The Complainant is Ubiquiti Networks, Inc. of San Jose, California, United States of America (“USA” or “United States”), represented by Morrison & Foerster, LLP, USA.
The Respondent is Seyed mehdi Seyed mohseni of Tehran, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name is registered with Realtime Register BV (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2013. At that time, the disputed domain name was registered with the registrar Cloud Group Limited. On October 25, 2013, the Center transmitted by email to Cloud Group Limited a request for registrar verification in connection with the disputed domain name. On the same day, Cloud Group Limited transmitted by email to the Center its verification response confirming that the Respondent was 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 October 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2013.
On November 20, 2013, the Center sent an email communication to Cloud Group Limited noting that the publicly-available WhoIs information for the disputed domain name seemed to have changed and requesting to restore the data that were previously confirmed. On the same day, Cloud Group Limited replied stating that that disputed domain name was unlocked and allowed to transfer away by one of its resellers that had sold it to the Respondent. On November 21, 2013, the Center sent an email communication to Cloud Group Limited, in copy to Realtime Register BV, requesting that the process to revert the previous registrar and Registrant details be initiated as soon as possible.
Following subsequent reminders of the Center on November 22 and November 25, 2013, Realtime Register BV sent an email communication to the Center, on November 25, 2013, indicating that the disputed domain name had been locked and stating that it had been transferred with valid authorization into its management, without knowledge of the pending proceedings. On the same day, Cloud Group Limited sent an email communication to the Center indicating that it had contacted the new registrar without receiving a reply and requesting to liaise directly with Realtime Register BV to prompt action on the wrongly transferred domain name.
On November 26, 2013, the Center requested to Realtime Register BV whether it was able to revert to the original registrar and registrant details for the disputed domain name. Realtime Register BV replied, on November 29, 2013, requesting to confirm the data of the original registrant and, pursuant to the Center’s confirmation on the same day, proceeded to update the WhoIs information restoring the original registrant’s details.
The Center appointed Luca Barbero, Lynda M. Braun and Nasser A. Khasawneh as panelists in this matter on December 20, 2013. The Panel finds that it was properly constituted. Each member of 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 technology company that develops platforms and equipment for wireless communications, including receivers, transmitters, routers and antennas, that are sold in the United States and in several countries of the world.
The Complainant notes that it does not, and cannot - according to the United States Economic Sanctions regarding Iran - do business or distribute its products in Iran.
The Complainant is the owner of several trademark registrations for UBNT in various countries, including the United States trademark No. 3856016, registered on October 5, 2010, in class 9; the Chinese trademark No. 8275237, registered on August 21, 2011, in class 9; and the Iranian trademark registration No. 171583, registered on July 3, 2010, in class 9.
The Complainant operates its main web site at “”.
The disputed domain name was registered by the Respondent on September 20, 2011 and, at the time of the drafting of the decision, is not pointed to an active web site. According to the screenshots submitted by the Complainant and not contested by the Respondent, the disputed domain name was pointed, prior to the filing of the Complaint, to a web site featuring the Complainant’s trademarks and promoting the sale of the Complainant’s products in Iran. 5. Parties’ Contentions A. Complainant
The Complainant points out that it has been using the trademark UBNT in connection with cutting edge wireless solutions since 2006, in addition to the UBIQUITI and UBIQUITI NETWORKS marks and the Ubiquiti logo, which have been used since at least 2005. The Complainant also informs the Panel that it has used UBNT as its NASDAQ Global Select Market symbol since it became a publicly traded company on October 14, 2011.
The Complainant alleges that it has invested a substantial amount of time, money and resources in promoting its goods and services under its marks and underlines that, as a result of its efforts, said marks embody substantial and valuable goodwill and are widely recognized by consumers as identifying the Complainant as the source of its wireless communications products and services.
The Complainant contends that the disputed domain name is identical or virtually identical and confusingly similar to UBNT, as it incorporates the trademark in its entirety, with the addition of the geographical identifier “Iran”, that does not diminish the likelihood of confusion between the trademark and the disputed domain name.
The Complainant asserts that the Respondent has no rights or legitimate interest in the disputed domain name. In particular, the Complainant states that the disputed domain name is not being used in connection with a bona fide offering of goods or services, since the Complainant’s goods cannot be sold in Iran as it is prohibited by the United States laws.
The Complainant also notes that the Respondent’s web site at the disputed domain name has copied the look and feel of the Complainant’s web site, including elements as the placement of the Complainant’s marks, images of the Complainant’s products and the Complainant’s copyright notice. The Complainant states that the Respondent’s use of the Complainant’s marks cannot constitute a legitimate use under the Policy and that the Respondent is not making a legitimate noncommercial or fair use, as the site seeks to sell the Complainant’s products for profit in a country where the products are not supposed to be sold. The Complainant contends that the Respondent’s behavior suggests an intent to compete unfairly with the Complainant and to free ride on the Complainant’s investment in researching and developing the unparalleled Ubiquiti products.
