WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Reza Pahlavi v. iranian security, Reza Pahlavi(511723), DNS MANAGER, ABSOLUTEE CORP. LTD., Harris Fellman, Steve Renner Case No. D2009-1501 1. The Parties
The Complainant is Reza Pahlavi of Maryland, United States of America, represented by Christian Charriere-Bournazel, France.
The Respondents are Iranian security of Tehran, Islamic Republic of Iran; Reza Pahlavi(511723) of Virginia, United States of America; DNS MANAGER, ABSOLUTEE CORP. LTD. of Hong Kong, SAR of People's Republic of China; Harris Fellman of Nevada, United States of America; and Steve Renner of Minnesota, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2009. On November 5, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain names. On November 9, 2009, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response, providing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. In response to a notification by the Center regarding administrative deficiency, the Complainant filed an amended Complaint on November 23, 2009. On November 25, 2009, the Center sent a query to OnlineNic, Inc. d/b/a China-C, asking for an explanation for the discrepancy between the entities identified as the registrant of the disputed domain names in its WhoIs database and the ones identified in its response of November 9, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceeding commenced on December 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2009. The Respondents did not submit any formal Response. Accordingly, on December 29, 2009, the Center sent an email to the Respondents, notifying them that the Center had not received any formal response and would proceed to appoint an administrative panel.
The Center appointed David J.A. Cairns as the sole panelist in this matter on January 12, 2010. 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 the author of various books relating to Iran, including ‘Winds of Change: The Future of Democracy in Iran', Regnery Publishing, Inc. (January 2002) and ‘IRAN l'heure du choix', Editions Denoël (February 2009). The Complainant does not own any registered trademarks.
The Panel entered the websites hosted at the disputed domain names on January 14, 2010. Both the disputed domain names hosted an identical website. This website was headed with the name ‘Reza Pahlavi' and on the landing page contained news items dated December 2009. There were various links, in three languages, including links to ‘Speeches', ‘Messages to the Nation', ‘Interviews', ‘Press Releases', ‘Articles of Interest' and ‘About Reza Pahlavi'. The ‘About Reza Pahlavi' included the following text:
“Since the establishment of the clerical regime in Iran, and the passing of his father, the late Shah of Iran, Reza Pahlavi has been a leading and vocal advocate of the principles of freedom, democracy and human rights for his countrymen. In 1978, Reza Pahlavi, then Crown Prince of Iran, left his homeland to complete his higher education in the United States. An accomplished jet fighter pilot, Reza Pahlavi completed the United States Air Force Training Program at the former Reese Air Force Base in Lubbock, Texas. He is a Political Science graduate of the University of Southern California. Reza Pahlavi has lived in Morocco, Egypt and, since 1984, the United States. He married Yasmine Etemad Amini on June 12, 1986. Yasmine is a graduate of George Washington University School of Law. Together with his wife and three daughters, Noor (April 3, 1992), Iman (September 12, 1993) and Farah (January 17, 2004), they reside in the state of Maryland. Born on October 31, 1960, in Tehran, Iran, Reza Pahlavi is the eldest of four. Since the tragic passing of the late Leila Pahlavi (March 27, 1970 - June 10, 2001), Reza Pahlavi's siblings include Farahnaz (March 12, 1963), a brother Ali Reza (April 28, 1966), as well as a half-sister, Shahnaz (October 27, 1940).”
There is also a link entitled ‘Books'. This leads to a webpage with extracts or links relating to both the Complainant's books referred to above.
The website reproduced on both disputed domain names deals with the Complainant as a person, as an author, an international commentator on Iran, and a former Crown Prince of Iran. It is not simply a website about the Complainant; this is apparently identical to his personal website and includes his personal contact details. 5. Parties' Contentions A. Complainant
The Complainant states that from 1999 to 2008 the disputed domain names were registered by the Complainant, but in October 2008, in the middle of the domain names' registration period, the domain names were transferred to the Respondents' registrar without the knowledge of the Complainant. The Complainant states that Internet searches of the term ‘Absolutee Corp' revealed that the Respondents Mr. Harris Feldman and Mr. Steve Renner are connected with this company.
