The Complainant is Mejeriforeningen Danish Dairy Board of Aarhus N, Denmark, represented by BrandIT GmbH, Switzerland.
The Respondent is Fakhredin Siroos of Isfahan, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2016. On July 11, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Disputed Domain Name. On July 13, 2016, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on July 15, 2016.
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 the Respondent of the Complaint, and the proceedings commenced on July 20, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2016. On August 10, 2016, the Center notified the Respondent’s default.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 15, 2016. 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 the central organization of the Danish dairy companies. The Complainant has been using the LURPAK trade mark since 1957 in relation to Danish butter. The Complainant’s “Lurpak” products are being sold in more than 75 countries. The Complainant has registered rights in the LURPAK trade mark, which include international registration No. 1043972 for the LURPAK design trade mark (registered in 2010, and designated to the Islamic Republic of Iran), international registration No. 1167472 for the LURPAK trade mark (registered in 2012, and designated to the Islamic Republic of Iran) and international registration No. 1097947 for the LURPAK trade mark (registered in 2011, and designated to the Islamic Republic of Iran).
The Respondent registered the Disputed Domain Name on June 12, 2015. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(a) The Complainant has been using the LURPAK trade mark since 1957. The Complainant has obtained registered rights in its LURPAK trade mark in many different jurisdictions, including international trade mark registrations.
(b) The Complainant has never authorized the Respondent to use its LURPAK trade mark. The Respondent registered the Disputed Domain Name on June 12, 2015, which is well after the Complainant had acquired rights in the LURPAK trade mark and had registered its “lurpak” domain names.
(c) The Disputed Domain Name is currently inactive, but it used to resolve to a webpage that advertised the Disputed Domain Name as being for sale. Therefore, the Respondent has not been using the Disputed Domain Name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
(d) There is no evidence to suggest that the Respondent has become commonly known by the Disputed Domain Name.
(e) The Complainant’s LURPAK trade mark is well-known in relation to its milk-based products, including in the Middle East. The Complainant sent a cease and desist letter to the Respondent on March 15, 2016, informing the Respondent of its rights and requesting the transfer of the Disputed Domain Name. The Respondent never responded. Even though the Disputed Domain Name is currently inactive, this does not preclude a finding of bad faith registration or use. The Disputed Domain Name used to resolve to a webpage that offered the Disputed Domain Name for sale, which shows that the Respondent registered the Disputed Domain Name with the intent of selling it for profit. Further, the Respondent has registered numerous domain names that reflected trade marks belonging to third parties, which shows that the Respondent is engaged in a pattern of bad faith conduct. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403).1 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 or is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the LURPAK trade mark, based on its international trade mark registrations.
The Disputed Domain Name incorporates the Complainant’s LURPAK trade mark in its entirety, and is therefore identical to the Complainant’s trade mark. It is well established that when determining whether or not a trade mark is identical or confusingly similar to a domain name, the top-level domain extension, in this case “.ir”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
A complainant must establish a prima facie case in respect of the lack of rights or legitimate interests of a respondent. Once established, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name (see Arkema France v. Mohammad Farzaneh,WIPO Case No. DIR2015-0019; and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the LURPAK trade mark many years before the Disputed Domain Name was registered by the Respondent, and the Complainant has never authorised the Respondent to use its trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that it has rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to them 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 was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name; 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 trade mark or service mark at issue.
The Respondent has not provided any evidence to demonstrate that it has become commonly known by the Disputed Domain Name, or a name corresponding to it. The Disputed Domain Name is currently inactive, but previously resolved to a page that advertised the Disputed Domain Name for sale.
In light of the above, the Panel finds that the Respondent cannot be said to be using the Disputed Domain Name for a bona fide offering of goods or services, and it has provided no evidence to demonstrate that it intends to do so. The Respondent can also not be said to be making any legitimate noncommercial or fair use of the Disputed Domain Name without any intent of commercial gain.
The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered or Used in Bad Faith
Even though the Disputed Domain Name is currently inactive, this does not preclude a finding of bad faith registration or use (see Marks and Spencer Plc v. Ali Ebrahimi,WIPO Case No. DIR2015-0001; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). As stated by the panel in Google, Inc. v. Mohammad Jabbari,WIPO Case No. DIR2005-0001, “inaction should never itself constitute evidence of registration and use in bad faith, but may do so where there is no obvious justification for the selection of the domain name at issue, where the Respondent has not sought to put before the Panel any credible justification for selection of the domain name at issue, and where it is difficult to conceive of any use of the domain name, which will not be likely to cause confusion of some kind”.
In this case, the Complainant registered and began using its LURPAK trade mark many years before the Disputed Domain Name was registered. The well-known status of LURPAK, and the fact that “lurpak” is a unique word with no generic meaning, indicates that the Respondent must have been aware of the Complainant and its LURPAK trade mark at the time it registered the Disputed Domain Name. The Respondent has not provided any explanation as to why it chose to register the Disputed Domain Name or presented any evidence of good faith registration or use, despite multiple opportunities (i.e. it never responded to the Complainant’s cease and desist letter, nor did it file a Response).
The Respondent has also registered many other domain names, and previously used the Disputed Domain Name to resolve to a website which offered it for sale. The Panel notes that this in itself is not necessarily an indication of bad faith, as being engaged in the business of domain name trading can be legitimate, so long as there is no evidence that the registrant is seeking to register domain names corresponding to trade marks belonging to third parties. However, the Respondent, in this case, has registered other domain names that correspond to well-known trademarks. For example, the Respondent has registered , , , , , , , etc. This indicates a pattern of conduct by the Respondent of registering well-known trade marks, either with the intent of selling them for profit or for misleading users into believing that the domain names registered by it are somehow linked to the third party trade mark owners.
The Panel cannot find any conceivable reason for the Respondent to register the Disputed Domain Name and cannot contemplate any potential use of the Disputed Domain Name that could amount to good faith registration or use.
The Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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 the Complainant.
Gabriela Kennedy
Sole Panelist
Date: August 23, 2016
1 While the Complaint is brought under the Policy, and not the Uniform Domain Name Dispute Resolution Policy (“UDRP”), given the similarities between the two, the Panel considers UDRP precedent relevant to the current proceedings, and will refer to it throughout.
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