Complainant is EH Europe GmbH of Zug, Switzerland, represented Eversheds Deutschland, LLP, Germany.
Respondent is Mehdi Shams of Tehran, Islamic Republic of Iran, self-represented. 2. The Domain Name and Registrar
The disputed domain name (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 January 27, 2017. On January 27, 2017, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Disputed Domain Name. On January 29, 2107, 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 February 20, 2017. Complainant filed an amendment to the Complaint on February 8, 2017, to correct an administrative formality.
The Center verified that the Complaint and the amendment to 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 March 7, 2017. In response to email communications from Respondent of March 11 and 13, 2017, Complainant requested a suspension of the administrative proceedings for 30 days in order to explore settlement possibilities. The administrative proceeding was suspended on March 20, 2017. Respondent submitted two informal communications on March 21, 2017 and March 28, 2017. On April 13 and 21, 2017, Complainant requested an extension to the suspension. The Center extended the suspension until May 8, 2017. On May 8, 2017, Complainant requested the reinstitution of the proceeding. On May 9, 2017, the proceeding was reinstituted.
The Center informed the parties that the due date for Response was May 18, 2017. On May 19, 2017, the Center notified the Parties about the commencement of panel appointment process. Respondent submitted an informal communication on the same day.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 26, 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
Complainant is a subsidiary of EnerSys, a United States of America manufacturer of batteries for motive power, reserve power, aerospace, and defense applications, operating in over 100 countries worldwide. Complainant is the holder of trademarks which Complainant manages for EnerSys, including the European Union Trade Mark, containing the term "hawker" and represented below as registered with the European Union Intellectual Property Office ("EIUPO") under number 008234338 in classes 9, 16 and 37 since November 13, 2009:
The group of companies to which Complainant belongs uses Complainant's HAWKER trademark in connection with the commercialization of batteries.
The Disputed Domain Name, , was registered on August 26, 2015. The Disputed Domain Name has been used for advertising batteries for motive power, power blocks and reserve power. 5. Parties' Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Finally, Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. B. Respondent
In communications, Respondent claims to be a designer and programmer, who registered the Disputed Domain Name for a third party. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past irDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. The Disputed Domain Name 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 Disputed Domain Name; and
iii. The Disputed Domain Name has been registered or is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is a trademark in which Complainant has rights. The mark HAWKER has been registered and used.
The Disputed Domain Name reproduces Complainant's trademark HAWKER in its entirety, adding the term "plus". The Panel is of the opinion that the mere addition of non-distinctive word to a complainant's trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395, where the domain name was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word "download" because users typically download the complainant's software)1 . The addition of the word "plus" may even add to the confusing similarity, as one of the products Complainant's group of companies brings to market is named "Hawker Power Plus".
Accordingly, Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As held by previous irDRP panels, it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on Respondent (see Sodexo v. Mohammad Ali Mokhtari,WIPO Case No. DIR2017-0006).
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent's use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that any connection between Complainant and Respondent existed.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. It appears that Respondent has been using the Disputed Domain Name to advertise batteries. The website linked to the Disputed Domain Name also displayed a sign containing the word "hawker" in a design which is similar to Complainant's HAWKER trademark. According to the Panel, this cannot be considered as fair use of the Disputed Domain Name, even though it is unclear whether Respondent offers Complainant's products. Indeed, either Respondent offers the installation of Complainant's products without Complainant's authorization without disclosing Respondent's relationship with Complainant, or Respondent offers competing products and services. At a glance, the website at the Disputed Domain Name could be interpreted as being an official website of Complainant. The Panel finds that Complainant has made a satisfactory prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Name. There is nothing in this case record that would serve to rebut Complainant's case under this element.
Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered or Used in Bad Faith
Under the Policy, the Complainant must prove on the balance of probabilities that the Disputed Domain Name was registered in bad faith or that it is being used in bad faith.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In the present case, it is inconceivable that Respondent was unaware of Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes Complainant's distinctive trademark in its entirety and simply adds a descriptive word. As a result, it is apparent that Respondent had Complainant in mind when registering the Disputed Domain Name.
Respondent is using Complainant's trademark and pictures of Complainant's website without authorization to offer products. Doing so, Respondent tries to intentionally attract Internet users to visit its website for commercial gain, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location and of the products advertised on the website (see Simyo GmbH v. José Castrellón, CyberCast,WIPO Case No. D2014-1660).
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was 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 Disputed Domain Name be transferred to Complainant
Flip Jan Claude Petillion
Sole Panelist
Date: June 9, 2017
1 In light of the similarities between the irDRP and the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel has referred to prior UDRP decisions where appropriate.
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