The Complainant states that the disputed domain names are identical to the Complainant's REZA PAHLAVI trademark. The Complainant states that it has common-law rights in the REZA PAHLAVI trademark. It states that the trademark has become distinctive through the Complainant's use and the exposure of the trademark in the marketplace for books, in particular for readers seeking to learn more about the political situation in Iran. The Complainant's personal history and in-depth knowledge of Iranian history have made him a well-known and sought after author, and he is the author of several commercially successful books, including those referred to above. The Complainant states that he does not need to have a registered trademark for the purposes of the Policy as unregistered or common-law trademark rights are sufficient when the Complainant demonstrates secondary meaning associated with the mark. Several other individuals have had common-law marks recognized for commercially successful books. The Complainant states that the disputed domain names are identical to the Complainant's REZA PAHLAVI trademark because the only difference between the two is the addition of the generic top domain ‘.com' and ‘.org' which is irrelevant under the Policy.
The Complainant states that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant has never licensed or otherwise authorized the Respondents to use its trademark for any purpose. Further, the Respondents are not using and have not demonstrated any intent to use the disputed domain names in connection with any bona fide offering of goods or services; the Respondents are not and have not been commonly known by the disputed domain names; and the Respondents are not making a legitimate noncommercial or fair use of the disputed domain names.
The Complainant states that the fact that the Respondents since obtaining control of the disputed domain names continue to point the disputed domain names to the Complainant's website and not to a website of their own confirms that they have no legitimate interest in the disputed domain names.
The Complainant also states that the disputed domain names were registered and are being used in bad faith. The disputed domain names were registered on March 25, 1999 by the Complainant, and the website to which the disputed domain names are directed is the Complainant's website, and not the Respondents' website. The Complainant states that in December 2008 he realised that he no longer had access to his domain names, and that his domain names had been transferred without his consent. The Complainant states that the entire circumstances around the ‘fraudulent transfer' of the disputed domain names from the Complainant to the Respondents without the Respondents being able to provide any explanation of how they obtained the disputed domain names clearly demonstrate the bad faith of the registration'.
The Complainant states that the Respondent Absolutee Corp. Ltd. is also registrant of the domain name which is being used to commercialize keylogging software i.e., covert software whose function is to steal passwords remotely. Further, Mr. Feldman apart from being associated with the Absolutee Corp. Ltd. has another domain name called .
The Complainant also refers to further evidence of bad faith registration and use including: (i) the fact that the Respondents offerred to transfer the disputed domain names to the Complainant during an Internet chat session ‘but did not provide more specifics'; (ii) the fact that the Respondents, through ‘Absolutee Corp. Ltd.' have been involved as respondent(s) in other UDRP proceedings; (iii) the fact that the Respondents have clearly tried to conceal their identities and that the name Absolutee Corp. Ltd. clearly is a fictitious name; (iv) that the WhoIs information for the disputed domain name was modified after the Complaint had been filed, and that clearly false registration details had been provided; (v) that in the circumstances the Respondents' passive holding of the disputed domain names and by continuing to direct them to the Complainant's website constitutes bad faith.
The Complainant requests that the disputed domain names be transferred to the Complainant. B. Respondent
None of the Respondents submitted a substantive response to the Complainant's contentions.
There were various communications from the Respondent Harris Fellman denying any connection with the disputed domain names. Mr. Fellman's communications included a short message of November 18, 2009 (“And this has what to do with me?”), as well as a further message on December 3, 2009, as follows:
“Listen to me please…
I have *NOTHING* to do with this.
Do better research.”
Mr. Fellman's fullest response on December 13, 2009 was as follows:
“For the record.
I have nothing to do with Absolutee. I've never heard of them. The documentation that was included by Respondent was just some one-time listing that ANYONE could have created. That was the first time I ever saw that web page. So, I don't know who created it. Have ya LOOKED AT IT???
I do not make any money from ‘domaining' or the domain names business. I've never said that I did. Nor have I ever created a product on the domain name business. I think I've sold one domain name in my life and I may have interviewed a couple of domaining experts, but that's it..
My site on ‘site stealing' was just a marketing twist -- it just teaches people to MODEL successful sites.
Not actually steal anything. I created a funny character on that site named ‘Sal the Site Stealer' who behaves like an ex mafia guy. It should be noted that this is a parody. (I'm afraid of being accused of being in the mafia next!)
Seriously – you're barking up the wrong tree and it's kind of sad. I wish you'd stop wasting my time.
It's a lot of time over a $9 domain name that has no value to anyone other than Reza Pahlavi.
Can't ICANN jump in here already and communicate directly with whomever owns the domain???
Geez!” 6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) that the Respondents' domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondents have rights and legitimate interests in the disputed domain names.
