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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alfa Laval Corporate AB v. Izak Sedighpour

Case No. DIR2021-0016

1. The Parties

The Complainant is Alfa Laval Corporate AB, Sweden, represented Advokatbyrån Gulliksson AB, Sweden.

The Respondent is Izak Sedighpour, Iran (Islamic Republic of).

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2021. On July 14, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On July 17, 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.

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 July 21, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2021. On August 17, 2021, the Center notified the Respondent’s default.

The Center appointed William A. Van Caenegem as the sole panelist in this matter on August 23, 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 asserts that it is a world brand leader in relation to heat transfer, separation, and gas and fluid handling. The Complainant is based in Sweden. It has over 200 trademark registrations. In relation to Iran (Islamic Republic of) it has the following registrations for the ALFA LAVAL word mark: Reg. No. 47196, Registration date August 11, 1977 registered in classes 6, 8, 9, 11, and 37; and Reg. No. 1111236, Registration date November 9, 2009, registered in classes 1, 3, 5, 6, 7, 9, 11, 14, 18, 21, 25, 28, and 37.

The Complainant also owns a number of domain names that include its trademark, including <alfalaval.com>, <alfalaval.us>, and <alfalaval.co.uk>.

The disputed domain name was registered by the Respondent on February 25, 2019. The Respondent is not currently making any use of the disputed domain name, and the Complainant provided evidence that the website at the disputed domain name was resolving to a parking page where the domain name was for sale.

5. Parties’ Contentions

A. The Complainant

According to the Complainant the disputed domain name is identical to its ALFA LAVAL trademark, including as registered in Iran (Islamic Republic of).

Further according to the Complainant, the disputed domain name currently leads to a web page that states that “this site can’t be reached.” It has previously been offered for sale. Passive holding of this kind does not, asserts the Complainant, give rise to any rights or legitimate interests. As far as the Complainant is aware the Respondent has never used the ALFA LAVAL trademark to refer to any goods or services and is not known by that name, nor does he own any trademark rights in it. The Complainant has never authorized or licensed the Respondent to make any use whatsoever of its trademark. The Complainant asserts that ALFA LAVAL is a well-known trademark and therefore the Respondent cannot conduct any activities by reference to that name without infringing the Complainant’s trademark rights.

Because the ALFA LAVAL trademark is highly distinctive, the Complainant says that it is likely that the Respondent had the Complainant’s trademark in mind when the Respondent registered the disputed domain name. According to the Complainant, the Respondent has previously used the disputed domain name for the sole purpose of offering it for sale, thus demonstrating that it was registered primarily for the purpose of monetization at the expense of the Complainant. The Complainant has sought the transfer of the disputed domain name from the Respondent, but without success.

The Complainant contends that the Respondent has engaged in a pattern of conduct of this kind. The Complainant refers to a number of other domain names the Respondent registered incorporating third party trademarks, that he sought to sell to the trademark owners concerned. WIPO UDRP1 panels found in favor of the trademark owners in both cases. Although passive holding does not automatically result in a finding of bad faith, here in all the circumstances such a finding is warranted, in particular because no legitimate use of the distinctive ALFA LAVAL trademark can be envisaged, and because the Respondent offered the disputed domain name for sale and has engaged in a pattern of similar conduct.

Accordingly, as the Complainant asserts, the circumstances indicate that the disputed domain name was registered for the purpose of selling, renting or otherwise transferring it for valuable consideration in excess of out-of-pocket expenses. The registration also prevents the Complainant from making legitimate use of the disputed domain name.

B. The Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is identical to the Complainant’s ALFA LAVAL trademark.

The applicable country-code Top Level Domain (“ccTLD”) “.ir” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

B. Rights or Legitimate Interests

The Respondent does not make any current use of the disputed domain name. The Respondent has previously offered the disputed domain name for sale. There is nothing before the Panel to indicate that the Respondent is known by the disputed domain name or “Alfa Laval” or has any legal rights by force of use or registration of that distinctive name as a trademark in Iran (Islamic Republic of) or anywhere else. The disputed domain name incorporates in its entirety the highly distinctive ALFA LAVAL trademark of the Complainant. The Respondent has not contested anything contained in the Complaint.

Additionally, UDRP panels have found that domain names that are identical to a complainant’s trademark carry a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

The ALFA LAVAL trademark of the Complainant is highly distinctive and has been in use for a very long time, and that in many jurisdictions where it also benefits from trademark registrations. It is well nigh impossible to conceive of any legitimate use the Respondent could make of the disputed domain name, identical as it is to the Complainant’s trademark. Furthermore, the Respondent has also offered the disputed domain name for sale in the past, all the while preventing the Complainant from using it legitimately. Passive holding, as in the current circumstances, can amount to use in bad faith. The Respondent has not filed any response or offered any explanation in relation to his registration of the disputed domain name or the purpose of his current possession of it.

Finally, the Panel notes that the Respondent was involved in two previous cases under the Policy (Merz Pharma GmbH & Co. KgaA v. Izak Sedighpour, WIPO Case No. DIR2020-0013 and Poclain Marketing & Services v. Izak Sedighpour, WIPO Case No. DIR2020-0011), which is further evidence of bad faith under paragraph 4(b)(ii) of the Policy.

Therefore the Panel holds that the disputed domain name was registered and used in bad faith.

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 <alfalaval.ir> be transferred to the Complainant.

William A. Van Caenegem
Sole Panelist
Date: September 1, 2021

1 Given that the .IR Policy is a variant of the Uniform Domain Name Dispute Resolution Policy (“UDRP”), this Panel considers it appropriate to refer, to the extent applicable, to decisions rendered under the UDRP.

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