The Complainant is SSAB Technology AB of Stockholm, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Mehrdad Haj Alizade, IGM 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 March 23, 2018. On March 23, 2018, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On March 25, 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 March 28, 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 April 4, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on May 3, 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 is a limited liability company with its headquarters in Stockholm, Sweden. It manufactures a range of specialized steels; its plants in Sweden, Finland and the United States of America have an annual steel production capacity of 8.8 million tons. The Complainant has 15,000 employees located in over 50 countries.
The Complainant uses a number of brands to denote its products, including HARDOX. This mark has been registered in multiple jurisdictions, including the following;
- International trade mark registration number 1369604, registered on April 25, 2017 in classes 6, 7, 12, 37, 40 and 42;
- European Union trade mark registration number 015996903, registered on March 21, 2017 in classes 6, 7, 12, 37, 40 and 42.
The disputed domain name was registered by the Respondent on November 3, 2017. The content of the website to which the disputed domain name pointed, as at January 24, 2018, contained a photograph of tall buildings on the home page accompanied by the words “Hardox Plate”. Another page of the website contains a web page headed in Persian script. A translation provided by the Complainant indicates that the central heading reads “Brands – Types of anti-wear sheet brands”. The translation supplied of the menu bar at the top of the web page establishes that it contains subject headings such as “Oil and gas”, “Reverse Engineering”, “Electricity and energy”, “Product Processing” and “Strategic research”. Beneath that heading are four boxes containing logos. One of those logos contains the words “Hardox Wear Plate” in a stylized font with white text against a purple background. Beneath the box are the words “Hardox Plate” and, beneath that heading, is a paragraph of text which, according to the translation submitted by the Complainant, reads “Create memorable pages with smooth parallax effects that everyone loves. Also use our lightweight content slider offering you smooth and great looking animations”.
Some of the other web pages, as at April 4, 2018, contain Lorem ipsum, that is, pseudo-Latin text, which is draft copy commonly used as placeholders by marketing agencies before the written content of a website or other marketing material has been completed. The remaining content appears to be that of a nascent website, seemingly offering website design services.
The disputed domain name is currently inactive. 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It refers to its portfolio of HARDOX trade marks, details of two of these marks being set out above. The disputed domain name is confusingly similar to the Complainant’s registered rights. The only difference between the disputed domain name and the Complainant’s HARDOX trade mark is the addition of the word “plate”, which is a generic word which should not be taken into account in an assessment of similarity. Moreover, the addition of the country-code Top Level Domain (“ccTLD”) “.ir” does not in any way distinguish the disputed domain name from the Complainant’s trade mark.
The Complainant says that the Respondent does not have any rights or legitimate interests with respect to the disputed domain name. The Respondent does not have any rights in the trade marks HARDOX or HARDOX PLATE, nor is the Respondent a licensee of the Complainant. The Complainant has not given the Respondent any authorization to register the trade mark HARDOX as a domain name and there is nothing that indicates that the Respondent has been commonly known by the trade mark. Controls made on the website to which the disputed domain name points conclude that there is no evidence of any legitimate use of the disputed domain name for any activity or business related to “Hardox” or “Hardox Plate”.
The Respondent is displaying the HARDOX trade mark and logo without authorization. There is no evidence of any demonstrable preparations to use the disputed domain name in connection with a bona fide offer of goods and services. The use of the Complainant’s logo under the heading “Brands” creates confusion since members of the public might believe that they have entered a website hosted by the Complainant. Moreover, the Respondent is not making a legitimate noncommercial use of the disputed domain name because the Respondent’s evident intent is to use it commercially in order to mislead consumers.
Lastly, the Complainant says that the Respondent has registered or is using the disputed domain name in bad faith. It is evident from the fact that the Respondent has used the stylized form of its HARDOX logo as well as its registration of the disputed domain name which incorporates its HARDOX trade mark, that the Respondent has been well aware of the Complainant’s prior rights and business. The circumstances indicate that the Respondent registered the disputed domain name primarily to profit from the Complainant’s rights in HARDOX, alternatively for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or to prevent the Complainant from reflecting its mark in a corresponding domain name. The Respondent is trying to take advantage of the Complainant’s HARDOX trade mark or, at the very least, inflict damage on the Complainant’s business. Internet users who search for the disputed domain name or who visit the website to which the disputed domain name resolves will expect to reach an official website of the Complainant. The Respondent’s website is likely to cause confusion and lead members of the public into believing that its services are associated with the Complainant or with an undertaking which is economically linked to it. A cease and desist letter was sent to the Respondent on January 24, 2018 but no response was received. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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. A. Identical or Confusingly Similar
The details the Complainant has provided of its trade mark registrations for HARDOX, details of two of those marks being set out above, establish its trade mark rights in that mark.
When assessing the degree of similarity between the disputed domain name and a complainant’s trade mark, the ccTLD, being in this case “.ir” for the Islamic Republic of Iran, may be disregarded as it is a technical requirement of registration.
The disputed domain name contains the Complainant’s trade mark in full and without alteration. The inclusion of the descriptive word “plate” within the disputed domain name does not serve to distinguish the disputed domain name from the Complainant’s mark, not least because the Complainant is a steel manufacturer and plate steel is a widely known form of steel product.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, three circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(1) before any notice to it of the dispute, it had used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(2) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or
(3) it was making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Dealing with these grounds in reverse order, the use of the disputed domain name to point to a website purporting to advertise and offer goods for sale is commercial in character. Furthermore, there is no evidence which might suggest that the Respondent is commonly known by the disputed domain name or that it has ever acquired any trade mark rights in HARDOX. The circumstances set out at 4(c)(2) and 4(c)(3) of the Policy are, accordingly, inapplicable.
