The Complainant is Futurelearn Limited of Milton Keynes, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented Gregg Latchams, United Kingdom.
The Respondent is Ahmad Rezaeian Asrami of Sari, Mazandaran, Islamic Republic of Iran. 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 3, 2018. On January 3, 2018, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Disputed Domain Name. On January 7, 2018, 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 January 10, 2018.
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 January 12, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2018. On February 5, 2018, the Center notified the Respondent's default.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on February 20, 2018. 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, Futurelearn Limited, is a global provider of digital education services with almost seven million users in more than 230 countries worldwide. This included users from the Islamic Republic of Iran until the Complainant decided to restrict access to those users because of United States Government regulations. The Complainant is working to ease this restriction of access.
The Complainant is the holder of the following European Union trademark registration which it uses in connection with its business of providing online educational services:
- FUTURELEARN, word mark registered with the European Union Intellectual Property Office ("EUIPO") under No. 011445517 on August 9, 2013 in classes 9, 38, 41 and 42.
The Disputed Domain Name was registered by the Respondent on February 25, 2017. The Disputed Domain Name resolves to a website which is an almost exact copy of the Complainant's website, apart from it being written in Persian.
Prior to these proceedings, the Complainant contacted the Respondent, alerting the Respondent of his potential infringing activities and demanding him to take down all content connected to the Disputed Domain Name. The Respondent replied by stating that he was a previous user of the Complainant's services and that he had created an Iranian version of the Complainant's website in order to circumvent the restrictions resulting from the United States sanctions and represented the Complainant by providing education services to an Iranian userbase. The Complainant responded by reiterating its demand to take down all content connected to the Disputed Domain Name. The Complainant also demanded that the Respondent deactivate the Disputed Domain Name and any associated email addresses and cease all activities using the FUTURELEARN trademark. The Respondent answered in a final reply that he would only be willing to disable the social media accounts linked to website and remove the Complainant's logo from all pages of the website connected to the Disputed Domain Name. However, the Respondent expressed that he was not willing to stop using the website connected to the Disputed Domain Name due to the extensive development efforts. 5. Parties' Contentions A. Complainant
The Complainant considers the Disputed Domain Name to be identical to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and was not authorized by the Complainant to operate an almost identical website offering identical services in the Islamic Republic of Iran as a representative of the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. In non-standard communication directly with the Complainant, the Respondent claims to be a former user of the Complainant's online services, who registered the Disputed Domain Name to circumvent restrictions resulting from international sanctions and represent the Complainant by providing education services to an Iranian userbase. 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 the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past panels, that the 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 the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
3. 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, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The Complainant's FUTURELEARN trademark has been registered and used.
The Disputed Domain Name reproduces the Complainant's trademark FUTURELEARN in its entirety. It is well established that the applicable country-code Top Level Domain ("TLD") suffix in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see section 1.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")).1
Therefore, the Disputed Domain Name is identical to the Complainant's FUTURELEARN trademark. Accordingly, the Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is an established consensus view of previous UDRP panels that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent's use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Respondent has essentially copied the Complainant's website and offered the Complainant's services to users in the Islamic Republic of Iran without its authorization. It is also apparent from prior communication with the Complainant, that the Respondent has developed the website connected to the Disputed Domain Name in order to act as a representative of the Complainant without the Complainant's prior consent. Accordingly, the Panel reasonably considers that the Respondent sought to use the Disputed Domain Name to mislead Internet users to believing it to be associated with the Complainant, conceivably for commercial gain.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy. 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 on-line 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 the Respondent was unaware of the Complainant and its trademark rights when he registered the Disputed Domain Name. The Disputed Domain Name is identical to the Complainant's FUTURELEARN trademark. The website connected to the Disputed Domain Name is an almost exact copy of the Complainant's website, apart from it being translated in Persian. As a result, it is undisputable that the Respondent had the Complainant in mind when registering the Disputed Domain Name. In prior communication with the Complainant, the Respondent has also expressly admitted to this.
The Respondent is using the Complainant's trademark and logos, text and images of the Complainant's website without authorization to offer the Complainant's services. Additionally, the Respondent has expressly ignored the Complainant's repeated demands to cease all activity related to the Disputed Domain Name which could raise concern for the Complainant's local activities. By copying the Complainant's website, the Respondent intentionally aims to attract Internet users to visit his website for commercial gain, by creating a likelihood of confusion with the 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. Domain Privacy Service FBO Registrant / Ramazan Kayan,WIPO Case No. D2014-2227).
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. In light of the above, the Complainant also succeeds on the third and last element 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.
Flip Jan Claude Petillion
Sole Panelist
Date: February 23, 2018
1 Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel finds UDRP precedent to be relevant to this case.
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