The Complainant is World Trade Centers Association, Inc., United States of America, represented by Saba & Co. Intellectual Property s.a.l. (Offshore) Head Office, Lebanon.
The Respondent is Mohammad Reza Sabzalipour Mohammad Reza Sabzalipour, Canada, self-represented. 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 6, 2021, 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 April 7, 2021, 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 April 8, 2021. 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 April 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2021. On April 29, 2021, the Respondent requested for an extension of time to submit a response. Accordingly, in line with paragraph 5(e) of the Rules, the Center exceptionally granted the Respondent an extension of time until May 13, 2021. The Response was filed with the Center on May 13, 2021. The Center appointed John Swinson as the sole panelist in this matter on May 28, 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 a not-for-profit association dedicated to the establishment and operation of World Trade Centers as instruments for international trade expansion. The Complainant was founded in 1968. There are over 300 properties licensed by the Complainant in 90 countries. The Complainant owns two registered trademarks in Iran (Islamic Republic of). These are: - Iranian trademark number 295757 for WTC and device dated March 7, 2018 (with application date December 22, 2013); The Respondent is an individual who is associated with the World Trade Center Tehran, and appears to be the President of that organization. According to WhoIs records, the disputed domain name was created on October 25, 2015. The disputed domain name resolved to a website (not in the English language) that appears to promote international trade, that includes the logo that forms part of Iranian trademark number 295757, and that includes a photo of people standing in front of a banner that includes that same logo. 5. Parties’ Contentions A. Complainant The Complainant made the following submissions in the Complainant: Identical or Confusingly Similar The World Trade Centers Association (“WTCA”) was founded in 1968 following the establishment of the first World Trade Center in New Orleans. The Complainant is a not-for-profit, non-political association dedicated to the establishment and operation of World Trade Centers (WTCs) as instruments for international trade expansion. The Complainant includes 323 properties licensed in 90 countries. The Complainant is an unofficial umbrella trade association that unites corporations and government agencies in international trade. The Complainant duly protects its intellectual property and is the owner of many trademark registrations for WTC and WTC variants in many countries, including Iran (the Islamic Republic of). Such registrations are in full force and effect and incontestable. The Complainant relies upon the two registrations listed in section 4 above. Consumers will be confused as to the origin of the disputed domain name and are thus led to perceive a connection between the Complainant trademark and the disputed domain name thinking that it is associated with or sponsored by the Complainant. The disputed domain name includes the Complainant’s well-known trademark in addition to “Iran”, is insufficient to differentiate the disputed domain name from the Complainant’s trademark in any meaningful way. The word “Iran” is considered a geographical indicator which creates confusing similarity and gives the impression that the Complainant does business under the name of the mark in the geographical place indicated and accordingly is insufficient to prevent the composite domain name from being confusingly similar with the Complaint’s trademark WTC. Rights or Legitimate Interests There is no evidence in the WhoIs of the disputed domain name that the Respondent: - has “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; Nothing in the WhoIs information for the disputed domain name, or website, or the record demonstrates that the Respondent is commonly known by the disputed domain name. The Complainant had not authorized the Respondent to use the WTC trademark in any way, either as an organization name or as a domain name. Registered and Used in Bad Faith Without any authorization from the Complainant, and without any legitimate right, the Respondent used the WTC trademark in the disputed domain name to attract Internet users for commercial gain, especially that this unauthorized use of the mark creates a likelihood of confusion among consumers and misleads them about the business relationship with the Complainant. Without any authorization from the Complainant, and without any legitimate right, the Respondent is using the WTC trademark on the Respondent’s website at the disputed domain name. The Respondent failed to respond to a warning letter sent by the Complainant on January 25, 2021, asking the Respondent to transfer the disputed domain name to the Complainant and to cease use of the Complainant’s trademark. B. Respondent The Respondent made the following submissions in the Response: The Respondent had difficulties preparing the Response due to COVID-19 conditions in Iran (the Islamic Republic of). The disputed domain name was registered by the Respondent in Iran (the Islamic Republic of) about 30 years ago. Since then, the site of the “World Trade Center of Iran” has been active. The email address ([...]@iranwtc.org) has been active since the same date and officials from the Complainant have always been in contact with the Respondent and the “Iran WTC” through this email. About 25 years ago, the registration of the Islamic Republic of Iran’s membership with the Complainant’s Association took place and the appropriate membership fees were paid to the Complainant. After the Islamic Republic of Iran’s membership in the WTCA was approved by the former president of the Complainant and the board of directors of the Complainant, the Respondent attended all the WTCA international meetings and general assembles at the invitation of the president of the Complainant. There are more than a thousand photos of the Respondent’s presence with the heads of the World Trade Centers at WTCA international meetings and general assembles in different countries. Since the beginning of international sanctions against the Islamic Republic of Iran, WTCA officials have ostensibly removed the Islamic Republic of Iran from the list of WTCA members so as not to clash with the government of the United States of America. The Complainant contacted the Respondent about four years ago and asked the Respondent to transfer the brand of WTC Iran, which was previously registered in the Respondent’s name, to the Complainant. The Respondent agreed to do this. The Respondent has often corresponded with the officials of the Complainant and asked them to help the Respondent deal with the infringers, to which the WTCA officials also responded positively. