The Complainant is WABCO IP Holdings LLC of Rochester Hills, Michigan, United States of America (“United States”), represented by Göhmann Rechtsanwalte Abogados Advokat Steuerberater Partnerschaft, Germany.
The Respondent is Hasan Mohammadnia of Tabriz, Islamic Republic of Iran (“Iran”). 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Realtime Register B.V. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2016. On November 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 4, 2016, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2016. The Respondent submitted informal email communications to the Center on November 14, 2016, November 15, 2016, November 22, 2016, and December 1, 2016. The Respondent did not submit a formal response. Accordingly, on December 1, 2016, the Center informed the Parties of the commencement of the Panel appointment process on December 1, 2016.
The Center appointed John Swinson as the sole panelist in this matter on December 6, 2016. 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 IP holding entity of the WABCO group. According to the Complaint, WABCO was founded nearly 150 years ago, and is one of the leading global suppliers of technologies and services that improve the safety, efficiency and connectivity of commercial vehicles. It has more than 12,000 employees and offices or subsidiaries in 24 countries. In 2007, it was listed on the New York Stock Exchange. In 2015, it reported sales of USD 2.6 billion.
The Complainant is responsible for WABCO’s intellectual property rights. The Complainant owns trade marks for WABCO in 79 countries, the earliest of which was registered in Canada on May 3, 1921 (the “Trade Mark”). The Complainant also owns an Iranian trade mark registration for WABCO, registered on July 1, 2006.
The Respondent is Hasan Mohammadnia, an individual of Iran. The Respondent did not file a formal Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on July 29, 2014.
The website at the Disputed Domain Name is currently inactive, but before notice of the dispute, the website advertised safety and efficiency products and spare parts for commercial vehicles under the Trade Mark as well as the trade mark KNORR, of Knorr-Bremse AG, a major competitor of WABCO. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the Trade Mark. The word “Iran” in the Disputed Domain Name should be disregarded as it is a geographical descriptor without any inherent distinctiveness.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant did not grant the Respondent permission to use the Disputed Domain Name. He is not a licensee, sales representative or official dealer of the Complainant or the WABCO group.
The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. In particular, the Respondent’s use of the Disputed Domain Name does not fulfil the requirements in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, as the website at the Disputed Domain Name promotes the Complainant’s products, but also imitations of the Complainant’s products and a competitor’s products. Also, the Respondent incorrectly states that he is a sales representative for WABCO.
The Respondent has not been commonly known by the Disputed Domain Name. The Trade Mark is exclusively associated with the Complainant.
Registered and Used in Bad Faith
The Respondent registered and is using the Disputed Domain Name in bad faith, as he has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the website or products on the website.
The website at the Disputed Domain Name impersonates the Complainant so that Internet users looking for an Iranian WABCO website will be diverted to the website at the Disputed Domain Name. Also, the Respondent offers competing products at that website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. In the Respondent’s informal email communications to the Center, the Respondent acknowledged receipt of the Center’s notice of the Complaint, stated that the website at the disputed domain name would be taken down, indicated that the website at the disputed domain name had been taken down, stated that he did not know the “wabcc” brand, and asked if it would be possible to work for the WABCO group. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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 and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response. A. Procedural Issues
Following receipt of the Complaint, the Respondent submitted informal email communications to the Center advising that he had removed the website at the Disputed Domain Name. These communications did not address the elements of the Policy or reply to the Complainant’s contentions, and was not correctly certified, and as such, do not constitute a response under the Policy.
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark has been wholly incorporated into the Disputed Domain Name and has been combined with the term “Iran”, which is a geographical location.
It is more likely than not that a person would interpret the geographical descriptor as subordinate to the Trade Mark, which is the dominant and distinctive part of the Disputed Domain Name (see e.g. Statoil ASA v. N/A Alex,WIPO Case No. D2013-0713).
In light of the above, the Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
Rights or legitimate interests can be demonstrated by the Respondent’s bona fide use of the Disputed Domain Name in connection with an offering of goods or services, before it received notice of the dispute (paragraph 4(c)(i) of the Policy).
