The Complainant is World Trade Centers Association, Inc., United States of America, (“United States”) represented by Saba & Co. Intellectual Property s.a.l., Lebanon.
The Respondent is Ebrahim Hefzi, Pardisan, Afghanistan. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2021. On April 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2021, the Registrar transmitted by email to the Center its verification response: (a) confirming it is the Registrar for the disputed domain name; (b) confirming that the Respondent is listed as the registrant and providing the contact details; (c) indicating the Respondent registered the disputed domain name on April 13, 2013; (d) indicating the language of the registration agreement is English; (e) confirming that the registration agreement included an acknowledgement that the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”). 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 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2021. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 11, 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 was founded in 1968 in the United States when the first “World Trade Center” was established in New Orleans in the United States. It is a not-for-profit, non-political association dedicated to the establishment and operation of “World Trade Centers” as instruments of international trade expansion. According to the Complaint, as of May 2020, its operations included some 323 properties licensed in 90 countries staffed by what the Complaint describes as “15,000 WTC professionals”. Amongst other things, the Complainant owns a registered trademark in Iran (Islamic Republic of), Registered Trademark No. 295797, for a device featuring a representation of a map of the world and the letters WTC. The application for this trademark was filed on December 22, 2013, although it appears it was not formally registered until March 7, 2018. It is registered in respect of a range of services in International Classes 35, 36, 37, 38, 41, 42, 43 and 45. The Complainant also has another trademark registered in Iran (Islamic Republic of), No. 295808, for the same map of the world device and the words WORLD TRADE CENTER. This registered trademark was filed and registered on the same dates as Registered Trademark No. 295797 and in respect of services in the same classes as that trademark. As noted above, the disputed domain name was registered on April 13, 2013. It resolves to a website. The print out included in Annex 6 to the Complaint is in English. Amongst other things, it features two depictions of the Complainant’s registered WORLD TRADE CENTER and map trademark. The text under a rotating carousel of images of what, presumably, is intended to be a “World Trade Center” complex includes the following: “Tabriz, as the city of the first [sic], has been trying to establish the first world trade center in the country for many years. There are more than 330 world trade centers in the world and in more than 100 countries. The huge project of Tabriz World Trade Center includes Tabriz World Trade Center tower with 41,000 square meters of infrastructure and Tabriz World Trade Shopping Center with an area of more than 150,000 square meters.” Tabriz is a city in Iran (Islamic Republic of). 5. Discussion and Findings No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case. When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark 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. Noting that the Registrar has confirmed that the language of the registration agreement is English and that the website to which the disputed domain name resolves includes an English language version, the Panel considers that it is appropriate to adopt English as the default language of the proceeding in accordance with paragraph 11 of the Rules. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of the two registered trademarks identified in section 4 above. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview a”), section 1.7. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. It is also usual to disregard the design elements of a trade mark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10. That is not the case here. The acronym “WTC” is the natural verbal reference for the Complainant’s registered trademark No. 295797. Disregarding the “.com” gTLD, therefore, the disputed domain name consists of the verbal component of the Complainant’s registered trademark No. 295797 and the term “-tabriz”. As noted above, Tabriz is an important city in Iran (Islamic Republic of). As the first requirement under the Policy is essentially a standing requirement, the addition of such geographical term does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name. The Panel recognises that a three letter acronym like “WTC” could represent many different people or things depending on the context. However, the Panel notes, as discussed above, that the acronym is an essential verbal component of the Complainant’s registered trademark. If there were any doubt, moreover, it is permissible to take into account the content of the website to which the disputed domain name resolves. As noted in WIPO Overview 3.0, section 1.15, the content of a website is usually disregarded when considering whether a domain name is confusingly similar to a complainant’s trademark. However, UDRP panels have recognised that it is permissible to reference the content of a website in cases of doubt to confirm whether it appears prima facie that the respondent has been targeting the complainant’s trademark. In the present case, there can be no doubt that the Respondent is targeting the Complainant. As recorded in section 4 above, the website to which the disputed domain name resolves prominently displays the Complainant’s WORLD TRADE CENTER and map registered trademark – including the symbol ®. The website features images representing a “World Trade Center” complex and the text plainly associates the development with the Complainant’s organisation. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent, who has given his address as a place in Afghanistan, is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. Given the Respondent is not associated with the Complainant or the Complainant’s organisation in any way, the Respondent’s use of the Complainant’s trademarks for what is apparently a competing service does not qualify as a good faith offering under the Policy. These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. The disputed domain name was registered before the Complainant’s trademarks in Iran (Islamic Republic of) were filed or registered. However, the Complainant had been operating World Trade Centers since 1968 and, it is fair to say, using the acronym WTC for many years prior to 2013. Accordingly, there can be little doubt that the Respondent was aware of the Complainant and its trademarks when the Respondent registered the disputed domain name. The use of the disputed domain name to convey what is apparently a false association with the Complainant and the Complainant’s organisation constitutes bad faith under the Policy. The Panel finds, therefore, that the Respondent has registered and used the disputed domain name in bad faith. Accordingly, the Complainant has established all three requirements under 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, Warwick A. Rothnie
Sole Panelist
Date: May 24, 2021
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