The Complainant is Kaufland Warenhandel GmbH & Co. KG of Neckarsulm, Germany, represented HK2 Rechtsanwälte, Germany.
The Respondent is Arash Ebrahimpour 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 November 10, 2016. On November 10, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On November 13, 2016, IRNIC transmitted by email to the Center its verification response confirming that:
(a) the disputed domain name was registered with it;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the disputed domain name was first registered in the name of the Respondent on August 9, 2016;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), and the irDRP applies to the disputed domain name.
Hard copies of the Complaint were received by the Center on November 24, 2016.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 November 29, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2016. On November 19, 2016, the Center received an email from the Respondent. The Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on December 20, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 4, 2017. 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
According to the Complaint, the Complainant is a member of the Kaufland group of companies. The Kaufland group of companies and their affiliates operate over 1,000 “Kaufland” supermarkets or hypermarkets in Germany, Czech Republic, Slovakia, Poland, Croatia, Romania and Bulgaria. The Complainant states it is the centralized purchasing company for the group. In addition, it owns a number of trademarks for KAUFLAND including:
(a) International Registration No. 1080636 for KAUFLAND registered on May 26, 2010 in respect of a wide range of services in International Classes 35, 36, 37, 38, 39, 40, 41, 42, 43 and 45;
(b) International Registration No. 651124 for KAUFLAND and device registered on February 1, 1996 in respect of a very wide range of goods and services in numerous International Classes; and
(c) International Registration No. 919714 for KAUFLAND and device registered on June 12, 2006 in respect of a very wide range of goods and services in numerous International Classes.
The International Registrations designate a wide range of countries in Europe, Asia and Australasia. While numerous countries have been designated, the Islamic Republic of Iran is not one of them.
The disputed domain name was registered by the Respondent on August 9, 2016. It resolves to a website which simply states “K”, some writing in Farsi and in large block capitals in English, “THIS DOMAIN IS FOR SALE”. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 in bad faith.
No formal response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. As noted above, an email was received by the Center, apparently from the Respondent, stating:
“I do not send anything dear sir
I am owner of domain and I offer to sell this domain to your organization
Let me know your price offer”
Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
Paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances when a respondent has defaulted. The Panel considers that approach is equally applicable in the present circumstances having regard to the fact that an email was received from the Respondent and also its contents. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Subject to the important difference discussed below in relation to the third requirement under the Policy, the Panel notes that the Policy is in essentially the same terms as the Uniform Domain Name Dispute Resolution Policy (the “UDRP”). Accordingly, prior panels and this Panel have drawn on decisions concerning the UDRP in applying the corresponding concepts under the Policy. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above. It would appear that, given the number and extent of its supermarket or hypermarket stores, it would also be well known by those trademarks at least in those countries where it operates.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the country code Top-Level Domain (“ccTLD”) component, “.ir,” as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the “.ir” ccTLD, the disputed domain name is identical to International Registration No. 1080636. The word “Kaufland” is also the sole and very prominent verbal element of the other International Registrations. The word “Kaufland” is a natural form of those trademarks for registration as a domain name, all the more so as it is not possible to register the device element of those trademarks as a domain name. Accordingly, the Panel considers that the disputed domain name is also confusingly similar to International Registrations Nos. 651124 and 919714.
Accordingly, the Panel finds that the Complainant has established the first requirement under the Policy. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to [the Respondent] 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 in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; 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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview 2.0; Socété Nestlé SA v Kayvan Sadeghi,WIPO Case No. DIR2007-0002; and MIP METRO Group lntellectual Property GmbH & Co. KG v. Masoud Ziaie Moayyed,WIPO Case No. DIR2007-0005.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it or its affiliates. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
These facts are usually sufficient to establish a prima facie case for the purposes of both the Policy and the UDRP.
The Panel notes that the Complainant does not hold any trademarks in the Islamic Republic of Iran. That is not necessarily determinative in the Respondent’s favour: e.g., Fortinet, Inc. v. Pouyesh Afzar Houshmand Eng. Co.,WIPO Case No. DIR2007-0003.
Beyond asserting that he is the owner of the disputed domain name, the Respondent has not advanced any arguments about the legality or otherwise of his registration of the disputed domain name under the laws of the Islamic Republic of Iran. Further, the website simply offers the disputed domain name for sale. Therefore, the Complainant alleges that the disputed domain name has been registered and is being offered for sale in view of its potential reference to the Complainant’s trademark. The Respondent’s terse email does not deny that allegation or contest it.
In these circumstances, the Complainant has established the required prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy. C. Registered or Used in Bad Faith
In contrast to the UDRP, the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy. It is not necessary for the Complainant to prove both registration and use in bad faith. See, e.g., Total S.A. v. PayaHost Web Solutions,WIPO Case No. DIR2004-0001; Socété Nestlé SA v Kayvan Sadeghi, supra.
Generally speaking, a finding that a domain name has been registered or is being used in bad faith requires an inference to be drawn that the respondent in question has registered or is using the disputed domain name to take advantage of its significance as a trademark owned by the complainant.
The reasons for finding that the Respondent does not have rights or a legitimate interest in the disputed domain name lead to the conclusion that the offering of it to sale to apparently any comers constitutes at least use in bad faith under the Policy. Accordingly, the Panel finds that the Complainant has also satisfied the third requirement under the Policy. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: January 13, 2017
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