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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ansell Limited v. Abbas Banihasan

Case No. DIR2021-0009

1. The Parties

The Complainant is Ansell Limited, Australia, represented Saba & Co. IP, Lebanon.

The Respondent is Abbas Banihasan, Iran (Islamic Republic of).

2. The Domain Name and Registrar

The disputed domain name <ansell.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2021. On April 20, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On April 21, 2021, 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 20, 2021.

The Center verified that the Complaint and the amended 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 23, 2021. In accordance with the Rules, paragraph 5(a), the due date for filing a Response was May 13, 2021. The Respondent did not submit a Response. On May 14, 2021, the Center notified the Respondent’s default.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on June 8, 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 an Australian company that provides health and safety protection solutions.

The Complainant owns several trademark registrations for ANSELL, including registration no. 73445 ANSELL, granted on August 9, 1994, in the Iran (Islamic Republic of).

The Complainant is the holder of the domain name <ansell.com>, which has been registered on October 13, 1995.

The disputed domain name was registered on May 20, 2013 and resolves to a webpage stating “This domain is for sale”.

5. Parties’ Contentions

A. Complainant

The Complainant asserted the following:

That it is an Australian public company that provides health and safety protection solutions that enhance human wellbeing.

That it is a market leader that operates in North America, Latin America/Caribbean, Europe, Middle East, Africa, and Asia Pacific, with clients in over 100 countries, and over 13,000 employees worldwide.

That it has been recognized worldwide for its work and reputation, and that its trademark ANSELL is well‑known.

I. Identical or Confusingly Similar

That the Complainant owns several trademark registrations to its well-known trademark ANSELL around the world including Jordan, the United Arab Emirates, Kuwait, Tajikistan, Turkey, Pakistan, Qatar, and the Iran (Islamic Republic of).

That the disputed domain name is identical to the ANSELL well-known trademark.

II. Rights or Legitimate Interests

That the name of the Respondent bears no similarity to the ANSELL trademark, and that therefore there is no evidence that the Respondent has been commonly known by the disputed domain name.

That there the Respondent has not used, nor has 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.

That the Respondent is misleadingly diverting consumers to the disputed domain name to tarnish the ANSELL trademark.

That the Complainant has not authorized the Respondent to use the ANSELL trademark. That the Complainant does not consent the Respondent’s use and exploitation of its trademark.

That the Respondent is not an authorized distributor or manufacturer of the Complainant. That there is no business relationship between the Parties.

That the Respondent is offering the disputed domain name for sale without authorization of the Complainant.

III. Registered or Used in Bad Faith

That given the fact that the Complainant had already registered its trademark in Iran (Islamic Republic of), it is very likely that the Respondent must have been aware of the Complainant’s mark and products at the time of registering the disputed domain name.

That the disputed domain name incorporates in its entirety the ANSELL trademark.

That the disputed domain name is being offered for sale to make an illicit profit from the Complainant’s fame and reputation, which clearly reveals the Respondent’s bad faith.

That the Complainant sent a warning letter to the Respondent and that the latter did not respond. That the failure to respond to cease and desists letters constitutes evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered or is being used in bad faith.

Given the Respondent’s failure to submit a Response, the Panel may decide this proceeding based on the Complainant’s undisputed factual allegations according to paragraphs 5(e), 14(a), and 15(a) of the Rules, and shall draw such inferences it considers appropriate under paragraph 14(b) of the Rules (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; and Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784).

The Panel deems it appropriate to cite decisions issued per the UDRP where appropriate. This is so because the irDRP is based upon and is a variant of the UDRP, and the present case requires the analysis of matters widely dealt with in UDRP proceedings.

A. Identical or Confusingly Similar

The Complainant has proven to be the owner of trademark registrations for ANSELL throughout the world, including Iran (Islamic Republic of), where the Respondent has declared to have his domicile.

