’s bad faith, indicating a pattern of bad faith registrations targeting third parties’ trademarks.
It is further to be noted that non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3, WIPO Overview 3.0.
Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered targeting the Complainant’s notorious KARMA mark with the intention of obtaining a free ride on its established reputation. It was probably registered primarily for transferring the disputed domain name to the Complainant or to one of its competitors for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name, which constitutes bad faith under the Policy.
All of the above-mentioned circumstances lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the third element of the Policy under paragraph 4(a)(iii) has been established.
7. Decision
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 <karmaautomotive.ir> be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: March 4, 2021
1 See Soluxury HMC, Accor v. Arash Ebrahimpour, WIPO Case No. DIR2017-0024; and Kaufland Warenhandel GmbH & Co. KG v. Arash Ebrahimpour, WIPO Case No. DIR2016-0039.