The Complainant is Atlas Copco AB of Nacka, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Mohammadreza Jabbari, Atlas Caspian of Qazvin, Islamic Republic of Iran; Mohammad Reza Jabbari, Atlas Caspian Compressed Air Industries of Tehran, Islamic Republic of Iran, self-represented. 2. The Domain Names and Registrars
The disputed domain name is registered with Realtime Register B.V; the disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2018. On March 22, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 23, 2018 and April 8, 2018, the Registrars transmitted by email to the Center their verification responses 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 April 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2018. On April 25, 2018, the Respondent submitted a Response and requested to extend the due date for Response for four days. The Center notified the Parties that the due date for Response was extended to May 5, 2018.
On May 5, 2018, the Respondent submitted an email indicating that it had “removed” the disputed domain names. The Center notified the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension by May 12, 2018. On May 7, 2018, the Respondent submitted one further informal email. On May 14, 2018, the Complainant filed an email requesting the Center to proceed to appoint a panel.
The Center appointed Steven A. Maier as the sole panelist in this matter on May 17, 2018. 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.
Notwithstanding the slight variation in the respective registrants’ names, the Panel is satisfied that the disputed domain names are in the common control of the Respondent. 4. Factual Background
The Complainant is a company registered in Sweden. It supplies goods including air compressors, vacuum solutions and air treatment systems internationally.
The Complainant is the owner of trademark registrations including the following:
- Israel trademark number 11013 for the word mark ATLAS registered on January 6, 1952 in Class 7;
- International Trademark number 997914 for a figurative mark including the stylized words ATLAS COPCO registered on October 20, 2008 and designating numerous jurisdictions including the Islamic Republic of Iran (“Iran”).
The disputed domain name was registered on January 19, 2011.
The disputed domain name was registered on April 12, 2016.
According to evidence submitted by the Complainant, both of the disputed domain names have resolved to websites which include images of goods similar to those offered by the Complainant and include references to the name Atlas Copco. 5. Parties’ Contentions A. Complainant
The Complainant states that it is a world-leading supplier to over 180 countries, which has traded since 1873 and has its own operations in more than 90 countries.
The Complainant submits that both of the disputed domain names are identical or confusingly similar to its trademarks ATLAS and ATLAS COPCO, in that they merely combine the distinctive mark ATLAS with the geographical identifier “Caspian”.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of either of the disputed domain names. In particular, the Complainant states that it has no affiliation with the Respondent, that the Respondent is not commonly known by either of the disputed domain names, and that the Respondent is using the disputed domain names misleadingly to suggest to Internet users that it is the Complainant’s representative in Iran.
For similar reasons, the Complainant submits that the disputed domain names have been registered and are being used in bad faith. The Complainant says that the Respondent’s websites adopt its name, a similar design to its stylized mark and the same “look and feel” as its own websites, but offer no disclaimer or statement that the Respondent is unconnected with the Complainant.
The Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent does not address the Complainant’s allegations in detail, but consents to the cancellation of the disputed domain names.
This consent notwithstanding, the Complainant has elected to proceed to a Panel Decision. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it is the owner of a registered trademark ATLAS and a stylized trademark for ATLAS COPCO. Each of the disputed domain names adopts the name Atlas together with the term “caspian”. The Panel accepts the Complainant’s submission that this term is a geographical identifier which does not serve to distinguish the disputed domain names from the Complainant’s trademarks. Therefore, the Panel finds that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the disputed domain names. However, the Respondent has not contested the Complainant’s allegations and, in particular, has provided no explanation for its registration and use of the disputed domain names that would contradict the Complainant’s claim that they were registered in order to take unfair advantage of the Complainant’s ATLAS and ATLAS COPCO trademarks. There being no other evidence available to the Panel upon which to conclude that the Respondent has any rights or legitimate interests in the disputed domain names, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
Again, the Respondent has failed to dispute the Complainant’s allegations that it registered and has used the disputed domain names in order to misrepresent to Internet users that it was an authorized supplier of the Complainant’s goods in Iran. Further, the Panel finds both the disputed domain names to be inherently misleading and also accepts the Complainant’s submissions that the Respondent’s websites misleadingly suggest a commercial connection with the Complainant in Iran and fail to include a clear statement that no such connection exists. In particular, the Panel finds that, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its websites or of products or services on its websites (paragraph 4(b)(iv) of the Policy). The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith. 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 names, and , be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: May 18, 2018
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