Complainant is Marks and Spencer Plc of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by FairWinds Partners, LLC, United States of America.
Respondent is Ali Ebrahimi of Tehran, 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 April 8, 2015. On April 9, 2015, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On April 11, 2015, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on April 13, 2015.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), 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 Respondent of the Complaint, and the proceeding commenced on April 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2015. On May 8, 2015, the Center notified Respondent’s default.
The Center appointed Eduardo Machado as the sole panelist in this matter on May 15, 2015. 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
Complainant is a UK corporation and is the owner of the trademark MARKS AND SPENCER, with trademark registration in many countries around the world, used in connection with the provision of retail store services offering such items as men’s and women’s apparel, furniture and home goods, food and wine, and many other products.
Complainant has extensively promoted the MARKS AND SPENCER trademark through global news outlets and a full range of media. Complainant is the owner of the domain name .
The disputed domain name was registered on November 29, 2014. 5. Parties’ Contentions A. Complainant
Complainant argues that it is the owner of the distinctive and globally well-known MARKS AND SPENCER trademark, registered in many countries around the world, in use at least as early as 1884. Currently, Complainant has more than 1,200 locations in over 50 countries operating under the MARKS AND SPENCER trademark.
Complainant has been extensively promoting the trademark for over 100 years, through full range of media and owns the domain name. Consequently to the extensive usage and promotion of the trademark, Complaint argues that it has become famous and widely recognized throughout the world, including the Islamic Republic of Iran.
Complainant states that, apart from the country code Top-Level Domain (ccTLD) “.ir”, the disputed domain name is identical to Complainant’s registered MARKS AND SPENCER trademark. Complainant alleges that the use of a ccTLD is, at best, irrelevant to the irDRP test but, here, the “.ir” TLD actually enhances confusion by giving the false impression that Complainant maintains a retail store in the Islamic Republic of Iran.
Complainant claims that Respondent attracts Internet users by using the MARKS AND SPENCER trademark, making the visitors think they are being linked to one of Complainant’s legitimate websites.
Complainant states that in an early decision involving the and domains, the UK High Court of Justice acknowledged that the MARKS AND SPENCER trademark is “well-known” and went on to hold that “[w]here the value of a name consists solely in its resemblance to the name or trade mark of another enterprise, the Court will normally assume that the public is likely to be deceived, for why else would the Defendants choose it?” Marks & Spencer PLC v. One in a Million, High Court of Justice, Chancery Division, November 28, 1997.
Complainant argues that Respondent has no rights or legitimate interests to the disputed domain name. Complainant states that Respondent is not making a bona fide offering of goods and services. The disputed domain name resolves only to an “under construction” page. Complainant argues that the very fame of the MARKS AND SPENCER trademark casts serious doubt upon whether Respondent could make any legitimate use of the disputed domain name.
Complainant states that Respondent is not commonly known by the name Marks And Spencer nor does he operate a business or other organization under this mark or name and does not own any trademark or service mark rights in MARKS AND SPENCER.
Complainant argues that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, but to confuse and mislead consumers, or to tarnish the world famous MARKS AND SPENCER trademark. Complainant states that this could lead visitors to think they are visiting a site of Complainant, until they discover the “under construction” message, which may lead to consumers believing Complainant has gone out of business or is not devoting attention to its online marketing or services. Either way, Complainant states that its trademark and commercial reputation are significantly harmed.
Complainant claims that Respondent used the trademark without consent from Complainant and was put on actual notice of Complainant’s rights through Complainant’s extensive use of the famous and distinctive MARKS AND SPENCER trademark, which long predates the creation of the disputed domain name.
Complainant states that Respondent has been merely passively holding the disputed domain name, which amounts to bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
To succeed, 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 Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
The burden of proving these elements is on Complainant. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant’s MARKS AND SPENCER trademark, which was registered prior to the disputed domain name. The Panel finds that the mere presence of the ccTLD “.ir” is not enough to escape a finding of confusing similarity. In fact, such addition might even mislead consumers into the belief that the disputed domain name is Complainant’s domain name for the Islamic Republic of Iran consumers.
The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests with respect to the disputed domain name.
In this regard, the Panel finds that:
With respect to the paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to the paragraph 4(c)(ii) of the Policy, there is no evidence that indicates Respondent has ever been commonly known by the disputed domain name.
With respect to the paragraph 4(c)(iii) of the Policy, Respondent has not made or 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.
In view of the above, the Panel concludes that Complainant has established the second condition of the paragraph 4(a) of the Policy. C. Registered or Used in Bad Faith
The Panel finds that Respondent has intentionally registered the disputed domain name, which reproduces Complainant’s MARKS AND SPENCER trademark. It is highly unlikely that Respondent did not acknowledge Complainant’s rights on the MARKS AND SPENCER trademark when the disputed domain name was registered.
The allegations of bad faith made by Complainant were not contested as Respondent did not reply to the Complaint. Examining the evidence provided by Complainant, it is confirmed that the trademark MARKS AND SPENCER has been in use long before the disputed domain name was registered, including in domain names highly similar to the disputed domain name. For such reasons, the Panel finds that Respondent must have been aware of Complainant’s trademark when it registered the disputed domain name.
There are no facts set out in the available record which could conceivably justify the registration of the disputed domain name by Respondent.
The Panel finds that the disputed domain name has been passively held by Respondent, as it is solely an “under construction” page.
In this sense, in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the panel found that bad faith use could be established where a respondent had been entirely inactive. Not all the grounds which supported a bad faith finding in that case are present in the facts as set out in the Complaint. However, the notoriety of Complainant’s mark, the failure by Respondent to provide any evidence of actual or contemplated good faith use of the disputed domain name and the fact that it is not possible to conceive of any active use of the disputed domain name which would amount to good faith use and/or would not infringe Complainant’s mark rights cumulatively support a finding by the Panel that Respondent is using the disputed domain name in bad faith.
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith and that Complainant has established the third element of the paragraph 4(a) of 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 be transferred to Complainant.
Eduardo Machado
Sole Panelist
Date: June 2, 2015
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