The Panel notes the multiple Respondents named in this Complaint. The Respondents Harris Fellman and Steve Renner were named in the original Complaint on the basis that they were the individuals behind Absolutee Corp. Ltd., DNS MANAGER, ABSOLUTEE CORP. LTD. was added as the Respondent in the Amended Complaint, on the basis this was the registrant of both disputed domain names identified in the Registrar's verification response of November 9, 2009. However, after November 9, 2009 and notwithstanding the Registrar's confirmation on this date that the disputed domain names would remain locked during this administrative proceeding, the registration data for the disputed domain names was changed, so that ‘iranian security' appeared as the registrant for the disputed domain name , and ‘Reza Pahlavi(511723)' appeared as the registrant for the disputed domain name . It is not clear why or how the registration data was changed after the Registrar had confirmed the disputed domain names had been locked.
As noted above, all the named Respondents were notified of the amended Complaint on December 3, 2009.
The Panel is satisfied that all the Respondents were properly named as the Respondents in this proceeding, given the confusion regarding the identity of the true registrant or registrants of the disputed domain names. The Respondent Harris Fellman has responded to the notification of the Complaint and the Amended Complaint denying any involvement in Absolutee Corp. Ltd. Given the importance of ensuring the proper notification of a complaint, and the means available to confuse or conceal a registrant's true identity, the listing of multiple respondents, as in this case, is inevitable. A. Identical or Confusingly Similar
The Complainant does not own any registered trademark, and bases the Complaint on unregistered or ‘common law' trademark rights in his own name. The Complainant refers to three UDRP decisions recognising the common law or unregistered trademark rights of authors of commercially successful books.
There are many UDRP decisions relating to the common law or unregistered trademark rights of authors or celebrities in their own names. Some of these decisions explicitly or implicitly identify the complainant's common law or unregistered trademark rights with a particular jurisdiction (see in particular Jeanette Winterson v. Mark Hogarth,WIPO Case No. D2000-0235; Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210), while others do not (Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000,WIPO Case No. D2006-0431). It has been suggested that the prudent course for a complainant relying on common law or unregistered trademark rights is to identify a particular jurisdiction which both recognises common law or unregistered trademark rights as a matter of law, and where the complainant can prove its ownership of common law or unregistered trademark rights as a matter of fact (see Patricia Ann Romance Peterson, Romance Productions Ltd. v. Network Operations Center/Alberta Hot Rods,WIPO Case No. D2006-1431).
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions (paragraph 1.7) states that the consensus view regarding what needs to be shown in order to successfully assert common-law or unregistered trademark rights is that “the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning' includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant's rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.”
In the present case, the Complainant is resident in the United States, and in addition the Respondents are resident in Hong Kong and the United States. The United States and Hong Kong are both common law jurisdictions where unregistered trademarks are protected, and so the Panel concludes that it is appropriate for the Complainant to base his complaint on common law rights, provided those rights can be established in fact.
On the evidence presented, the Panel is satisfied that the name REZA PAHLAVI is commercially used by the Complainant as a trademark and that the name has become a distinctive identifier associated with the Complainant because: (i) The Complainant is the author of books commercially available for purchase; (ii) the Complainant's profile as an author and as a political commentator (and his ability to sell books) on Iran is enhanced by his unique position as a former Crown Prince; (iii) the Complainant has operated a personal website since 1999 that promotes his activities as a political commentator on Iran, and includes links to websites offering his publications for sale.
Once the Complainant establishes his rights in a trademark, the first element of the Policy requires a comparison between the disputed domain name and the trademark. In determining whether a disputed domain name is identical or confusingly similar to the Complainant's trademark the relevant comparison involves the second-level portion of the domain name only (here, ‘rezapahlavi'). Clearly a trademark does not usually include a URL prefix (here, “www”), or a top-level domain name suffix (here, ‘.com' and ‘.org') that are functional elements of a domain name, and the comparison required for the first element of the Policy must exclude these elements. These elements are incapable of performing any distinctive function, and it is well-established that they should not be considered in making this determination (see Segway LLC v. Chris Hoffman,WIPO Case No. D2005-0023; D. Ronaldo de Assis Moreira v. Eladio García Quintas, WIPO Case No. D2006-0524; and LDLC.COM v. LaPorte Holdings, WIPO Case No. D2005-0687). Further, a domain name cannot contain separate words, which must of necessity be compressed to a single word or be joined by a hyphen or hypens. Accordingly, there is no significance in the fact that the Complainant's trademark comprises two words that are compressed together in the disputed domain names.
