WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OVH SAS v. Tohid Fooladi, Netiran IT Co., Ltd

Case No. DIR2021-0027

1. The Parties

The Complainant is OVH SAS, France, internally represented.

The Respondent is Tohid Fooladi, Netiran IT Co., Ltd of Iran (Islamic Republic of).

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2021. On November 25, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On November 27, 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 December 6, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2021. On December 28, 2021, the Center notified the Respondent’s default.

The Center appointed Antony Gold as the sole panelist in this matter on January 6, 2022. 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 with its headquarters in Roubaix, France, which provides a range of information technology-related services in multiple countries, including cloud computing, domain name reservation, data hosting and Internet telephony.

The Complainant provides its services under the brand OVH and it has registered a number of trade marks to protect this trading style. These include, by way of example only, International Trade Mark, registration number 1085468, for OVH, registered on August 5, 2010 in classes 9, 35, 36 38, 39, 41 and 42, designating multiple countries, including the United States of America. The Complainant also owns the domain name <ovh.com>. This domain name redirects to a website operated by the Complainant at “www.ovhcloud.com”, which provides information about the Complainant’s cloud-related services.

The disputed domain name was registered on July 20, 2013. As at the time of submission of the Complaint, the disputed domain name resolved to a website purporting to provide portals to an English language website at <ovh.com> and its Persian language equivalent at <ovh.ir>. In fact, both websites appear to have been situated at the disputed domain name. The home page of the English language version asserted that it was “The Great OVH Support Portal in Persian” and claimed that “Our services include management and support of services that the Great OVH provided them for you”. Among the services listed on the home page were “Web Hosting”, “Cloud Computing” and “VOIP Services”. The website used a logo very similar to that used by the Complainant on its website.

The disputed domain name presently redirects to the Complainant’s website at “www.ovhcloud.com”¹ .

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It refers to its registered marks for OVH, including the mark in respect of which details are given above, and says that the disputed domain name consists of its trade mark coupled with the country code Top-Level Domain (“ccTLD”) “ir”. The ccTLD has in general no influence on the assessment under the first element because it is a necessary requirement for registration. Accordingly, the disputed domain name is identical to the Complainant’s mark.

The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant and has not been authorised by it to use and register its trade marks nor to seek registration of any domain name incorporating its marks. Use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent and trading upon the name, goodwill and reputation of another cannot be considered to constitute a bona fide commercial or fair use of the disputed domain name within the meaning of paragraph 4(c(i) of the Policy. The fact that the disputed domain name reproduces the Complainant’s trade mark and features the products and services covered by it may lead Internet users to think that the website at the disputed domain name is that of the Complainant or is associated with it.

Finally, the Complainant says that the disputed domain name was registered and/or is being used in bad faith. The Respondent is using the Complainant’s mark on a website promoting goods and services in the same field as that in respect of which the Complainant’s marks are used. As the Respondent reproduces the verbal and figurative marks of the Complainant in the disputed domain name, it is clear that the Respondent registered it in order to represent falsely that it is the Complainant’s official website in Iran (Islamic Republic of). There is bad faith where a respondent has created a website that is nearly identical to that of a complainant or where it creates a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or a product or service on it; see Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001.

B. Respondent

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

6. Discussion and Findings

Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate.

Paragraph 4(a) of the Policy provides that the Complainant prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its trade mark registrations for OVH, full details of one of these marks having been set out above, and has thereby established its rights in this mark.

For the purpose of considering whether the disputed domain name is identical or confusingly similar to the Complainant’s mark, the ccTLD “.ir” is disregarded as this is a technical requirement of registration. The disputed domain name contains the entirety of the Complainant’s trade mark without any additional elements and is accordingly identical to the Complainant’s mark.

The Panel therefore finds that the disputed domain name is identical to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods or services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.

The initial use of the disputed domain name to resolve to a website purporting to be the website of the Complainant in Iran (Islamic Republic of) and thereby mislead Internet users who were searching for the Complainant, did not comprise use of it in connection with a bona fide offering of goods and services. As explained at section 2.13.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)² “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. Nor does the current use of the disputed domain name to redirect to the Complainant’s website comprise use of it in connection with a bona fide offering of goods and services; see HedgeServ Holding L.P. v. Alicia Slaney, WIPO Case No. D2020-1688.

There is no evidence that the Respondent has been commonly known by the disputed domain name and the second circumstance under paragraph 4(c) of the Policy is therefore inapplicable. The third circumstance is also inapplicable; the Respondent is making a commercial use of the disputed domain name and its identity to the disputed domain name means that it carries a high risk of implied affiliation with the Complainant, which prevents its use from being considered fair; see TechSmith Corporation v. Mohammad Zandian, mohandesmoallem, WIPO Case No. DIR2021-0022.

Once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests; see by way of example, PRADA S.A. v. AliReza Khansoltani, WIPO Case No. DIR2012-0002. In the absence of any response from the Respondent to the Complaint, the Respondent has failed to satisfy that burden. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

The fact that the disputed domain name is identical to the Complainant’s mark and that, following registration, it has been used to resolve to a website claiming to be “The Great OVH Support Portal in Persian” and offering substantially the same Internet and cloud-based services as the Complainant points to an awareness by the Respondent of the Complainant’s trade mark and business as at the time of registration of the disputed domain and that it was registered in order to take advantage of the Complainant’s repute in its mark. As explained at section 3.1.4 of WIPO Overview 3.0, panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In the circumstances of this case, the Panel finds the registration of the disputed domain name to have been in bad faith.

The use of the disputed domain to resolve to the Respondent’s website, as described above, falls within the circumstance of bad faith registration and use described at paragraph 4(b)(iv) of the Policy in that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website; see Société des Produits Nestlé S.A. v. Mohammadreza Radmanesh, WIPO Case No. DIR2017-0023. The belief of Internet users that the Respondent’s website was operated by, or on behalf of, the Complainant will have been reinforced because of the identity between the disputed domain name and the Complainant’s OVH trade mark.

The current use of the disputed domain name to redirect to the Complainant’s website is equally in bad faith in that it demonstrates an intention on the part of the Respondent to cause confusion to Internet users by suggesting that it is owned and/or controlled by the Complainant; see section 3.1.4 of the WIPO Overview 3.0 and HedgeServ Holding L.P. v. Alicia Slaney (supra).

The Panel notes additionally, that the Respondent has not made any attempt to justify its conduct or to rebut the Complainant’s assertions.

The Panel accordingly finds that the disputed domain name has both been registered and is being 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 <ovh.ir> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: January 20, 2022

¹ Exercising its powers under paragraph 10(a) of the Policy (see also Emerson Electric Co. / RIDGID, Inc. v. Mohamadali Jalali, WIPO Case No. DIR2018-0005), the Panel has sought to visit the website at the disputed domain name to establish what use is currently being made of it. It has also visited the Internet archive known as the Wayback Machine and ascertained that the Respondent’s website, as described above, was first established in around 2014.