The Complainant also states that the Respondent is not commonly known by the disputed domain name and that there is no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization to use the disputed domain name.
As to the Respondent’s bad faith, the Complainant points out that the Respondent’s use of the disputed domain name and its display of the Complainant’s marks on its web site demonstrates that the Respondent is aware of the Complainant and of its rights.
The Complainant also contends that the Respondent is disrupting the Complainant’s business, as the potential consequences of sales of the Complainant’s products in Iran are severe and the Respondent’s behavior disrupts the Complainant’s distribution model and exposes the Complainant to sanctions from the United States government. The Complainant notes that third parties have pointed to the Respondent’s web site as proof that the Complainant is selling its products in Iran in violation of the United States policy and alleges that consumers in the Middle East are likely to be confused and defrauded by the Respondent’s offering of products that look like the Complainant’s ones. In addition, the Complainant points out that the Respondent’s web site may cause the Complainant’s authorized distributors in the Middle East to be misled into thinking that it is permissible to sell the Complainant’s products in Iran. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Procedural issues: Cyber-flight and Mutual Jurisdiction
The disputed domain name has been transferred to another registrar after the commencement of the proceedings, modifying also the registrant’s name and contact details.
The Panel finds that this conduct amounts to a cyber-flight, in contravention of paragraph 8 of the Policy, that prohibits the transfer of the domain name registration to another holder and/or to another registrar during a pending administrative proceeding.
As mentioned in the Procedural History, pursuant to the Center’s request, the registrar Realtime Register BV restored the original registration details of the Respondent, that remains, therefore, the sole registrant of the disputed domain name.
The registrar change pending the UDRP proceedings entails, however, additional consequences in respect of the mutual jurisdiction, as the Complainant elected the courts at the location of the principal office of the concerned registrar.
In exercising its discretion to conduct this administrative proceeding in such manner as considered appropriate in accordance with the Policy and the Rules according to paragraph 10 of the Rules, the Panel finds that the registrar from which the disputed domain name registration was transferred (Cloud Group Limited) remains the registrar for the purposes of paragraph 3(b)(xiii) of the Rules and that the transfer of the disputed domain name does not affect the Panel’s finding on this point. See, along these lines, LPG SYSTEMS v. Jerry / Mr. Jeff Yan,WIPO Case No. D2010-0387. 7. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service 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. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of, inter alia, trademark registrations for UBNT in the United States and in Iran, where the Respondent is based.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark since, pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive or generic terms to a trademark is not a distinguishing feature.
Therefore, the mere addition of the geographic name “Iran” and of a hyphen to UBNT does not exclude the confusing similarity between the disputed domain name and the Complainant’s trademark.
Furthermore, the top Level Domain “.com” may be excluded from consideration as being merely a functional component of a domain name.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003 0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581; Banco Itau S.A. v. Laercio Teixeira,WIPO Case No. D2007-0912; Accor v. Eren Atesmen,WIPO Case No. D2009-0701).
In the case at hand, the Panel determines that the Complainant has established a prima facie case, as described below. By not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. In addition, there is no indication before the Panel that the Respondent, whose name is Seyed mehdi Seyed mohseni, is commonly known by the disputed domain name.
The Panel finds that the Respondent’s redirection of the disputed domain name to a web site that is virtually identical to the Complainant’s one and uses without authorization the Complainant’s marks to promote the sale of products in Iran does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel notes that, in light of the prior registration and use of the trademark UBNT in connection with the technology products of the Complainant and, above all, of the fact that the Complainant’s trademark and the look and feel of the Complainant’s site were reproduced by the Respondent on its site, where purported UBNT products were offered for sale, the Respondent was very likely aware of the Complainant’s trademark at the time of the registration of the disputed domain name, with which it is confusingly similar.
In light of the above-described use of the disputed domain name, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the web site and of the products promoted thereon, according to paragraph 4(b)(iv) of the Policy.
The Panel has furthermore taken note of the Complainant’s considerations with regard to any sale of its products in Iran.
The Panel also finds that the Respondent’s transfer of the disputed domain name to a different registrar upon receiving notification that a UDRP proceeding had been commenced against it is an additional circumstance evidencing the Respondent’s bad faith.
The fact that the disputed domain name does not currently point to an active website does not change the Panel’s findings.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith. 8. 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 be transferred to the Complainant.
Luca Barbero
Presiding Panelist
Lynda M. Braun
Panelist
Nasser A. Khasawneh
Panelist
Date: January 3, 2014
Full & Egal Universal Law Academy