On this basis, the Panel finds that the disputed domain names are identical with the Complainant's trademark REZA PAHLAVI. Accordingly, the first element required by the Policy is satisfied. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondents in the disputed domain names: (i) there is no evidence that the Respondents own or have contractual rights in any registration of a REZA PAHLAVI trademark; (ii) the Respondents are not authorised or licensed by the Complainant to use the REZA PAHLAVI trademark or to register and use the disputed domain names; (iii) there is no evidence that the Respondents are using or preparing to use the disputed domain names in connection with a bona fide offering of goods or services; and (iv) the Respondents have not been commonly known by the disputed domain names. On this last point, the registration details for the disputed domain name were amended after the Complaint was filed to refer to ‘Reza Pahlavi(511723)' but there is no other evidence corroborating that a Respondent exists with the name ‘Reza Pahlavi'.
In respect of paragraph 4(c)(iii) of the Policy the Panel considers that the Respondents are not making a legitimate noncommercial or fair use of the disputed domain names. The use of the disputed domain names is to reproduce the Complainant's own website. This is exactly the same use as was made by the Complainant himself prior to the Respondents' acquisition of the disputed domain names. For the reasons further explained in the next section the Respondents are representing to Internet users who go to the disputed domain names that the dispute domain names are still owned and controlled by the Complainant. This representation is false and misleading, and therefore the Respondents' use is not ‘legitimate' or ‘fair' within the meaning of paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel concludes that the Respondents have no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the that the disputed domain names both were registered and are being used in bad faith. The circumstances of registration in this case are not free from uncertainty. It is not at all clear how the Respondents obtained the registration of the disputed domain names. The Complainant alleges a ‘fraudulent transfer' and suggests that keylogging software might have been used, but there is no proof of the use of illegal means. On the other hand, the Respondents have not responded to the Complainant's challenge to clarify how the registrations were obtained. Error or inadvertence on the part of the Complainant or the original registrar and the opportunistic acquisition of the disputed domain names by the Respondents might also explain the basic facts of the case.
There is also uncertainty regarding the Respondents' intentions on registration. The Complainant refers to receipt of an email from the Respondents inviting the Complainant to enter into an Internet chat session where there was an offer to sell the domain names. However, the Complainant did not annex the email, there is no evidence that any price was mentioned, and in general the details provided of the conversation are so sketchy that it is not possible to draw the conclusion that the primary purpose of the Respondents' acquisition of the disputed domain names was to sell them to the Complainant at a price exceeding their out-of-pocket costs.
Nevertheless, it is clear that the disputed domain names have been registered and are being used in bad faith. The Respondents since acquiring the disputed domain names have simply retained the pre-existing link to the Complainant's own website. The Panel infers from this fact that the Respondents knew at the time of registration who the Complainant is, knew of his activities as a writer and a political commentator, were aware of his website and also that the disputed domain names had previously been directed to this website. Registration of the disputed domain names in these circumstances constitutes bad faith because by continuing the pre-existing use of domain names that correspond exactly to the personal names of the Complainant and were previously owned by the Complainant, in this Panel's view: (i) the Respondents are making an implicit representation to Internet users that these domain names are in fact still owned or controlled by the Complainant and this representation is false; and (ii) the Respondents are creating an association between their domain names and the reputation of the Complainant with a potential for deception or disruption. This is unacceptable, at least in the absence of a satisfactory explanation from the Respondents of their intentions for the registration and use of the disputed domain names.
It is important to note that it is not simply the registration of a domain name with the intention of linking the domain name to the website of another person without that person's consent that constitutes bad faith. This case is distinguished by its additional circumstances, particularly the identity of the disputed domain names with the name of the owner and subject of the website as well as the Complainant's prior ownership and use of the disputed domain names for the same purpose.
For similar reasons the Panel is also satisfied that the Respondents are using the disputed domain names in bad faith. The Respondents continue to hold the disputed domain names so as to be in a position to take advantage of the trademark of the Complainant (see Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037), and it is not possible to conceive of any plausible actual or contemplated use of the disputed domain names by the Respondents that would not in all likelihood amount to be bad faith use within the meaning of the Policy (see Ladbroke Group PLC v. Sonoma International LDC,WIPO Case No. D2002-0131). 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
David J.A. Cairns
Sole Panelist
Dated: January 26, 2010
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