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (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. The onus of proving these elements is on the Complainant. Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar The Complainant owns a registered trademark in Iran (the Islamic Republic of) that includes the letters WTC. The Complaint does not rely on any trademark registrations in other countries or unregistered trademark rights. The WTC trademark registration relied upon by the Complainant includes design elements, being a world map. Unless dominant, these design elements can be disregarded for purposes of assessing identity or confusing similarity under the first element. Asset Loan Co. Pty Ltd v. Gregory Rogers,WIPO Case No. D2006-0300. The disputed domain name includes WTC in its entirety, along with the geographical term “Iran”. Where the relevant trademark is recognizable within the disputed domain name, the addition of a geographical term does not prevent a finding of confusing similarity under the first element. Schneider Electric S.A. v. ÿ¹ÿ¿ÿ¿ ÿ¿ÿ¿ÿªÿ¿ÿ¿ÿ¿, ÿ¹ÿ¿ÿ¿ ÿ¿ÿ¿ÿªÿ¿ÿ¿ÿ¿,WIPO Case No. D2020-1250 The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s WTC trademark, disregarding the Top-Level Domain “.org”. The Complainant succeeds on the first element of the Policy in relation to the disputed domain name. 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. 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 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 Complainant asserts that the Complainant had not authorized the Respondent to use the WTC trademark in any way, as an organization name or as a domain name. However, the Respondent has provided evidence that the Respondent was using the names “Iran World Trade Center” and “World Trade Center of Tehran (IRAN)” in 2008 to 2014. In fact, the Complainant invited the Respondent to a Member Seminar in New York in 2008. The Complainant wrote to the Respondent inviting the Respondent to the Complainant’s 2010 General Assembly Meeting in China in October 2010. The subject line of that letter from the Complainant to the Respondent is “World Trade Center of Tehran (IRAN)/WTCA Member:”. (Strangely, that letter is dated August 30, 2011.). The Complainant’s General Counsel wrote to the Respondent in 2014 in response to a request from the Respondent to assist the Respondent enforce the WTC trademark against alleged infringers in Iran. This letter from the Complainant was addressed to the Respondent at “World Trade Center Tehran”. The Respondent’s letterhead in 2014 included the disputed domain name. This letterhead was used to write to the Complainant in 2014. There is friendly correspondence between the Complainant and the Respondent in this period, and the Respondent provided smiling photographs of the Respondent at what appears to be events organized by the Complainant. The above evidence provided by the Respondent strongly suggests that the Respondent was using “World Trade Center” and the disputed domain name in 2014 and earlier with the Complainant’s knowledge and permission. The website at the disputed domain name appears to be a legitimate website for the “World Trade Center of Iran”. It could be the case that the Respondent was once authorized by the Complainant but is no longer authorized. See for example ESET, spol. s.r.o. v. Antivirus Australia PTY Ltd., Rodney Fewster, ESET Pty Ltd.,WIPO Case No. DAU2015-0014. However, the Complainant did not assert this and provided no details or evidence to support such a case. The Response suggests that due to international sanctions, the Respondent was removed from the list of WTCA members. The Complaint, which is less than fulsome, does not address this, so it is unclear whether this removal has impacted the Respondent’s rights to use WTC or the disputed domain name. The Panel concludes that the Respondent has rebutted the case made by the Complainant, and that the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Complainant fails on the second element of the Policy in relation to the disputed domain name. 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 WhoIs records show that the disputed domain name was created on October 25, 2015. However, the Respondent asserts that he registered the disputed domain name about 30 years ago. The Respondent provided as part of his Response an email addressed to the Complainant’s General Counsel from 2011 that shows use of the disputed domain name as an email address. As referred to above, the disputed domain name was also included on the Respondent’s letterhead in 2014. The Iranian trademark registrations relied upon by the Complainant are from 2013, and there is no evidence from the Complainant that the Complainant had trademark rights before this date, although it is likely that the Complainant did because the Complainant was founded in 1968 and the Respondent sometime thereafter joined the Complainant’s association. The evidence discussed above in respect of the second element strongly suggest that the Respondent used the disputed domain name in the period 2010 to 2014 with the Complainant’s knowledge. The Panel infers that the Respondent also used the disputed domain name in this period with the Complainant’s consent. Based on the limited information before the Panel, the Panel concludes that it is more likely than not that the Respondent did not register the disputed domain name in bad faith. The Respondent likely registered the disputed domain name to promote the World Trade Center Tehran. According to the correspondence in evidence, the Respondent was the President of that organization in Tehran (and based on the Panel’s understanding of the website at the disputed domain name, the Respondent continues to hold that position). Although not entirely clear, the evidence before the Panel does not suggest that the Respondent is currently using the disputed domain name in bad faith. The Complainant fails on the third element of the Policy in relation to the disputed domain name. 7. Decision For the foregoing reasons, the Complaint is denied. John Swinson
- Iranian trademark number 295808 for WORLD TRADE CENTER and device also dated March 7, 2018 (with application date December 22, 2013).
- has been commonly known by the disputed domain name; or
- is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark at issue.
Sole Panelist
Date: June 11, 2021
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