The Complainant is Intertek Group Plc of London, United Kingdom of Great Britain and Northern Ireland, represented by Urquhart-Dykes & Lord, United Kingdom of Great Britain and Northern Ireland.
The Respondent is ADFA Co of Tehran, Iran, an agent of Intertek Qeshm Inspection Company (“IQIC”), an Iranian Limited Liability Company in Qeshm Island (an Iranian Free Trade Zone). 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2010. On December 9, 2010, the Center transmitted by email to Tucows Inc., a request for registrar verification in connection with the disputed domain name. On December 10, 2010, Tucows Inc. 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 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 Respondent of the Complaint, and the proceedings commenced on December 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2011. The document titled “Response” was filed with the Center on January 2, 2011.
The Center appointed Mark Partridge as the sole panelist in this matter on January 13, 2011. 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.
On January 27, 2011, The Panel issued a Procedural Order requesting additional information and evidence from both the Complainant and the Respondent. The due date to respond to this Procedural Order was February 11, 2011. Respondent ADFA Company filed a response with the Center on February 3, 2011. IQIC filed an additional response with the Center on February 5, 2011. The Complainant’s response was filed with the Center on February 11, 2011 with a translation of an Official Gazette notice filed on February 14, 2011. IQIC submitted a supplemental response on February 13, 2011. 4. Factual Background
Intertek Group Plc of London, United Kingdom of Great Britain and Northern Ireland (“Intertek” or “Complainant”) is a global provider of quality and safety solutions and owns a large international portfolio of registrations and applications for the marks INTERTEK and INTERTEK Device (“INTERTEK Marks”) dating back to 2003. In addition, Complainant is the registrant of the domain name .
The domain name at issue in this proceeding was registered on October 12, 2009. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to the INTERTEK Marks, that Respondent does not have any rights or legitimate interest in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith by Respondent. B. Respondent
Respondent did not formally respond to the Complaint but did send an email to the Center on December 25, 2010 indicating that “the Registrant of the domain name is Intertek Qeshm Inspection Company a Limited Liability Company with Registration No. 1074( Date of Registration 2003) according to Iranian Company Law in Iran Qeshm Island and we as ADFA Co. are acting as Admin/ Billing and Technical contact of ‘Intertek Qeshm Inspection Company’”. The Registrant provided contact information for IQIC and indicated that the Complaint would be forwarded to that entity which would respond in due course.
IQIC sent an email to the Center on the same day, December 25, 2010 requesting an extension of time beyond the January 2, 2011 deadline to respond in order to translate supportive documents from Persian to English.
On January 2, 2011, IQIC submitted its Response wherein it does not dispute that Complainant has rights in the mark INTERTEK or that the Domain Name is confusingly similar to Complainant’s mark. Rather, IQIC contends that it has rights or legitimate interests with respect to the Domain Name. IQIC contends it reached an agreement in 2003 with Complainant to establish and register an Iranian Limited Liability Company in Qeshm Island (an Iranian Free Economic Zone) to provide inspection services under the name Intertek Qeshm Inspection Company. Therefore, IQIC asserts that it has a legitimate interest in the Domain Name which was registered and has been and is used in good faith. C. Claim that IQIC is Respondent and Related Entity 1. IQIC as Respondent
On January 19, 2011, Complainant submitted a Supplemental Filing which did not respond to the substance of IQIC’s filing and rather reiterated that the listed Registrant for the disputed domain name is ADFA Co., and that any submissions received from an entity not party to the proceedings (i.e. IQIC) should be disregarded.
The Panel issued a Procedural Order on January 27, 2011 requesting additional information and evidence to ascertain the relationship between IQIC and the listed Registrant as well as IQIC and Complainant.