Whether the Respondent’s website to which the disputed domain name points might fall within the circumstances set out at paragraph 4(c)(1) of the Policy and be considered to comprise a bona fide offering of goods and services requires more detailed consideration. Is the Respondent’s use of the word “Hardox” as one of its brands and as a component of the disputed domain name accidental and made without knowledge of the Complainant and its HARDOX trade mark? Alternatively, does the available evidence indicate that the Respondent’s website is not a genuine offer of goods and services?
Whilst the Complainant has asserted that the Respondent has used its “HARDOX logotype” it did not provide in evidence any of its own web pages which might have enabled the Panel to evaluate this assertion. Paragraph 10(a) of the Policy empowers the Panel “to conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.” The circumstances in which a panel might typically take this course under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the corresponding provisions of which are effectively the same as those of the Policy, are outlined at section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name”.
The Panel has visited the Complainant’s website and has undertaken an image search on Google for the term “Hardox Wear Plate”. Both of these exercises reveal that the Complainant uses a stylised logo for “Hardox Wear Plate” in upper case, which consistently comprises specific purple and white colouring and the same font sizes and layout. The use by the Respondent on its website of the stylised form of “HARDOX WEAR PLATE” is identical in all respects with the Complainant’s stylised logo. From this, the Panel concludes that the Respondent has plainly been aware of the Complainant, from (at least) the time it created its website, and has copied its logo.
The Panel takes account of a number of other factors in its evaluation of the Respondent’s website. First, the words “wear plate” have no obvious meaning in the context of a website design business, whereas they do have a recognised meaning in the context of hardened steel plate. There is no obvious explanation as to why the Respondent has chosen to use a stylised logo associated with the Complainant’s specialised steel products in the context of a business purportedly offering website design services. Second, other than the use of the words “Hardox Plate” on the home page of the website and as one of four brands depicted on another web page, there is no indication that the Complainant is, in fact, operating a business called “Hardox Plate” which might explain its choice of domain name. Third, there is no obvious connection between the areas of operation outlined on the menu bar of the Respondent’s website which, in translation, include terms such as “Oil and gas”, “Electricity and Energy”, “Product Processing” etc, and the services purportedly offered by it in the field of website design. In other words, the website contains significant oddities, which cast doubt on its genuineness. Fourth, the Respondent has failed to respond either to the cease and desist letter sent to it by the Complainant’s representatives on January 24, 2018 or to the Complaint. It is likely that a genuine business seeking to defend its right to use the disputed domain name would have responded to, at least, one of these communications.
Whilst each factor, considered individually, is not conclusive, cumulatively they lead the Panel to conclude that the Respondent’s website does not comprise a bona fide offering of goods and services.
As explained at section 2.1 of the WIPO Overview 3.0, once a complainant under the UDRP has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. The Complainant has made out a prima facie case and in the absence of any response from the Respondent, he has failed to satisfy that burden.
For these reasons, the Panel finds that the Respondent does not have any rights or legitimate interests with respect to the disputed domain name. C. Registered or Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, without limitation, which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out at paragraph 4(b)(i) of the Policy is, in summary, if a respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. The circumstance at paragraph 4(b)(iii) of the Policy is if the respondent has registered the domain name primarily for the purpose of disrupting the business of the complainant.
WIPO Overview 3.0 explains at section 3.1.1 that “[c]ircumstances indicating that a domain name was registered for the bad-faith purpose of selling it to a trade mark owner can be highly fact-specific; the nature of the domain name (e.g., whether a typo of a famous mark, a domain name wholly incorporating the relevant mark plus a geographic term or one related to the complainant’s area of commercial activity, or a pure dictionary term) and the distinctiveness of trade mark at issue, among other factors, are relevant to this inquiry”.
Among the further circumstances listed at section 3.1.1 which might indicate the respondent’s intent in registering the disputed domain name was to profit in some fashion or otherwise exploit the complainant’s trade mark, are the respondent’s likely knowledge of the complainant’s rights and the failure of the respondent to present a credible evidence-backed rationale for registering the domain name. The Respondent was plainly aware of the Complainant’s HARDOX trade mark as it has used its stylised logo for “Hardox Wear Plate”. The Complainant’s mark is inherently distinctive and the Respondent has failed to provide any explanation as to why both the Complainant’s HARDOX mark and its stylised logo for “Hardox Wear Plate” have been used by him. The incorporation, within the disputed domain name, of the word “plate” is likely to increase the likelihood that Internet users aware of the Complainant’s business will assume that there is a connection between the disputed domain name and the Complainant’s HARDOX trade mark.
The website to which the disputed domain name resolves does not invite offers for the purchase of the disputed domain name. However, it is not possible to conceive of any plausible reason why the Respondent would register the disputed domain name and create a dummy website which uses the Complainant’s trade mark unless it hoped in some way to elicit an offer for purchase of the disputed domain name from the Complainant or to profit in some other way from its registration. No good faith explanation for the Respondent’s registration and use of the disputed domain name is evident and none has been suggested by the Respondent.
The Panel accordingly finds that the disputed domain name has both been 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 the Complainant.
Antony Gold
Sole Panelist
Date: May 17, 2018
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