The Complainant is WAGO Verwaltungsgesellschaft mbH of Minden, Germany, represented Bardehle Pagenberg, Germany.
The Respondent is Hasan Mohebali, AsanSanat 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 September 14, 2017. On September 14, 2017, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On September 17, 2017, 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 September 19, 2017.
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 27, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2017. The Respondent did not submit any response. On October 18, 2017, the Center notified the Respondent’s default.
The Center appointed Steven A. Maier as the sole panelist in this matter on November 10, 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
The Complainant is a company located in Germany. It is manufacturer of components for electrical connections and other electronic components.
The Complainant is the owner of registrations for the trademark WAGO, including International Trademark registration number 985983 for the word mark WAGO, registered on June 9, 2008, in Classes 9, 17 and 42 and designating a total of 44 countries including the Islamic Republic of Iran.
The Complainant also claims rights in a figurative trademark WAGO (the “Figurative Mark”) although it does not provide particulars of this registration.
The disputed domain name appears to have been registered by the Respondent on November 28, 2015.
The Complainant has produced evidence that, on September 12, 2017, the disputed domain name resolved to a webpage marked “Under Construction” which included images of a number of electrical components, the Figurative Trademark and a contact email address “[…]@”. 5. Parties’ Contentions A. Complainant
The Complainant states that it is a well-known manufacturer of electrical equipment and employs over 5,800 people worldwide. It exhibits publicity concerning its history and business profile. It states that, in addition to its registered trademarks, it is the owner of the domain name and others including its WAGO mark and operates an official website at “www.” upon which it promotes its products.
The Complainant submits that the disputed domain name is identical or confusingly similar to its WAGO trademark. It states that the disputed domain name fully incorporates its trademark and that the addition of the geographical indicator “.ir”, denoting the Islamic Republic of Iran, is not effective to distinguish the disputed domain name from that mark. The Complainant argues that, on the contrary, the disputed domain name is likely to suggest that it represents the Complainant’s business in the Islamic Republic of Iran.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has never licensed or authorized the Respondent to use the mark WAGO and submits that the Respondent has no independent trademark rights in that name. The Complainant also denies that the Respondent is using the disputed domain name in connection with any bona fide offering of goods or services. The Complainant submits, in particular, that while it appears from its website that the Respondent may intend to offer the Complainant’s goods for sale, it is not clear whether any such goods would be genuine or counterfeit. The Complainant contends that this is however irrelevant, because even if the goods were genuine, the Respondent is not using the Complainant’s trademark in a legitimate manner. The Complainant relies on the test set out in Oki Data Americas, Inc. v. ASD, Inc., WIPOCase No. D2001-09031 and states that the Respondent fails to meet at least two of the criteria set out in that case: first the Respondent is not actually offering the goods in issue, and secondly the Respondent does not accurately disclose its relationship with the Complainant. On the contrary, the Complainant submits that by displaying the Figurative Trademark and images, which it states are of the Complainant’s products, the Respondent’s website gives the false impression that it is an official distributor of the Complainant’s goods.
The Complainant submits that the disputed domain name was registered or is being used in bad faith. Concerning registration, the Complainant states that it is obvious from the Respondent’s use of the disputed domain name that it was aware of the Complainant’s trademark WAGO at the date it registered the disputed domain name. With regard to the use of the disputed domain name, the Complainant repeats that the Respondent is using the disputed domain name for the purposes of a website which appears to offer the Complainant’s goods for sale but inaccurately discloses its relationship with the Complainant. The Complainant alleges in particular that the Complainant is attempting to exploit the reputation and goodwill which attaches to the WAGO mark in order misleadingly to attract Internet users to its website where it may offer them its own, competing products. The Complainant adds that the use of the email address “[…]@” further misleads Internet users by representing that it is an authorized contact address for the Complainant.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in the name and mark WAGO. The disputed domain name is identical to the Complainant’s trademark, ignoring the country code Top-Level Domain (“ccTLD”) “.ir” which is typically to be disregarded for the purposes of comparison. However, the Panel also accepts the Complainant’s submission that, if the ccTLD were to be taken into account, it is likely that a significant number of Internet users would assume the disputed domain name to relate the Complainant’s official or authorized website for the Islamic Republic of Iran. The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions referred to above give rise to a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this administrative proceeding and has not provided any explanation for the registration or use of the disputed domain name, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. Furthermore, the Complainant has submitted evidence, which the Respondent has not contradicted, that the Respondent has used the disputed domain name for the purposes of a website which misleadingly represents itself to be an official or authorized website of the Complainant.
In certain circumstances, a reseller of a trademark owner’s products, even if unauthorized, may legitimately use that trademark for the purposes of a domain name: see, e.g., section 2.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). However it does not appear to the Panel that the conditions for such legitimate use have been met in this case. First, the Panel has no evidence that the Respondent is actually offering the Complainant’s goods for sale. Secondly, the Respondent has not accurately and prominently disclosed its relationship with the Complainant: instead, the Panel finds that it has, by its adoption of the disputed domain name and the appearance of its website, misrepresented that that it is an official or authorized dealer of the Complainant’s products.
The Panel finds in the circumstances that that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered or Used in Bad Faith
On the basis of the Panel’s conclusions set out above, the Panel also finds that the disputed domain name was registered and has been used in bad faith.
In the view of the Panel, the disputed domain name is inherently misleading in that it comprises the Complainant’s trademark in an unadorned form and will inevitably lead Internet users mistakenly to conclude that it is operated or authorized by the Complainant. It therefore constitutes an impersonation of the Complainant. Furthermore, in the light of this and of the Respondent’s use of the disputed domain name, the Panel readily infers that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark and with the intention of taking unfair advantage of the reputation and goodwill that attaches to that mark.
The Panel accepts the Complainant’s submissions that the Respondent has used the disputed domain name for the purposes of a website which prominently displays the Figurative Trademark and also includes images of the Complainant’s products and the email address “[…]@”. For the reasons set out above, the Panel does not find the Respondent’s use of the Complainant’s trademark for this website to have any legitimacy, and finds on the contrary that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of products or services on its website (paragraph 4(b)(iv) of the Policy).
For the above reasons the Panel finds that that the disputed domain name has been registered or 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 the Complainant.
Steven A. Maier
Sole Panelist
Date: November 20, 2017
1 The Panel notes the substantive similarities between the irDRP and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and has made reference to UDRP jurisprudence, where appropriate.
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