The Panel is satisfied on the present record that the listed Registrant, ADFA, Co. is acting as administrative, billing, and technical contact of IQIC, the true owner of the domain name registration, and the Panel shall proceed to determine the merits of Complainant’s case on that basis. See, e.g., PHE, Inc. v. Aisha Haider,WIPO Case No. D2007-0992 (“Paragraph 1 of the Rules defines the “Respondent” as the “holder of the domain name registration against which a complaint is initiated”. Neither this definition, nor other provisions of the Policy and Rules, prevent a finding that a person or entity, other than the named registrant in the Whois details for the domain name, may be treated as the holder of the domain name registration in fact. This is particularly the case where it appears to the Panel that the named registrant may not exist in fact and that there may in fact be a beneficial or underlying owner of the disputed domain name. This is also supported by findings of previous panels, in which another person or entity is treated as a respondent in fact, or the beneficial owner of a disputed domain name. (See e.g. British Broadcasting Corporation v. Data Art Corporation / Stoneybrook,WIPO Case No. D2000-0683.))” 1. Relationship between Complainant and Respondent, IQIC
The available record indicates that when Complainant decided to have a direct presence in Iran, IQIC was incorporated and registered in Iran’s Qeshm Free Trade and Industrial Zone on February 8, 2003. It is undisputed that the partners in the company were Mr. Ali Hojabr, holding 51% of the shares and Intertek Testing Services Ltd (Complainant’s subsidiary) holding 49% of the shares. Complainant alleges that 2% of Mr. Hojabr’s shares were held in trust for Complainant and submits a copy of a signed declaration of trust evidencing the same. However, IQIC disputes that 2% of the shares were held by Mr. Hojabr in trust for Complainant because the transfer of shares did not take legal effect. The original Articles of Incorporation of IQIC indicate that the company was authorized to offer inspection goods and services as of January 28, 2003.
At the first meeting of the Board of Directors on February 3, 2003, Mr. Ali Hojabr was elected the Chairperson of the Board of Directors and the Managing Director of IQIC.
On June 10, 2004 at a general meeting of the partners of IQIC, it was decided that the company’s offering of goods and services would be amended. The Official Gazette of Iran published on October 31, 2004 reflected this change describing IQIC’s activities as: compilation and publication of standards and goods inspection and technical methods and translation and publication of such standards and methods as well as scientific and technical materials and articles as well as national and international news and information in the field of inspection activities in the region and world and carrying out all related operation within the limits of permit Number 82/318 dated January 25, 2004.
Complainant alleges that this change was made to limit IQIC’s activities to “become a research and publishing firm in the areas of compilation and publication of standards and the manner of inspection of goods and translating and publishing such standards” because it decided to create a branch in mainland Iran to provide inspection services and wanted to avoid a conflict between the new branch and IQIC. However, IQIC contends the change was meant to add inspecting services compilation and publication of standards to the previously authorized activities. Because neither party submitted permit Number 82/318 dated January 25, 2004 as referenced in the change, this point remains contested.
On November 5, 2005 Complainant (through its subsidiary) established a branch based in mainland Iran for conducting inspection activities, naming Mr. Hojabr as the Director.
Complainant has submitted unofficial minutes of a board meeting indicating that on December 31, 2005 the IQIC Board of Directors decided to dissolve the company. IQIC notes that these minutes alone are insufficient to dissolve a company and that pursuant to Iranian corporate law, “a law full procedure is required” in order to do so. This dispute is moot as the company was never dissolved because Complainant’s authorized representative failed to effect the liquidation of the company in contravention of her directions to do so. Shortly thereafter, Complainant terminated that individual’s power of attorney.
It is understood that Iranian law requires the affirmative vote of holders of 75% of the capital to dissolve a company and thus, Complainant has been unable to effect the December 31, 2005 resolution because Mr. Hojabr has not cooperated in the dissolution “in contravention of the resolution.” IQIC disputes the unofficial minutes including that resolution and maintains that the unofficial minutes alone are insufficient to dissolve the company and that it has continued operations accordingly. In so doing, it is undisputed that at some point after the October 31, 2004 amendment to IQIC’s authorized goods and services, IQIC’s Articles of Incorporation were amended to specifically include “inspection of goods” again and a permit from the Iranian Government was obtained to provide these services.
Complainant contends that it has been impossible to exercise any management control over IQIC, that it has not received any shareholder benefits provided under the Articles of Incorporation, and that it never authorized IQIC to register the domain name at issue in this proceeding. 6. Discussion and Findings
Paragraph 15(a) of the Rules states that 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 in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy 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 Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith. A. Identical or Confusingly Similar
The disputed domain name incorporates Complainant's mark entirely. Numerous WIPO UDRP panels have found that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy. See, e.g. The Ritz Hotel, Limited v. Damir Kruzicevic,WIPO Case No. D2005-1137.
