The Complainant is Garmin International of Olathe, Kansas, United States of America ("United States" or "US"), represented by Hovey Williams LLP, United States.
The Respondent is AliReza Tabibian of Esfehan, 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 August 19, 2016. On August 24, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On August 28, 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 24, 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 September 2, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2016. The Respondent did not submit any Response to the Complaint. On September 26, 2016, the Center notified the Respondent's default.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on October 4, 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 owns a number of trademark registrations for the trademark GARMIN, including European Union trademark number 000931428, registered on February 15, 2000. These registrations include the trademark GARMIN alone or combined with the design of a triangle or other words such as "mobile", or "training center". The Complainant has registered its trademark in the United States, Canada and other parts of the world.
The trademark registrations cover, amongst other things, navigation devices. Some of these registrations date back to 1994.
The Respondent registered the disputed domain name on July 7, 2015. The disputed domain name resolves to a website that sells Global Positioning System ("GPS") devices. 5. Parties' Contentions A. Complainant
The Complainant contends that it owns trademark registrations for the trademark GARMIN in the United States and elsewhere and that it has used the trademark extensively. It further contends that the disputed domain name is confusingly similar to the Complainant's trademark as it incorporates the trademark GARMIN in its entirety. It also contends that using the country code Top-Level Domain ("ccTLD") ".ir" does not eliminate the confusing similarity in the same manner as the use of the prefix "ir" does not eliminate the confusing similarity. On the contrary, the use of "ir" creates the impression that the disputed domain name is the Complainant's platform for selling its products online in the Islamic Republic of Iran.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. There is nothing to show that the Respondent is commonly known by the disputed domain name nor does the Respondent own a trademark registration for "garmin". The disputed domain name is not used for a noncommercial purpose but on the contrary to benefit the Respondent in an illegitimate manner. There is no evidence on the use or preparation for use of the disputed domain name for a bona fide offering of goods or services. The website to which the disputed domain name resolves purports to sell the products of the Complainant. It features the trademark of the Complainant and has a variation of the triangle design. The Complainant never licensed the use of its trademark by the Respondent and the Respondent is likely to sell counterfeit products. Such activity does not constitute bona fide offering of goods or services. The Complainant cites the test articulated in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (the "Oki Data test"), arguing that even if the products proposed by the Respondent are genuine products of the Complainant, there is no disclosure of the relationship between the Complainant and the Respondent.1 On the contrary, the Respondent is attempting to present itself as the authorized dealer of the Complainant or its affiliate. Consequently, the requirements of the Oki Data test have not been met.
The Complainant contends that the disputed domain name was registered and is being used in bad faith.
The Complainant is well known in the navigation technology market and the Respondent knew of it prior to its registration of the disputed domain name. The trademark GARMIN is not a word that exists in the English language but is an arbitrary trademark that is constituted of the names of the founders of the Complainant company. Therefore, its choice by the Respondent could not have been a coincidence but was done in bad faith. Registering the disputed domain name constitutes bad faith as the Respondent lacked any legitimate rights in the disputed domain name while the Complainant has rights in the trademark GARMIN. The Respondent is using the disputed domain name in bad faith for commercial gain with the aim of leading Internet users to believe that it is the Complainant's authorized dealer or online affiliate. In addition, the Complainant contends that the US sanctions against the Islamic Republic of Iran should be taken into consideration since the disputed domain name could render the Complainant subject to legal liability as such use creates the impression that the Complainant is violating the sanctions and this would also harm its reputation. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has submitted a number of trademark registration certificates for the trademark GARMIN as well as a list of its trademark registrations from jurisdictions throughout the world. The Panel is satisfied that the Complainant has established its ownership of the trademark GARMIN.
The disputed domain name comprises the Complainant's trademark GARMIN in its entirety combined with the ccTLD ".ir", which should typically be ignored when assessing confusing similarity as established by prior irDRP decisions. The disputed domain name contains the prefix "ir", which does not serve in eliminating the confusing similarity. Instead it may serve in creating the impression that the disputed domain name is the Complainant's domain name for the Iranian market.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. The disputed domain name purports to sell GARMIN products. Even assuming these products are genuine, the Respondent fails to meet the Oki Data test as the website to which the disputed domain name resolves does not prominently disclose the relationship between the Respondent and the Complainant.
Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered or Used in Bad Faith
The element of bad faith is evidenced by the fact that the trademark GARMIN is used in connection with navigation technology products including GPS devices and the disputed domain name is used to link to a website offering GPS devices. Furthermore, the trademark GARMIN is not a generic or descriptive word. Hence, it seems evident to the Panel that the Respondent was fully aware of the Complainant and its trademark and has registered and used the disputed domain name comprising the Complainant's mark with the aim of attracting consumers to its website with the intent of commercial gain, by creating a likelihood of confusion with the Complainant's mark.
Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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 the Complainant.
Nayiri Boghossian
Sole Panelist
Date: October 14, 2016
1 Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy ("UDRP") the Panel has referred to UDRP jurisprudence and principles where appropriate.
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