The Complainant is Renata SA Corporation of Switzerland, represented Steven M. Levy, the United States of America (“United States”).
The Respondent is Morteza Khaji of the 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 October 23, 2018. On October 23, 2018, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Disputed Domain Name. On October 24, 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 November 14, 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 November 16, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2018. On December 7, 2018 the Center notified the Respondent’s default.
The Center appointed John Swinson as the sole panelist in this matter on December 14, 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 Renata SA Corporation of Switzerland. The Complainant manufactures and supplies coin cell batteries for watches and other electronic products such as calculators, toys, hearing aids, and RFID devices under the “Renata” brand. The Complainant has been in business since 1974.
The Complainant owns a number of registered trade marks for RENATA, including International trade mark number 429811, registered on March 25, 1977 (the “Trade Mark”).
The Respondent is Morteza Khaji, an individual of the Islamic Republic of Iran. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on October 30, 2006.
The Complainant has provided evidence that, at the time the Complaint was filed, the Disputed Domain Name resolved to a website featuring the Trade Mark and the Complainant’s logo, from which Internet users could seemingly purchase the Complainant’s products.
Currently, there is no active website associated with the Disputed Domain Name. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions. Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the Trade Mark. Internet users are likely to be confused into believing that there is a connection between the Complainant and the Respondent. Rights or Legitimate Interests
The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent is not affiliated with the Complainant, and the Complainant has not authorized the Respondent to use the Disputed Domain Name. The website at the Disputed Domain Name gives a false impression that the Respondent is affiliated with the Complainant.
Even if the Respondent is offering the Complainant’s products for sale via the website at the Disputed Domain Name, the Respondent’s use of the Disputed Domain Name does not meet the test for bona fide use set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Respondent fails to meet this test because:
-The Respondent is not selling legitimate RENATA products. When the Complainant attempted to purchase such products via the website at the Disputed Domain Name, the Complainant was advised that the products were “unavailable”. The Respondent is either selling parallel imports or counterfeit products.
-The website at the Disputed Domain Name features links to competing third party products.
-The website at the Disputed Domain Name does not accurately disclose the relationship between the Respondent and the Complainant. On the contrary, the website contains the statement “Agent of Renata in Iran”. This statement is not correct.
Further, the Respondent is not commonly known by the Disputed Domain Name, and is not making a legitimate or noncommercial fair use of the Disputed Domain Name. The Respondent is conducting commercial activity via the website at the Disputed Domain Name. Registered or Used in Bad Faith
The Respondent is using the Trade Mark without the Complainant’s consent. The Respondent is receiving commercial gain from his use of the Disputed Domain Name, including by selling third party products, some of which compete with those offered by the Complainant. This is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy. The Respondent registered the Disputed Domain Name with full knowledge that he was infringing the Trade Mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a response.
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-20591 ). However, the Panel may draw appropriate inferences from the Respondent’s default. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is identical to the Trade Mark. It incorporates the Trade Mark in its entirety and no further words are added.
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
Rights or legitimate interests can be demonstrated by the Respondent’s bona fide use of the Disputed Domain Name in connection with an offering of goods or services, before he received notice of the dispute (paragraph 4(c)(i) of the Policy).
Before notice of the dispute, the Respondent was using the website at the Disputed Domain Name to offer the Complainant’s products for sale. It is unclear whether the Complainant’s products were actually available for purchase via that website. In any case, according to the Complaint, the Respondent was doing so without the Complainant’s permission.
In circumstances such as these, it is helpful to consider the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”) and the principles described in that decision in relation to bona fide use of a disputed domain name by a reseller. Even if the Respondent was not an authorized distributor for the Complainant, the Oki Data principles have been extended to apply to resellers who do not have a contractual relationship with a trade mark owner (see, e.g., DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481).
The panel in Oki Data stated that a reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in a domain name if its use meets the following requirements:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trade marked goods (otherwise, there is the possibility that the respondent is using the trade mark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trade mark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trade mark owner of the ability to reflect its own mark in a domain name.
At present, there is no website at the Disputed Domain Name, and it is unclear whether the Respondent continues to sell the Complainant’s products. If the Respondent is no longer doing so, the principles from Oki Data do not apply (see e.g. ESET, spol. s.r.o. v. Antivirus Australia PTY Ltd., Rodney Fewster, ESET Pty Ltd.,WIPO Case No. DAU2015-0014).
Based on the evidence before the Panel, and as submitted by the Complainant, the Respondent’s prior use of the Disputed Domain Name did not meet the Oki Data test for at least the following reasons:
- The Respondent was not using the website at the Disputed Domain Name to sell only the Complainant’s products. The Respondent was also offering for sale products manufactured by third parties, some of which competed with those offered by the Complainant. This is a clear “bait and switch”. The Respondent was using the Trade Mark in the Disputed Domain Name to attract Internet users to his website, then was offering alternative products for sale.
- The website at the Disputed Domain Name did not accurately disclose the Respondent’s relationship with the Complainant. In fact, the Complainant has provided evidence that the Respondent falsely identified himself on that website as “Agent of Renata in Iran”. According to the Complainant, the parties do not have, and have never had, any such relationship. The website at the Disputed Domain Name did not mention the Complainant, or that the Complainant is the owner of the products and the Trade Mark.
The Complainant also suggests that the Respondent may not, in fact, have been offering the Complainant’s products for sale at all. If this is the case, this further supports the Respondent’s lack of bona fide use of the Disputed Domain Name.
The Panel finds the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests.
The Respondent had the opportunity to file a Response to demonstrate his rights and legitimate interests in the Disputed Domain Name, but did not do so. Without further evidence from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
The Panel notes that the nature of the Disputed Domain Name reproduces the Complainant’s Trade Mark in its entirety. Irrespective of whether a response had been submitted, the nature of the Disputed Domain Name carries a high risk of implied affiliation and the Respondent’s use of the Disputed Domain Name would not have been considered “fair”. C. Registered or Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered or used the Disputed Domain Name in bad faith.
Based on the evidence provided by the Complainant, it is clear the Respondent had knowledge of the Complainant and the Trade Mark at the time he registered the Disputed Domain Name. The Panel finds that the Respondent sought to take advantage of the reputation of the Complainant’s business and the Trade Mark, and registered the Disputed Domain Name because of this reputation.
The Respondent likely registered and used the Disputed Domain Name to divert traffic from the Complainant’s website to the Disputed Domain Name, where the Respondent offered competing third party products for sale. The Respondent did so misleadingly, using the Trade Mark and the Complainant’s logo, by falsely describing himself as an agent of the Complainant.
The likely effect of this is that Internet users looking for legitimate avenues through which to purchase the Complainant’s products were diverted to the Respondent’s website, and sales were diverted from the Complainant, or from the Complainant’s authorized distributor, to the Respondent. This is evidence of registration and use of the Disputed Domain Name in bad faith under paragraph 4(b)(iv) of the Policy.
As noted above, there is currently no active website at the Disputed Domain Name. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith.
In light of the above, the Panel finds that the Complainant has succeeded on the third 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.
John Swinson
Sole Panelist
Date: December 20, 2018
1 In light of the substantive and procedural similarities between the irDRP and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has cited authorities decided under the UDRP where appropriate.
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