Before notice of the dispute, the Respondent was using the Disputed Domain Name to sell the Complainant’s and other products in Iran. Following notification of the Complaint, the Respondent removed this website.
The Complainant states that the Respondent is not licensed to sell its products, and is falsely claiming to be an authorized distributor.
As the Complainant submitted, it is helpful to consider the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”) and the principles described in that decision in relation to bona fide use of a Disputed Domain Name by a reseller. Even if the Respondent was not an authorized distributor for the Complainant, the Oki Data principles have been extended to apply to resellers who do not have a contractual relationship with a trade mark owner (see, e.g., DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481).
The panel in Oki Data stated that a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if its use meets the following requirements:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trade marked goods (otherwise, there is the possibility that the respondent is using the trade mark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trade mark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trade mark owner of the ability to reflect its own mark in a domain name.
As this Panel stated in Pangaea Laboratories Ltd, Pacific Direct Intertrading Pty Ltd v. Astrix Pty Ltd,WIPO Case No. DAU2015-0013, “Oki Data is an exception to a general rule. The general rule is that it is generally not permissible to register a domain name that is the same as another’s trade mark rights, knowing of those trade mark rights, to seek traffic to a commercial website. Oki Data is a narrow exception to this rule for legitimate resellers, distributors and dealers. Oki Data is also subject to any agreement between the parties.”
At present, there is no website at the Disputed Domain Name, and it is unclear whether the Respondent continues to sell the Complainant’s products. If the Respondent is no longer doing so, the principles from Oki Data do not apply (see e.g. ESET, spol. s.r.o. v. Antivirus Australia PTY Ltd., Rodney Fewster, ESET Pty Ltd.,WIPO Case No. DAU2015-0014).
Based on the evidence before the Panel, the Respondent’s use of the Disputed Domain Name prior to notice of the dispute did not meet the second or third elements of the Oki Data test. According to the Complainant, the Respondent was not only using the Disputed Domain Name to sell the Complainant’s products, but also imitations of the Complainant’s products, as well as KNORR products (which compete with those offered by the Complainant). Further, the Respondent falsely stated on his website that he is a sales representative of the Complainant and Knorr-Bremse (the owner of the KNORR products). The Respondent used the Trade Mark and the Complainant’s branding throughout the website, and made available the Complainant’s product catalogue.
The Panel finds that the Respondent was not using the Disputed Domain Name to only sell the Trade Marked goods, and did not accurately disclose his relationship with the Trade Mark owner. As such, the Respondent’s use of the website at the Disputed Domain Name does not constitute a bona fide offering of goods or services under the Oki Data test.
The Respondent’s use of the Complainant’s branding is further evidence that the Respondent has relied on the goodwill in the Trade Mark to entice Internet users to his website, where the potential for bait-and-switch selling was high. This conclusion is consistent with those of previous panels in similar circumstances (see, e.g. Daimler AG v. William Wood,WIPO Case No. D2008-1712 and the cases cited therein).
Use of the Disputed Domain Name in these circumstances is not legitimate. The Panel finds the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests.
The Respondent had the opportunity to file a Response to demonstrate his rights and legitimate interests in the Disputed Domain Name, but did not do so. Without further evidence from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Given that the website at the Disputed Domain Name advertised the Complainant’s products for sale, there is no doubt that the Respondent was aware of the Complainant at the time he registered the Disputed Domain Name.
As stated above, the Respondent also used the website at the Disputed Domain Name to sell products of Knorr-Bremse, a major competitor of the Complainant, as well as imitation WABCO products under the brand WBACC (which was very similar in appearance to the stylized WABCO trade mark).
The likely effect of this is that Internet users in Iran who were looking for legitimate avenues through which to purchase the Complainant’s product were diverted to the Respondent’s website, resulting in sales being diverted from the Complainant to the Respondent. This is evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
The fact that the Respondent removed the website at the Disputed Domain Name following notice of the dispute does not negate the previous bad faith use.
The Complainant succeeds on the third element 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, , be transferred to the Complainant.
John Swinson
Sole Panelist
Date: December 19, 2016
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