The Complainant is Technogym S.p.A., Italy, represented by Iusgate, Italy.
The Respondent is Mehdi Forooan, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2020. On November 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 13, 2020, 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 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2020. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 17, 2020. 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 Technogym S.p.A., is an Italian company founded in 1983 and is a world leading international supplier of products, services, and solutions in the fields of fitness and wellness. The Complainant has about 2,000 employees and 14 branches in Europe, the United States, Asia, Middle East, Australia, and South Africa. The Complainant is the owner of several international trademark registrations for the TECHNOGYM trademark, including but not limited to the following: - International Trademark Registration, n. 645 891, TECHNOGYM (and design), registered on August 2, 1995; The Respondent registered the Disputed Domain Name The Complainant’s contentions can be summarized as follows: Identical or confusingly similar The Complainant contends that the Disputed Domain Name is confusingly similar to the TECHNOGYM trademark, for the following reasons: (i) the Disputed Domain Name incorporates the textual components of the TECHNOGYM trademark in their entirety and has the simple addition of the suffix “ir” (the two-letter country abbreviation for Iran). Rights or legitimate interest The Complainant states that it entered into a supply agreement, effective only for 2017, with a company, incorporated under the laws of Iran, named Karo Vision Salamat, whose one of the pro tempore legal representatives were the Respondent. However, this agreement has expired, and the Complainant has not given to the Respondent any approval – express or implied – to use the TECHNOGYM trademark in or as part of domain names or in any page whatsoever of a website. Moreover, the Complainant currently has not any contractual, commercial, or economic relationship with the Respondent, since the Complainant does not currently offer for sale its products/services in Iran. The Complainant further states that the Respondent’s conduct, consisting in the Respondent’s use of the Disputed Domain Name linked to a website which intentionally trades on the fame of the Complainant and suggests affiliation with TECHNOGYM trademark, where there is none, cannot constitute a bona fide offering of goods or services or any legitimate noncommercial or fair use of the Disputed Domain Name. Registration and use in bad faith The Complainant contends that the Respondent has taken deliberate steps to ensure that its identity/references cannot be determined and therefore communication with it cannot be made. Supplying false contact information in a registration is evidence of bad faith. The Complainant further states that the Respondent does not have any rights or legitimate interests in respect of the Disputed Domain Name. In addition, the Complainant contends that the TECHNOGYM trademarks are globally recognized and well established with products, services, and solutions in the fields of fitness and wellness and that said trademarks were registered and used since 1986. Finally, the Complainant states that the Respondent has used and is continuously using the Disputed Domain Name with the unequivocal aim of creating the impression amongst Internet users that the website is related to the Complainant and its TECHNOGYM trademarks and in order to divert customers/Internet users and generating income through illicit means. Thus, the Respondent registered and use the Disputed Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which the Complainants must satisfy with respect to the Disputed Domain Name in this case: “(i) the domain name is identical or confusingly similar to a trademark or service mark in the which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.” A. Identical or Confusingly Similar Based on the evidence submitted, this Panel finds that the Disputed Domain Furthermore, the Disputed Domain Name contains the Complainant’s TECHNOGYM trademark in its entirety; the addition of the hyphen with the abbreviation of Iran “ir” does not prevent a finding of confusing similarity. Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: (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 at issue. There is no evidence of the existence of any of those rights or legitimate interests. According to the Complaint, the Complainant entered into a supply agreement effective only for 2017 with a company, incorporated under the laws of Iran, named Karo Vision Salamat, whose one of the pro tempore legal representatives were the Respondent. However, the Complainant states that this agreement has expired. The Panel further notes that the Disputed Domain Name was registered in November 2016, and that while the agreement does not have a date of signature, it had a commencement date of January 1, 2017. In this regard, the Complainant states that it has not authorized, licensed, or permitted (expressly or implicitly) the Respondent to register and use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. While the website at the Disputed Domain Name prominently displays the Complainant’s logo, a small disclaimer in Persian is only available at the bottom of the website stating that “in 2016, [Karo Vision Salamat] succeeded in obtaining the exclusive representation of the Italian Technogym company” (translated by the Panel using translation tools available on the Internet). In addition, the Panel notes Complainant’s statement that it currently does not have “any contractual, commercial or economic relationship (or any involvement of any nature) with the Respondent (nor with Karo Vision Salamat or any other entity or subject in Iran), as the Complainant does not currently offer for sale its products/services in Iran”. However, the Panel finds that the Disputed Domain Name suggests affiliation, sponsorship or endorsement by the Complainant. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name. In addition, the Respondent is not known by the Disputed Domain Name. The Respondent has failed to show that it has any rights with respect to the Disputed Domain Name. Moreover, he had the opportunity to demonstrate his rights or legitimate interests, but it did not reply to the Complainant’s contentions. As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. 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. The Respondent was aware of the Complainant’s prior rights and business, noting the composition of the Disputed Domain Name, and that the Respondent displayed information on the website under the Disputed Domain Name where it offers the Complainant’s products with the Complainant TECHNOGYM trademark. The Respondent has not denied these assertions because of its default. The Panel is of the view that the Respondent knew of the Complainant’s trademark and prior rights. The Panel notes that the Disputed Domain Name was registered in November 2016, and that while the agreement between the Complainant and Karo Vision Salamat does not have a date of signature, it had a commencement date of January 1, 2017. The Panel notes that the website refers to an agreement with the Complainant in 2016. In any case, the agreement does not regulate expressly the registration and use of domain names incorporating the Complainant’s trademark. From the Complainant’s unrebutted assertions, the Respondent was not granted with an authorization to register the Disputed Domain Name nor to use it. The Panel further notes that the website at the Disputed Domain Name prominently displays the Complainant’s logo on the top, and a page with the text “about Technogym” that states in Persian “Get to know us! For more than 35 years, we at Technogym have been helping people live healthier and happier” (translation into English by the Panel using technological means). This, along with the composition of the Disputed Domain Name, serves to create the impression that the website is operated by the Complainant. Paragraph 4(b)(iv) of the Policy states: “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”. In the case at hand, in view of the Respondent’s registration of a domain name reproducing in its entirety the Complainant’s Trademark to offer the Complainant’s products, the abovementioned circumstances, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name, and its failure to respond to the Complaint lead to a conclusion of bad faith. Due to this conduct, the Panel considers likely that the Respondent intentionally created a likelihood confusion with the Complainant’s trademark and websites in order to attract Internets users for its own commercial gain, as required by paragraph 4(b)(iv) of the Policy. Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Name. 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 Pablo A. Palazzi
- International Trademark Registration n. 508 094, TECHNOGYM (and design), registered on November 17, 1986;
- International Trademark Registration, n. 866 986, TECHNOGYM, registered on February 18, 2005; and
- International Trademark Registration, n. 1 419 563, TECHNOGYM (and design), registered on December 22, 2017, for goods in international class 28, designating Iran (Islamic Republic of) (“Iran”).
Sole Panelist
Date: December 30, 2020
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