The disputed domain name <ansell.ir> is identical to the Complainant’s trademarks ANSELL, as it includes it entirely (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), see also Alfred Dunhill, Inc. v. Registration Private, Domains By Proxy, LLC / Abdullah Altubayieb, WIPO Case No. D2017-0209; Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793; F. Hoffmann-La Roche AG v. Softech Ltd., DNS Administrator (gold), WIPO Case No. D2007-1699; and F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323).

The addition of the country code top-level top level-domain (“ccTLD”) “.ir” to the disputed domain name is immaterial for purposes of assessing confusing similarity, since it is a technical requirement of the Domain Name System (“DNS”) (see, inter alia, Garmin International v. AliReza Tabibian, WIPO Case No. DIR2016-0026; and Tupras Turkiye Petrol Rafinerileri A.S. v. Hadi Farzad, WIPO Case No. DIR2016-0012).

The first element of the Policy has been met.

B. Rights or Legitimate Interests

In accordance with paragraph 4(c) of the Policy, the following examples are circumstances in which the Respondent may have rights to, or legitimate interests in, the disputed domain name:

(i) before any notice to the Respondent of the dispute, the use of, or 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
(ii) the Respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has provided enough evidence to prove that it is the owner of registrations for the ANSELL trademark in several countries, including a 2013 registration in Iran (Islamic Republic of), where the Respondent has declared to reside.

This Panel agrees with the determination reached in Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, in that the ANSELL trademark is well known.

The Complainant has asserted that there is no relationship or affiliation between the Complainant and the Respondent, that it has not granted any license, permission, authorization, or other rights to the Respondent to use its trademark ANSELL, and that the Respondent has not been commonly known by the disputed domain name (see cases Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431; and Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272). The Respondent did not contest these allegations.

The case contains no evidence that demonstrates that the Respondent has used or has 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 (see Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747; and Rolex Watch U.S.A., Inc. v. NCSO, WIPO Case No. D2010-0948).

Therefore, the Complainant made a prima facie case asserting that the Respondent lacks rights to or legitimate interests in the disputed domain names. The Respondent did not submit any evidence or arguments to challenge the Complainant’s assertions.

Therefore, the second element of the Policy has been fulfilled.

C. Registered or Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the Respondent has registered or the Respondent has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain names; or

(ii) the Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or locations or of a product or service on its websites or locations.

It is important to point out that Paragraph 4(a) of the Policy states that bad faith can be found in either the registration or the use of the disputed domain name.

As previously stated, the Complainant owns several trademark registrations for the ANSELL trademark in numerous countries, including Iran (Islamic Republic of), where the Respondent has declared to have his domicile.

Given the notoriety of said trademark, and considering that ANSELL is a fanciful trademark that is not a dictionary word, this Panel finds that the Respondent knew the Complainant at the time of registration of the disputed domain name, which constitutes bad faith registration under the Policy.

The fact that the Respondent registered the disputed domain name which entirely reproduces the Complainant’s well-known trademark ANSELL, shows that the Respondent has targeted the Complainant, which constitutes opportunistic bad faith (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980; Dream Marriage Group, Inc. v. Romantic Lines LP, Vadim Parhomchuk, WIPO Case No. D2020-1344; and Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747).

Previous panels appointed under the UDRP have found that the mere registration by an unauthorized party of a domain that is identical to a well-known trademark, can constitute bad faith in itself (see section 3.1.4 of the WIPO Overview 3.0, see also Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation; Toyota Motor Sales, U.S.A., Inc., and Toyota Motor Sales De Mexico, S. De R.L. de C.V. v. Salvador Cobian, WIPO Case No. DMX2001-0006,and Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Case No. D2003-0882).

Considering that the Policy requires the Complainant to prove bad faith either in the registration or use of the disputed domain name, and given that the Respondent has registered the disputed domain in bad faith, this finding is sufficient for the Complainant to meet the standard of the third element of the Policy.

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 <ansell.ir> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: June 22, 2021

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