The Complainant is Google LLC of Mountain View, California, United States of America (“United States”) represented by Rouse and Co. International, United Arab Emirates.
The Respondent is Samane Latifi 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 December 20, 2018. On December 20, 2018, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On December 22, 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 December 26, 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 December 28, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2019. On January 18, 2019 the Center notified the Respondent’s default.
The Center appointed George R. F. Souter as the sole panelist in this matter on January 24, 2019. 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 the proprietor of the trademark GOOGLE, and has provided to the Panel evidence of extensive protection of its GOOGLE trademark world-wide and evidence of its international renown, in particular:
- Trademark registration number 124620 for GOOGLE, registered in the Islamic Republic of Iran on September 28, 2005.
The disputed domain name was registered on May 11, 2014, and is being used as a classified advertising website features advertised services across the Islamic Republic of Iran. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its GOOGLE trademark, containing its trademark in its entirety, with the mere addition of a descriptive or nondistinctive element.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, and in particular that the Respondent has never received permission from the Complainant to use its GOOGLE trademark in any connection whatsoever and, to the best of the Complainant’s knowledge, is not commonly known by the disputed domain name.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website offering classified advertisement services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 Complainant has uncontested rights in the GOOGLE trademark, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its widespread use of the mark.
It is well-established by prior decisions under the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”)1 , with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) or country code Top Level Domain (“ccTLD”) may be disregarded when assessing the confusing similarity between a trademark and the disputed domain name. The Panel accordingly finds the “.ir” ccTLD is irrelevant for the purposes of the first element of the Policy and in the circumstances of the present case. It is also well-established in prior decisions under the Policy, with which the Panel also agrees, that the mere addition of a descriptive or non distinctive element to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name. The addition of the country name “Iran” is clearly a descriptive element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s GOOGLE trademark, and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. In the circumstance of the present case, where the Complainant’s trademark has been incorporated in its entirety in the disputed domain name, the Panel finds that the Respondent must have had the Complainant’s trademark in mind when registering the disputed domain name, due to the trademark’s considerable usage and concomitant reputation prior to the registration of the disputed domain name. Therefore, the Panel finds it appropriate to find that the disputed domain name was registered in bad faith.
It is well-established in prior decisions under the Policy that the use of a disputed domain name registered in bad faith in connection with a website offering goods or services not emanating from the Complainant constitutes use of the disputed domain name in bad faith. In the circumstances of the present case, the disputed domain name is being used in connection with classified advertisements services. Furthermore, the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant as the source, sponsor, affiliate or endorser of Respondent’s website. The Panel regards this use as a clear example of bad faith use, and so finds.
Accordingly, the Panel finds that the Complainant has satisfied the dual requirements of paragraph of paragraph 4(a)(iii) 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.
George R. F. Souter
Sole Panelist
Date: February 7, 2019
1 Given the similarities between the IrDRP and the UDRP, the Panel finds UDRP precedent to be relevant for this case.
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