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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

JSP Limited v. Mr. Hasan Gholinavaz Heris

Case No. DIR2021-0029

1. The Parties

The Complainant is JSP Limited, United Kingdom, represented Wynne-Jones IP Limited, United Kingdom.

The Respondent is Mr. Hasan Gholinavaz Heris, Iran (Islamic Republic of).

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2021. On December 17, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On December 18, 2021, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the additional contact details for the registrant of the disputed domain name.

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 23, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2022. On January 13, 2022, the Center notified the Respondent’s default.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on January 19, 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 operates in the field of personal protective equipment (“PPE”). The Complainant was founded in 1964 in the United Kingdom. The Complainant owns many trademark registrations for JSP internationally such as:

1. Iran (Islamic Republic of) trademark registration No. 112981 for JSP registered on July 26, 2004.
2. International trademark registration No. 1272009 for JSP registered on August 7, 2015.

The Complainant operates the domain name <jspsafety.com>.

The disputed domain name was registered on September 11, 2021. The disputed domain name resolves to a webpage, which offers the Complainant’s products, and displays the Complainant’s logo.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant owns the trademark JSP which is registered in many countries. The disputed domain name is identical to the Complainant’s trademark if the suffix “safety.ir” is disregarded.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorized or licensed by the Complainant to use its trademark. There is no evidence that any of the circumstances listed in paragraph 4(c) are met.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name resolves to a website, which advertises falsely the Complainant’s PPE products using the logo branding of the Complainant. The disputed domain name was registered with the intent to mislead consumers by creating confusion with the Complainant’s trademark and products for commercial gain.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for JSP. The Panel is satisfied that the Complainant has established its ownership of the trademark JSP.

It is established by prior panels that when a domain name incorporates a complainant’s registered trademark, such incorporation is sufficient to establish identity or confusing similarity for the purposes of the Policy even if other words are added as part of the disputed domain name. E.g., Oki Data Americas, Inc v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”)1. The disputed domain name incorporates the Complainant’s trademark JSP in its entirety. The word “safety” does not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s trademark. The country-code Top-Level Domain (“ccTLD”) “.ir” should generally be ignored when assessing confusing similarity as established by prior decisions. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant asserts that the Respondent is not authorized by the Complainant to use its trademark. The Respondent should prove that it has rights or legitimate interests.

According to the Policy, the use of the disputed domain name would be legitimate if it is used in connection with a bona fide offering of goods or services. The website to which the disputed domain name resolves offers products of the Complainant. Therefore, there may be an argument that the disputed domain name is being used in connection with a bona fide offering of products. In line with the Oki Data test, a number of requirements have to be met (see Oki Data,supra):

1. “Respondent must actually be offering the goods or services at issue”;
2. “Respondent must use the site to sell only the trademarked goods”;
3. “The site must accurately disclose the registrant’s relationship with the trademark owner”; and
4. “The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name”.

The Panel analyzes each of these requirements below:

a. Requirement no. 1: This requirement is met in the instant case as the disputed domain name resolves to a website, which offers the Complainant’s products.
b. Requirement no. 2: The requirement is met apparently.
c. Requirement no. 3: This requirement is not met as the website does not include a statement demonstrating that it does not belong or is not affiliated with the Complainant.
d. Requirement no. 4: This requirement is met as there are no numerous registrations by the Respondent of domain names containing the trademark of the Complainant.

Requirement no. 3 has not been met. Therefore, it is the Panel’s view that the requirements of the Oki Data test have not been met.

Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent clearly knew of the Complainant’s business and trademark as the disputed domain name resolves to a website offering the products of the Complainant. The nature of the disputed domain name suggests affiliation with the Complainant as it incorporates the Complainant’s trademark in full. The use of the term “safety” reinforces the impression that the disputed domain name is associated to the Complainant’s website as it reflects the Complainant’s field of business, and the website at the disputed domain name reproduces the Complainant’s logo (also noting the similarity between the disputed domain name and the Complainant’s own domain name). As such, the disputed domain name suggests a false affiliation with the Complainant in order to attract Internet users for commercial gain.

Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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 <jspsafety.ir> be transferred to the Complainant.

Nayiri Boghossian
Sole Panelist
Date: January 26, 2022

1 Noting the substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to prior UDRP cases, where appropriate.

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