The Complainant is Atlas Copco AB of Nacka, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Seyedmohsen Nazeri, Ertebat Gostarane Iran of Esfahan, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service, Langenbach GmbH dba J (the “Registrar”). 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 Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2018, 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 March 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on April 25, 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. 4. Factual Background
The Complainant is a manufacturer and distributor of a diverse range of mechanical equipment, including compressors, air treatment systems, mining equipment and power tools. Its head office is in Sweden. It was founded in 1873 and now conducts business, directly or through distributors, in approximately 180 countries. In the Islamic Republic of Iran, the Complainant trades through an exclusive distributor.
The Complainant’s trading style is “Atlas Copco” and it has registered a number of trade marks for ATLAS COPCO, including International Trade Mark Registration No. 997914 for ATLAS COPCO, in logo form, registered on October 20, 2008 in multiple classes, including class 7 (machine tools). This trade mark is in force in a number of countries, including in the Islamic Republic of Iran. The Complainant has also registered various domain names which incorporate its trade mark, including , and .
The Respondent is an individual based in the Islamic Republic of Iran. The disputed domain name was registered by him on September 26, 2013. It resolves to a website, the home page of which features photographs of motorized mechanical engineering equipment together with accompanying text in Persian script. The home page prominently features the Complainant’s registered logo trade mark for ATLAS COPCO and this trade mark also features on a number of the other web pages. Screen prints of further pages from the Respondent’s website, provided by the Complainant, which have been translated by it into English using Google’s website translation facility, show further uses of the Complainant’s logo. These include a page on which, underneath the Complainant’s trade mark, a number of buttons containing text are arranged laterally across the page, with the translated headings on the buttons including “contact us” and “about company”. The Google translation of a text box on another web page contains the translated headings “Atlas Copco Air Compressor Center in Iran” and, beneath that, the words “Supplier Atlas Copco products in Iran”. 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name entirely incorporates its ATLAS COPCO trade mark. The generic Top-Level Domain (“gTLD”) “.com” does not serve to distinguish the disputed domain name from the Complainant’s trade mark. The addition of the geographic term “Iran” does not assist in distinguishing the disputed domain name from the trade mark and may even suggest that there is a connection between the geographic location and the trade mark. Accordingly, the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known by the name ATLAS COPCO, nor has it established any rights in that name.
The website to which the disputed domain name resolves does not comprise a bona fide offering of goods and services. The overall look and feel of the Respondent’s website is similar to that of the Complainant’s website and the appearance of the equipment featured on the Respondent’s website is similar to the equipment offered for sale by the Complainant. The Respondent asserts that it is acting as a “representative” of the Complainant in the Islamic Republic of Iran but its use of the Complainant’s trade mark does not constitute a bona fide offering of goods and services as a reseller of trademarked goods; see sections 2.4, 2.5 and 2.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and the decision of the panel in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Specifically, one of the four conditions in Oki Data Americas, Inc. for establishing fair use by a respondent who purports to sell a complainant’s products is that its website should accurately and prominently disclose its relationship with the trade mark holder. However, the Respondent does not only fail to disclaim any affiliation with the Complainant but, as is evidenced by the translation of his website, the Respondent has wrongly claimed to be the Complainant’s “Supplier Atlas Copco products in Iran” and an “Atlas Copco Air Compressor Center In Iran”. This is untrue and the Respondent’s use of the Complainant’s logo is without the approval of the Complainant. Furthermore, section 2.5.1 of the WIPO Overview 3.0 indicates that domain names, such as the disputed domain name, which comprise a third party’s trade mark and a geographical term, are likely to be perceived as affiliated with the trade mark owner.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The disputed domain name itself suggests an affiliation with the Complainant and the look and feel of the Respondent’s website supports the website’s explicit claims of association with the Complainant. As there is no relationship between the Parties, the Respondent is misleading Internet users for commercial gain. The Respondent intentionally chose the disputed domain name, based on the Complainant’s well-known ATLAS COPCO trade mark. There is no disclaimer on the Respondent’s website to explain that there is not any relationship between him and the Complainant. Rather, the Respondent has claimed to be a representative of the Complainant and is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of his website. As is evident from, by way of example, the decision of the panel in Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No.
D2002-0946, the form of websites which mislead Internet users in this manner constitutes evidence of both bad faith registration and use under the Policy.
