The Complainants are Asia Pacific Resources International Holdings Ltd. (“APRIHL”) of Hamilton, Bermuda and April Fine Paper Trading Pte Ltd (“AFPT”) of Singapore, represented by Wendy Leong, Singapore.
The Respondent is Mojtaba Alaei of Tehran, Islamic Republic of Iran. 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 July 26, 2016. On July 26, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On July 27, 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 August 1, 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 August 3, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2016. On August 24, 2016, the Center notified the Respondent’s default.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on September 6, 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 APRIHL was incorporated on September 30, 1994. The Complainant AFPT was incorporated on October 14, 1994 and is a subsidiary of APRIHL. APRIHL is the owner of the PAPERONE trade mark, registered in a great number of countries in Asia and the Pacific, North and South America, Africa and Europe, many dating back to 1997 (the “Trade Marks”) in the business of producing pulp and paper. The Complainant is also the owner of the PAPERONE device mark, which is registered in almost all these countries.
AFPT is the registrant of the domain name and licensee of the Trade Marks.
The products under the Trade Marks are being traded in more than 75 countries, including Islamic Republic of Iran.
The Domain Name was registered on January 23, 2016.
The website under the Domain Name contains the PAPERONE device mark and displays products having the same packaging as the PAPERONE products of the Complainant. Some of the pictures on this website are identical to those on the Complainant AFPT’s website under “.”
AFPT on June 27, 2016 sent a letter of demand to the Respondent by email, fax and airmail to demand that the Respondent remove or take down the website under the Domain Name without delay and in any event, within 48 hours of receipt of the letter. No response to this demand letter was received by the Complainants. 5. Parties’ Contentions A. Complainants
The Complainants submit that the Domain Name is confusingly similar to the Trade Marks. Islamic Republic of Iran is one of the countries in which the Complainants are actively doing business and according to the Complainants the use of the country code Top-Level Domain “.ir” leads to the inference that the Respondent intentionally sought to divert the Complainants’ business away from the Complainants to the Respondent. The Complainants contend that a comparison of screenshots taken of the Complainants’ website under and the website to which the Domain Name resolves shows clearly that the content is highly similar, and that the Respondent on its website makes an unauthorized and unlawful use of the Trade Marks. In the view of the Complainants this clearly demonstrates that the Respondent had intentionally sought to divert the Complainants’ business away from the Complainants to the Respondent.
According to the Complainants, the fact that the Domain Name incorporates the word “Paperone” is clear evidence of bad faith, given that the words are clearly associated with the APRIHL Group of companies to which the Complainants belong. The Complainants submit that by using the Domain Name and creating the website to which it resolves, which was almost identical to the Complainants’ website under , save for the language, the Respondent had (i) intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of that website and/or (ii) intentionally sought to divert the Complainants’ business away from the Complainants to the Respondent. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainants have shown that they have valid rights in the Trade Marks, APRIHL as owner and AFPT as licensee. The Domain Name is confusingly similar to the Trade Marks as it incorporates the Trade Mark in ITS entirety. The country code Top-Level Domain “.ir” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 1.2).
In view of the above, the Panel finds that the Domain Name is identical to the Complainants’ Trade Marks. B. Rights or Legitimate Interests
The Complainants have to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name (WIPO Overview 2.0, paragraph 2.1).
The Complainants have made clear that they have not consented to the use or registration of the Trade Marks as part of the Domain Name by the Respondent. In addition, there is no evidence that the Respondent has been commonly known under the Domain Name. The website under the Domain Name contains the PAPERONE device mark and displays products bearing the device mark and packaging identical to products on the Complainants’ website under and thereby creates the impression that it is a website approved by or affiliated to the Complainants, such as that of a distributor or agent. The Complainants deny that there is any affiliation and since the Respondent has not filed a Response, this statement is uncontested. There is no disclaimer on the website disclosing the relationship between the Complainant and the Respondent. In addition, the Complainants have sent a cease and desist letter to the Respondent which has remained unanswered.
Therefore, the Domain Name is not being used in connection with a bona fide offering of goods or services.
In view of all these circumstances the Panel concludes that the Complainants have sufficiently shown that the Respondent does not have own rights or legitimate interests in the Domain Name C. Registered or Used in Bad Faith
Under the irDRP it is sufficient to prove that either registration or subsequent use of the Domain Name by the Respondent occurred in bad faith.
The fact that the Respondent not only incorporated the Trade Mark in its entirety in the Domain Name, but also displayed the Complainants’ PAPERONE device mark and products on its website under the Domain Name shows that the Respondent knew of the Trade Marks.
Taking also into account the circumstances referred to under section 6B above, which have not been contested by the Respondent, the Panel concludes that the Domain Name was registered and is being used in bad faith, in particular to intentionally attempt to attract, for commercial gain, Internet users to the web site under the Domain Name, by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation, or endorsement of the web site and the products on that web site. 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.
Wolter Wefers Bettink
Sole Panelist
Date: September 20, 2016
Full & Egal Universal Law Academy