Furthermore, the Complainant argues that the addition of the geographic descriptor “Qeshm” to the INTERTEK mark does not change the overall impression. For example, in Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628, the disputed domain name was and the panel held that “[t]he addition of the word ‘Europe’ is an indication that the domain name is that of the US Wal-Mart’s operations in Europe. . . [such that] the Panel decides that the domain name is confusingly similar. Persons dealing with, or even perusing the website of, could easily conclude that the registrant of the domain name was associated with Wal-Mart’s operation in Europe.”
Complainant has demonstrated that it owns registered trademark rights in the mark INTERTEK. The addition of the geographically descriptive phrase “Qeshm” is insufficient to avoid confusion. In fact, given that Complainant is a global corporation, the geographic term “Qeshm” enhances the potential for confusion as it suggests a branch of Complainant based in that area.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights and that Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name including: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Complainant alleges that the Respondent is not licensed or authorized to use the INTERTEK Marks. See Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (“In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks [...] the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name”). Indeed, Complainant contends that the use to which the Respondent's disputed domain name is put is to “misleadingly divert customers from the Complainant.”
Respondent asserts it has rights and interest in the domain name and has done so by presenting evidence indicating that the circumstances of paragraph 4(c) of the Policy are present.
While Complainant alleges Respondent is not authorized to use its mark in the disputed domain name, the evidence presented by both parties indicates there is a relationship between the parties (albeit unwanted by Complainant) and in light of the same, Respondent may be acting pursuant to authorization that was granted to it by Complainant which has never formally been terminated. Further the available record suggests that Respondent was and is known by the name “Intertek Qeshm,” and was authorized to use that name by Complainant. There is no evidence presented of any restriction on Respondent that prevented it from registering or owning a domain name reflecting its name.
Complainant has failed to establish that Respondent is not an authorized user of Complainant's Marks. In the absence of clear evidence demonstrating the termination of Respondent's rights as discussed above, the Panel is unable to determine Respondent’s rights.
In these circumstances, the Panel is unable to reach a finding on respondent lacking rights and legitimate interests such that the Complaint must fail because paragraph 4(a)(ii) of the Policy has not been proved in these proceedings by the Complainant. C. Registered and Used in Bad Faith
For the purposes of the bad faith provisions of paragraph 4(a)(iii) of the Policy, paragraph 4(b) sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out in paragraphs 4(b)(iii) and (iv) are that:
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
As stated earlier, Complainant alleges that Respondent's use of the disputed domain name involves diverting visitors seeking Complainant's website. This allegedly enables Respondent to benefit from the goodwill and reputation which Complainant has established and “unduly interferes with the ability of the Complainant to promote its own services” thereby “obstructing the business of the Complainant.”
However, both parties presented evidence which demonstrates the parties may be contractually related now, at the time Respondent began business, and when the domain name at issue was registered.
There seems to be a contractual dispute here regarding the continued relationship between the parties and therefore the authorization to use Complainant’s Marks, which the Panel is unable to decide in proceedings under the Policy. Prior decisions have rejected complaints where the dispute is primarily contractual and therefore outside the scope of the policy. See Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thornton,WIPO Case No. D2000-0006 (February 28, 2000). That appears to be the appropriate course here, where the dispute turns on the resolution of legal matters outside the scope of the Policy. In declining to grant relief, the Panel takes no position on the merits of the contractual dispute that exists between the parties, and naturally the present finding would in no way prevent Complainant (or indeed either party) from seeking to pursue the matter through the courts, should it so chose.
In these circumstances, the Panel is unable to reach a finding on bad faith and the Complaint must fail because paragraph 4(a)(iii) of the Policy has not been proved by Complainant. 7. Decision
For all of the foregoing reasons, the Panel decides that Complainant has not met its burden of proof under Paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. The Panel’s decision should not be read as a substantive decision on the merits of any trademark infringement claim Complainant ultimately may choose to bring in court. The decision is limited to the fact that, on this record, the existence of significant factual and legal issues makes this case inappropriate for resolution under the Policy.
Accordingly, the Panel concludes that the Complaint in the present Policy proceedings concerning the domain name is denied.
Mark Partridge
Sole Panelist
Dated: March 8, 2011
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