Furthermore, the Respondent was previously the owner of another domain name incorporating a third party’s trade mark which also had an association with the Islamic Republic of Iran, namely . This points to the Respondent systematically registering domain names which include third party trade marks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Dealing, first, with the Respondent’s failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the registered trade mark ATLAS COPCO, the details of which are set out above. For the purpose of comparing the disputed domain name with the Complainant’s trade mark, the gTLD “.com” is disregarded, as domain extensions are a technical requirement of the Domain Name System. Accordingly, the only difference between the disputed domain name and the Complainant’s trade mark is the space between the words “Atlas” and “Copco”, which cannot be represented within the DNS and which, in any event, is insignificant, together with the addition of a hyphen, followed by the word “Iran”.
As the Complainant has explained, the inclusion of “Iran” as a suffix will be considered by Internet users as a reference to the Islamic Republic of Iran and the disputed domain name overall is likely to be perceived as a domain name which relates to the Complainant’s operations in Iran. Accordingly, the added elements do not serve to distinguish the disputed domain name from Complainant’s trade mark.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show 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) it can show that it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Previous panel decisions have established that, if a complainant establishes a prima facie case that none of the above grounds are applicable, the burden of production shifts to the respondent.
Circumstances (ii) and (iii) above are, on the facts as outlined above, inapplicable; there is nothing to suggest that the Respondent has been known by the disputed domain name and the website to which it points is plainly commercial in character. The issue which requires consideration is whether the evidence available to the Panel indicates that the Respondent has been using the disputed domain name in connection with a bona fide offering of goods and services.
As the Complainant has pointed out, whilst the decision in Oki Data, related to circumstances in which the respondent was an authorized distributor of the complainant’s products, the principles are also of application to websites operated by other resellers and distributors. The four criteria applied in Oki Data are cumulative, in that, each of them has to be found to be present in order for a respondent’s website to be considered to comprise a bona fide offering of goods and services. The Complainant has focused on one of the criteria, namely whether the Respondent’s website accurately discloses its relationship with the Complainant.
There has been no challenge by the Respondent to the accuracy of the translation of the screen prints of his website submitted by the Complainant and obtained using Google’s website translation facility. Those show web pages which include prominent use of the Complainant’s ATLAS COPCO logo trade mark in conjunction with photographs of machinery said by the Complainant to be similar to that which it manufactures and supplies. Use of phrases such “Atlas Copco Air Compressor Center in Iran” and “Supplier Atlas Copco products in Iran” in conjunction with the Complainant’s stylized ALTAS COPCO logo, create the strong impression that the Respondent’s website is operated by, or with the approval of, the Complainant. According to the Complainant, the web pages do not feature any form of disclaimer in Persian which would serve to correct this impression. In the absence of any challenge by the Respondent to this assertion, it is accepted by the Panel.
In the absence of any form of disclaimer on the Respondent’s website, which accurately and prominently discloses the lack of any form of relationship with the Complainant, the Panel finds that the form of the Respondent’s website does not meet the criteria applied in Oki Data. There is nothing in the evidence available to the Panel to suggest that the Respondent might be able to establish a right or legitimate interest on any other basis and, indeed, he has not attempted to do so. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Complainant’s ATLAS COPCO mark is inherently distinctive. The registration by the Respondent of the disputed domain name, which incorporates the trade mark in its entirety and couples it with the geographical term “Iran”, points to an awareness of the Respondent of the Complainant and its business as at the date of registration. Furthermore, section 3.2.1 of the WIPO Overview 3.0 explains that the inherent nature of a domain name, for example, a domain name which incorporates a complainant’s mark together with a descriptive or geographic term, are among the factors which panels would consider in assessing whether the registration of a domain name is in bad faith.
Moreover, as explained at section 3.1.4 of the WIPO Overview 3.0 “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”.
The fact that, at some point following the date of registration, the Respondent pointed the disputed domain name to a website which offers for sale products which are similar to the Complainant’s products strongly suggests that this was the purpose for which the disputed domain name was registered. Internet users seeing the Respondents website will plainly be misled into believing that the website is operated by or with the approval of the Complainant and the Respondent has taken no steps to attempt to dispel that confusion.
Paragraph 4(b) of the Policy sets out, without limitation, four circumstances which, if found by a panel to be present, will be considered as evidence of bad faith registration and use of a domain name. The circumstance set out at paragraph 4(b)(iv) of the Policy is, in summary, if, by using a domain name a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Respondent’s conduct falls squarely within these provisions. The Panel accordingly finds that the disputed domain name has both been registered and is 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 name be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: May 15, 2018
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