The Complainant is Technogym S.p.A., Italy, represented by Iusgate, Italy.
The Respondent is Domain Administrator, Registrant of technogymiran.com, Turkey / Bahram Behzadi, Talahost, Tehran, Islamic Republic of Iran. 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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 17, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 18, 2020. The Center verified that the Complaint together with the amended 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 December 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2021. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 3, 2021. 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 an Italian joint-stock company founded in 1983 and states that it is a world-leading international supplier of products, services and solutions in the fields of fitness and wellness with 2,000 employees and 14 branches across Europe, the United States of America, Asia, the Middle East, Australia and South Africa. It has been an official supplier for the last seven Olympic Games. The Complainant has used the TECHNOGYM trademark since 1986 and is the owner of a variety of figurative, stylized and non-stylized registered trademarks for this mark, including for example, international registered trademark no. 866986 for the word mark TECHNOGYM, registered on February 18, 2005 in classes 9, 28, 41 and designated in respect of some 21 countries including the Islamic Republic of Iran, where the Respondent is based. An example of the Complainant’s figurative/stylized TECHNOGYM marks may be found in international registered trademark no. 1419563 for the mark TECHNOGYM in a distinctive black on yellow style, where the crossbar of the “T” and tail of the “Y” are elongated over the top and bottom of the word respectively, registered on December 22, 2017 in class 28 and designated in respect of the Islamic Republic of Iran. The disputed domain name was registered on March 10, 2019. A translated screenshot of the website associated with the disputed domain name produced by the Complainant, dated November 11, 2020, is titled “Representation of technojim [sic] sports equipment in Iran”, below which is the Complainant’s black on yellow figurative mark. Under this is a general description referring to the Complainant’s business and its status as supplier to various Olympic Games. Thereafter, there is a section headed “TECHNOJIM SERVICES” with links titled “CONSULTING”, “DESIGNING”, “INSTALLATION”, and “EDUCATION”, beneath which are images of a variety of fitness equipment, some of which bear the Complainant’s figurative mark. 5. Parties’ Contentions A. Complainant The Complainant contends as follows: Identical or confusingly similar The disputed domain name is confusingly similar to the TECHNOGYM Trademark in which the Complainant has rights, due to the fact that the disputed domain name incorporates the textual components of the TECHNOGYM trademark in their entirety and has the addition of the suffix “iran”. The applicable Top-Level Domain (in the present case, “.com”) is to be ignored for the purpose of determination of identity or confusing similarity. The inclusion of a trademark in its entirety, together with the incorporation of a specific geographic term in a disputed domain name, does not diminish the confusing similarity. Rights and legitimate interests The disputed domain name previously resolved to a website in the Persian language reproducing the Complainant’s trademark and making use of the images of the Complainant’s President of the Board of Directors as well as products, pretending to be the “Representation of Technojim sports equipment in Iran”. The website at the disputed domain name uses a similar domain name for a contact email address as that of an Iranian domain name which the Complainant is also disputing under the applicable dispute resolution policy. The Respondent has no right, title or authorization from the Complainant to use its trademark in any domain name or website. The Complainant has no contractual, commercial or economic relationship (or any involvement of any nature) with the Respondent. The Complainant does not currently offer its products or services for sale in the Islamic Republic of Iran, so that the website at the disputed domain name will mislead Internet users, creating the false impression that the Complainant has officially introduced and is marketing its products in the Iranian marketplace. The disputed domain name and associated website intentionally trade on the fame of the Complainant and suggest affiliation with TECHNOGYM trademark, where there is none. Registered and used in bad faith The registrant of the disputed domain name appears to have taken steps to conceal its identity by use of an entity name which is not an identifiable legal person, along with a Turkish address and telephone number when the associated website relates to the Islamic Republic of Iran. The supply of false contact information is evidence of bad faith on the Respondent’s part. The Complainant’s trademarks are well known in the fitness field and the Respondent is exploiting these with the unequivocal aim of creating the impression among Internet users that the disputed domain name and associated website is related to the Complainant and its TECHNOGYM trademarks. The Respondent seeks to divert customers/Internet users and generate income through illicit means, manifestly showing bad faith registration and use of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. A. Identical or Confusingly Similar The Complainant has demonstrated to the Panel’s satisfaction that it has rights in the TECHNOGYM trademark by virtue of the registered trademarks described in the factual background section above. The Respondent has not taken issue with the Complainant’s submissions on this topic. Comparing this mark to the disputed domain name, it may be seen that the latter consists of two elements, namely the Complainant’s mark followed by the term “iran”. Panels may find confusing