WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Atlas Copco Aktiebolag v. Mohammad Reza Ranjkar Case No. DIR2008-0005 1. The Parties
The Complainant is Atlas Copco Aktiebolag, of Stockholm, Sweden, represented internally.
The Respondent is Mohammad Reza Ranjkar of Qazvin, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed Domain Name is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2008. On November 18, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On November 19, 2008, 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 Dispute Resolution Policy for Internet Domain Names (.ir) (the “Policy”), the Rules for IR Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for IR Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2008. On November 26, 2008, the Center received an informal email communication from the Respondent. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2008. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on December 17, 2008.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 29, 2008. 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 Swedish corporation established in 1873 and headquartered in Stockholm, Sweden. The Complainant manufactures, sells, rents, and services industrial equipment, including air compressors, electric power generators, air treatment systems, industrial power tools, construction and mining tools, and drill rigs. The Complainant employs more than 30,000 people worldwide, operating more than 50 production facilities in some 20 countries. Its products are distributed through a global sales and service network that covers approximately 150 countries, including Iran, where the Respondent is located. The Complainant's 2007 worldwide sales exceeded USD10 billion.
The Complainant states that it has used the ATLAS mark since approximately 1873 and currently holds registered trademarks in several countries for the word ATLAS, as well as for a design mark prominently incorporating the words ATLAS COPCO. The Complaint is grounded in particular on the following trademark registrations:
MARK COUNTRY REG. NO. REG. DATE
ATLAS
Pakistan
10227
March 21, 1950
ATLAS
India
142960
March 25, 1950
ATLAS
Sweden
75349
January 22, 1954
ATLAS
Benelux
109807
December 23, 1971
ATLAS COPCO (and design)
Iran
29371
June 25, 1966
ATLAS COPCO (and design)
Sweden
148653
September 13, 1974
The Complainant operates a website headed, “the Atlas Copco Group's corporate website” at “” (the “Complainant's website”). The home page features the Complainant's ATLAS COPCO design mark and provides a pull-down menu for information (in English) by country. The website includes a page on “Atlas Copco in Iran”.
The Domain Name was registered on March 19, 2007. According to the Registrar, the registrant is the Respondent, Mr. Ranjkar, and the administrative contact is Caspian ITC, both listed at the same postal address in Qazvin, Iran.
The Domain Name resolves to an English-language website headed, “AtlasCaspian Group's corporate website” (the “Respondent's website”). The home page displays an AtlasCaspian logo that is similar in form, font, and color scheme to the ATLAS COPCO design mark displayed on the Complainant's website. At the bottom of the home page, the Respondent is credited as the website designer.
The home page of the Respondent's website pictures air compressors, power generators, and power tools similar to those offered by the Complainant, as well as photographs of a gas plant and a chemical laboratory. Most of the links from the home page redirect the Internet user to a co-branded “AtlasCaspian / KwangShin” website that features products (chiefly air compressors) produced by a Korean company, Kwangshin. Other links from the Respondent's website redirect the website visitor to websites operated by other manufacturers such as Ingersoll Rand, Cummins, PSA, and Volvo, advertising products such as compressors and generators that compete with the Complainant's products.
The Complainant also furnished a printout of a products page that formerly appeared on the Respondent's website. This page featured text and photographs copied from a similar page on the Complainant's website, and it displayed at the top the Complainant's actual ATLAS COPCO design mark. The products page encouraged users to register. Those who attempted to do so would be redirected to a page on another website, which appeared to be operated by the Complainant, where they might be deceived into entering their established login credentials for the Complainant's website a classic “phishing” scam that can result in fraud.
The Complainant has identified more than 20 domain names that have been used similarly, with text and images copied from the Complainant's website and featuring the AtlasCaspian logo that is visually similar to the Complainant's ATLAS COPCO design mark. A printout of the “Select country” page associated with one of these domain names, , in October 2007 reinforces the inference that they are related: the Domain Name at issue here is one of 21 domain names linked from that website and comprised of “atlascaspian” and a top-level generic or country domain name.
The Complainant has pursued relief in appropriate fora, including an in rem judicial action in the United States District Court for the Eastern District of Virginia concerning eleven domain names over which that court had jurisdiction. The court granted the Complainant's motion for summary judgment in January 2008 under the Anticybersquatting Consumer Protection Act, Atlas Copco AB, et al. v. A, et al., 533 F. Supp. 2d 610 (USDC ED Va., Jan. 8, 2008). The court concluded that the eleven domain names incorporating “atlascaspian” were confusingly similar to the ATLAS COPCO trademark. “Copy-cat” features of the websites associated with those domain names reinforced the court's inference that the trademark infringement was intentional, as did links to a “phishing” website that displayed the actual ATLAS COPCO trademark and requested the username and password of existing customers of the Complainant.
The Complainant has also launched domain name dispute resolution proceedings concerning the other domain names, including the one at issue in the current proceeding.
Following notification of the current Complaint, the Respondent communicated to the Center as follows in an email dated November 26, 2008:
“What Can We Do To Solve This Problem?
“We Just Want To Business. (Our Business)
“And We Are Not Want To Use Atlascopco Name For Our Business.
