Complainant is Honeywell International Inc. of Morris Plains, New Jersey, United States of America, represented by Leason Ellis, United States of America.
Respondent is KKT Commercial Vehicle Systems LLC of Salmas, Iran (Islamic Republic of). 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 3, 2015. On November 3, 2015, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On November 4, 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 November 5, 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 proceedings commenced on November 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2015.
Respondent filed email communications with the Center on November 26, 2015 and November 28, 2015. The Center notified the parties of the commencement of the Panel appointment process on November 30, 2015.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on December 4, 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.
The Panel notes that IRNIC confirmed that the language of the registration agreement is English. In accordance with paragraph 11(a) of the Rules the proceeding will thus be conducted in English. 4. Factual Background
Complainant is a large company with approximately 1,300 sites located in 68 countries around the world. Honeywell Turbo Technologies makes turbochargers using the Garrett brand which are used by nearly every automaker and truck manufacturer around the world.
According to the evidence submitted by Complainant, Complainant is the owner of many trademark registrations including the trademark GARRETT registered with the United States Patent and Trademark Office with registration number 1,289,822, filing date September 27, 1982 and registration date August 14, 1984. In addition, Complainant operates a website containing the GARRETT trademark, in particular under "".
The Domain Name, , was registered on June 9, 2014. 5. Parties' Contentions A. Complainant
Complainant submits that the Domain Name is identical to its GARRETT trademark as it contains the GARRETT trademark in its entirety.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name as Respondent is not affiliated or related to Complainant in any way, nor is Respondent licensed or authorized to use the GARRETT trademark. Respondent is also not commonly known by the Domain Name and has not acquired any trademark or service mark rights in the trademark. Respondent did not demonstrate use of the Domain Name in connection with a bona fide offering of goods or services. According to Complainant the website to which the Domain Name resolves merely states "Belong to K.K.T. Turbo Systems LLC" a company which apparently competes with Complainant in the market for turbochargers.
Complainant submits that Respondent has registered and is using the Domain Name in bad faith. According to Complainant, Respondent no doubt had knowledge of the well-known trademark of Complainant. Complainant also submits that the passive holding of the Domain Name by Respondent is an evidence of bad faith especially as the undeveloped website to which the Domain Name resolves merely states that it belongs to K.K.T. Turbo Systems, a competitor of Complainant. B. Respondent
Respondent did not formally reply to Complainant's contentions. However, the Panel will treat the email communications of Respondent with the Center of November 26, 2015 and November 28, 2015 as its Response. Respondent argues that it lost a huge amount of money as fake turbochargers with the Garrett brand name are imported into Iran. According to Respondent it acquired the Domain Name for security reasons in order not to allow importers of fake turbochargers to advertise on the Internet and to "prevent the imitation companies from the online sales of garrett branded imitation copy products in the [I]ranian market". Respondent is prepared to transfer the Domain Name to Complainant provided Complainant agrees to start legal action to collect the fake products from the Iranian market. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "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".
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that the Domain Name should be transferred or cancelled:
(i) the Domain Name registered by Respondent 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 Domain Name; and
(iii) the Domain Name has been registered or is being used in bad faith.
The Panel is satisfied that the registrant of record for the Domain Name is Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied by Complainant in this proceeding. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established that it is the owner of multiple trademark registrations for GARRETT. The Panel notes that Complainant's registration predates the creation date of the Domain Name.
The Domain Name, , incorporates the entirety of the GARRETT trademark as its sole and distinctive element. Many previous Uniform Domain Name Dispute Resolution Policy ("UDRP") panels have found that a disputed domain name is identical to a complainant's trademark where the disputed domain name incorporates complainant's trademark in its entirety. The Panel considers that these decisions can also be considered under the similar provisions of the irDRP.
The Panel finds that Complainant has proven that the Domain Name is identical to Complainant's trademark. B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use its trademark or to register the Domain Name incorporating its mark. Respondent is not 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 of Complainant. Based on the evidence provided by Complainant, Respondent does not have an active website to which the Domain Name resolves. The website to which the Domain Name resolves only mentions "Belong to K.K.T. Turbo Systems LLC", a company which competes with Complainant in the market for turbochargers.
According to Respondent it acquired the Domain Name for security reasons in order not to allow importers of fake turbochargers with the Garrett brand name to advertise on the Internet. The Panel notes that this cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name as Complainant has not licensed or otherwise permitted Respondent to use its trademark or to register the Domain Name incorporating its mark. Respondent is also not commonly known by the Domain Name nor has he acquired any trademark rights.
Under these circumstances, the Panel finds that Respondent has not rebutted Complainant's prima facie case that Respondent lacks rights or legitimate interests in the Domain Name and paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered or Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The trademark of Complainant has been registered before the registration date of the Domain Name. As indicated in its Response, Respondent knew that the Domain Name included Complainant's GARRETT trademark when it registered the Domain Name.
The Panel notes that there is currently no active website at the Domain Name. However, passive holding of the Domain Name does not prevent the Panel from finding use in bad faith. The Panel further notes that the reasons advanced by Respondent to register the Domain Name in order not to allow importers of fake turbochargers to advertise or sell these on the Internet are not to be considered as good faith registration or use to which Respondent could put the Domain Name, which incorporates Complainant's trademark in its entirety. As a further indication of bad faith, the Panel notes that Respondent seems prepared to transfer the Domain Name to Complainant only in exchange for certain guaranties from Complainant, i.e. to "legally [start] an activity to collect garret branded fake products from the Iranian market".
The Panel finds that Complainant has established that the Domain Name has been registered and is being used in bad faith. 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 Domain Name, , be transferred to Complainant.
Dinant T. L. Oosterbaan
Sole Panelist
Date: December 12, 2015
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