similarity in terms of paragraph 4(a)(i) of the Policy where, as in this case, the domain name concerned incorporates the entirety of a trademark (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Furthermore, section 1.8 of the WIPO Overview 3.0 notes that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights and accordingly that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (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”. The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based on its primary assertion that the website at the disputed domain name falsely indicates that the Respondent is the authorized representative for the Complainant in the Islamic Republic of Iran, that said website features images of the Complainant’s personnel and the Complainant’s figurative mark without authorization, and that this will lead to confusion because the Complainant does not offer its products in the Islamic Republic of Iran. In short, the Respondent is impersonating the Complainant and Internet users are being misled that the Complainant has introduced its products into the Iranian marketplace when it has not done so. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of any rights or legitimate interests which it might claim in respect of the disputed domain name. The Respondent has failed to file a Response or otherwise to engage with this administrative proceeding and it has therefore placed neither evidence nor submissions before the Panel which might have demonstrated such rights or legitimate interests. The Panel notes for completeness that it has considered whether, as a potential distributor of the Complainant’s products (albeit unauthorized by the Complainant) the Respondent might have claimed that it was making nominative fair use of the Complainant’s mark and thus had rights and legitimate interests in the disputed domain name. The nature of the disputed domain name itself points against this, given that placing the Complainant’s mark with a geographic term and no other clarifying words misleadingly suggests that the Respondent has received the Complainant’s authorization to represent it in respect of the territory concerned (see section 2.5.1 of the WIPO Overview 3.0). Considering the nature of the website itself, the use of the Complainant’s figurative mark together with an image of the Complainant’s personnel and the term “Representation of [the Complainant’s products] in Iran” suggest a commercial affiliation between the Parties where none exists (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0). Finally, on this topic, the Panel notes that the Respondent would have been unable to meet the “Oki Data” test (as fully described in section 2.8 of the WIPO Overview 3.0) on the basis that the website associated with the disputed domain name does not accurately and prominently disclose the registrant’s relationship with the trademark holder. The Panel notes the Complainant’s submission that the website at the disputed domain name uses a similar domain name for a contact email address as that of an Iranian domain name which the Complainant is also disputing under the applicable dispute resolution policy. The significance of that information is not clear to the Panel and it has not been fully explained in the present Complaint. In any event, the Panel considers that the present Complaint must be considered entirely on its own merits. This approach is consistent with the provisions of paragraph 15(a) of the Rules. In these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case in respect of rights and legitimate interests and therefore that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”. UDRP panels have typically determined that for bad faith registration and use to be made out there must be a degree of targeting of a complainant or its mark, or at the very least that a respondent must have had the complainant or its trademark in mind when selecting the disputed domain name (The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743). The Panel finds that such knowledge and targeting is evident in the present case. Given the use to which the disputed domain name has been put, there is no doubt that the Respondent knew of the Complainant’s rights at the point when it registered the disputed domain name, selecting the Complainant’s distinctive TECHNOGYM mark as the principal and most dominant element. The disputed domain name has subsequently been used in connection with the associated website to suggest that the Respondent either is the Complainant or officially represents it in the Islamic Republic of Iran despite the fact that the Complainant does not have any such representation and that its products have not been introduced in that marketplace. Both the disputed domain name itself and the representations made by the Respondent on the associated website suggest a commercial connection with the Complainant where none is present. This is likely to lead to confusion on the part of Internet users. The Respondent has received an opportunity to explain its registration and use of the disputed domain name and to indicate any good faith motivation which it might have but has chosen not to participate in the administrative proceeding. The Panel has not been able to identify any actual or potential good faith motivation on the basis of the present record in the absence of any contribution from the Respondent. The Panel is satisfied in the circumstances of this case that registration and use in bad faith is made out in terms of paragraph 4(b)(iv) of the Policy, namely that the Respondent has used the disputed domain name intentionally to attract, for commercial gain, Internet users to the associated website by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or endorsement of said website. Accordingly, the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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 Andrew D. S. Lothian
Sole Panelist
Date: February 17, 2020
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