“Please Explain Me More What Can i Do To Solve This Problem And Keep My Domain ‘A'.”
The Center reiterated information on how to respond to the Complaint, but no Response was submitted. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its ATLAS and ATLAS COPCO marks, and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant argues that the Domain Name has been registered and used in bad faith, (a) as part of a pattern of registering similar domain names to prevent the Complainant from reflecting its marks in corresponding domain names, (b) in an attempt to confuse and divert Internet users for commercial gain, and (c) as part of a fraudulent “phishing” scheme to harvest genuine customer login credentials for the Complainant's website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered or is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a 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 unquestionably holds registered, standard-character ATLAS trademarks, as well as design trademarks in which the name ATLAS COPCO is prominently featured.
The Domain Name incorporates the ATLAS mark in its entirety and adds a geographic term, “caspian”. That generic term is not sufficient to avoid confusion with the well-established ATLAS mark, particularly since the Complainant operates in Iran and other countries surrounding the Caspian Sea and has numerous domain names that include a geographic term in either the domain name or the top-level domain name. As the Court concluded in Atlas Copco AB, et al. v. A, et al., supra, the dominant or salient portion of the marks and of the Domain Name is “ATLAS”, and an Internet user “might reasonably assume” that the geographic term “Caspian” was added to the Complainant's trademark “to identify its geographic location”.
The Panel concludes that the Domain Name is confusingly similar to the Complainant's marks for purposes of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent does not dispute that it used the ATLAS and ATLAS COPCO marks (both in the Domain Name and on the Respondent's website) without authorization from the Complainant. This establishes the Complainant's prima facie case on the second element of the Complaint, and the burden shifts to the Respondent to produce alternative evidence of its rights or legitimate interests under paragraph 4(c) of the Policy, as Panels have found in cases decided under identical language in the Uniform Dispute Resolution Policy (“UDRP”). See, e.g., Admiral Insurance Services Limited v. Mr. Adam Dicker,WIPO Case No. D2005-0241; Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753. The Respondent has not done so.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Names:
“(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.”
There is no evidence here that the Respondent, or a business entity in which he is involved, has been commonly known by a name corresponding to the Domain Name, nor is there evidence of noncommercial or fair use. Instead, the Respondent's website leads Internet users to websites offering commercial products that compete with those of the Complainant.
The Respondent's registration and use of a Domain Name that is confusingly similar to the Complainant's mark to sell directly competing products does not constitute use of the Domain Name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088 (all cases decided under identical UDRP provisions).
Based on the evidence in the record, and the Respondent's failure to come forward with evidence of any rights or legitimate interests in the Domain Name, the Panel finds that the second element of the Complaint has been established. C. Registered or Used in Bad Faith
The Panel notes that the Policy for .ir domain name disputes requires that the Complainant establish either registration or use in bad faith. By contrast, the UDRP, which applies to domain names in various generic top-level domains, requires proof of both registration and use in bad faith. It is not necessary in this proceeding, therefore, to test the inference that the Respondent registered the Domain Name initially in bad faith, although the abundant evidence of bad-faith use also tends to support an inference of bad faith at the time the Domain Name was registered in 2007.
Paragraph 4(b) of the Policy gives a non-exhaustive list of instances of bad faith, including the following cited by the Complainant:
“(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;
(iv). by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other 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.”
Paragraph 4(b)(ii) of the Policy is inapposite, because while the Respondent appears to be connected with a scheme of registering multiple domain names targeting the Complainant's marks, the Domain Name itself is comprised of a variation on those marks “atlascaspian” rather than “atlas” or “atlascopco”. The Complainant owns the domain name and uses it for its principal corporate website; the Complainant also owns for its Iranian online content. Thus, the Respondent has not entirely precluded the Complainant from reflecting its ATLAS or ATLAS COPCO marks in corresponding domain names.
Paragraph 4(b)(iv) of the Policy, however, offers a good description of the Respondent's activity in using the Domain Name to attract Internet users interested in the Complainant's industrial products and then diverting them to the websites of competitors, or to a website jointly operated by the Respondent and a Korean competitor. It may safely be inferred that the Respondent does not do so for altruistic or fair-use purposes but in order to derive revenue in some fashion from customer leads or orders initially provided through its website. The “copycat” nature of the Respondent's website supports the inference that the choice of a similar domain name was part of an intentional effort to mislead potential customers. The Respondent's website, which advertises competing products, displays a similar logo and format to those found on the Complainant's website and formerly included text and images copied from the Complainant's website, as well as at least one instance of the Complainant's actual design mark. The fact that the Domain Name was linked on another such website and associated with a score of similar websites labeled “atlascaspian” reinforces the conclusion that this use was part of a deliberate scheme to trade on the Complainant's reputation, as the Court found in Atlas Copco AB, et al. v. A, et al., supra.
The Panel is inclined to agree with the Complainant that the “phishing” aspects of the Respondent's scheme further support an inference of bad faith, although these are not as well documented as the website content and links that demonstrate an effort to misdirect Internet users and lead them to the Complainant's competitors.
The Panel finds that the Complainant has established bad-faith use of the Domain Name for purposes of paragraph 4(b) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Dated: January 15, 2009
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