The Complainant is Dassault Systèmes SE, France, represented IP Twins S.A.S., France.
The Respondent is Ali Mohseni, Islamic Republic of Iran (“Iran”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2020. On October 26, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On October 27, 2020, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 4, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2020. The Response was filed with the Center on November 21, 2020. Both the Complainant and the Respondent submitted supplemental filings respectively on November 24 and 25, 2020. The Center appointed Adam Taylor as the sole panelist in this matter on December 1, 2020. 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, which was established in 1981, supplies 3D design software. It has some 20,000 employees in 140 countries. In 2019, its revenue was approximately EUR 4 billion. The Complainant launched its “Delmia” brand in 2000, since when it has operated a website at “www.delmia.com”. The Complainant owns a number of registered trade marks for DELMIA including International Registration No. 1011578 (designating Iran amongst other countries), registered on January 19, 2009, in classes 9, 16, 38, 41 and 42, The disputed domain name bears a creation date of June 5, 2012. According to the Registrar, it was acquired by the Respondent on January 13, 2014. On September 7, 2018, the Complainant sent a legal letter to the Respondent. The Respondent replied on September 8, 2019, stating that the disputed domain name has been “given to someone else”. The Respondent invited the Complainant to contact the new owner and provided two email addresses (both utilising the disputed domain name). On September 18, 2018, the Complainant sent a chaser, to which the Respondent replied on October 9, 2018, stating simply: “I'm sorry It does not matter to me.” On August 19, 2020, the Complainant sent a purchase enquiry to the Respondent but without disclosing its identity. The Respondent replied on August 21, 2020, asking the enquirer if it was acting for a company and, if so, to identify it. The Complainant replied the same day claiming that there was no company and offering USD 1,500. The Respondent responded, also on the same day, claiming that the offer was insufficient and that it had rejected an offer of around USD 15,000. On August 24, 2020, the Complainant offered USD 2,000. The Respondent replied on August 24, 2020, stating that he was sorry and that he could sell it for more than USD 15,000. As of October 5, 2020, the Respondent operated a website at the disputed domain name that featured the Complainant’s circular “play button” logo in the header as well as number of rectangular buttons referring to “DELMIA”, as well as to “ENOVIA”, “SIMULIA” and “CATIA”, other trade marks of the Complainant, each in conjunction with the Complainant’s stylised “DS” logo. After the Complaint was filed, the Respondent removed the content previously on the site and replaced it with a statement that “The Delmia (Free Engineering Training Academy) website is being updated”, and a disclaimer “delmia.ir has no connection with Dassault Systeme company, the owner of the delmia brand”. 5. Parties’ Contentions A. Complainant The following is a summary of the Complainant’s contentions: The disputed domain name is identical to the Complainant’s well-known trade mark. The Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has found no evidence that the Respondent owns any registered trade marks in Iran. The Complainant has never authorised the Respondent to use its trade mark in the disputed domain name. The Respondent’s website reproduces the Complainant’s trade marks without the Complainant’s permission. The Respondent’s website fails to disclose the lack of a relationship between the Respondent and the Complainant. Accordingly, the Respondent is not using the disputed domain name to make a bona fide offering of goods or services. The disputed domain name was registered and used in bad faith. The Respondent’s knowledge of the Complainant’s rights can easily be inferred from the Complainant’s use of the disputed domain name and the content of the Complainant’s website, which reproduces a number of the Complainant’s trade marks. By using the Complainant’s trade marks, including its logos, in this manner, the Respondent is creating a likelihood of confusion with the Complainant’s trade marks. The Respondent has sought to impersonate the Complainant in order to offer the Complainant’s products for sale on its website. The Respondent’s attempt to hide its identity by using meaningless terms for the registrant address, and a telephone number that does not correspond to the Iranian telephone numbering system, creates a clear presumption of bad faith, as does the Respondent’s fictitious claim that the disputed domain name had been transferred to someone else. B. Respondent The following is a summary of the Respondent’s contentions: The name “Delmia” is a common girl’s name as is shown by Internet searches. The Respondent used it for his brand because it was the name of his first girlfriend. The Respondent’s website is a free educational and charitable resource for those who cannot afford to pay for training. The website is used to provide training in software products of other companies as well as those of the Complainant. No software is sold on the Respondent’s website. The software of the Complainant and others on the Respondent’s website cannot be sold in Iran because it is already available for free illegal download on other sites. The Respondent is using the Complainant’s logos legitimately to explain to its students which software the training is for. The Respondent is not illegally copying the Complainant’s trade marks. Therefore, the Complainant cannot infer that use of its logo necessarily means that the site is providing illegal copies of the Complainant’s software. C. Complainant’s Supplemental Filing The following is a summary of the Complainant’s additional contentions: The Respondent’s changes to the website after the Complaint was filed constituted further indications of bad faith as they demonstrate that the Respondent wanted to hide its previous activities. D. Respondent’s Supplemental Filing The following is a summary of the Respondent’s additional contentions: The Complainant cannot object to the Respondent updating his website by putting it into maintenance mode, which he does every six months. The Respondent does not sell the Complainant’s software. The Respondent’s website has too little storage space to enable download of software. The content referred to by the Complainant was just a text advertisement designed to improve search engine visibility and had no other purpose. The Respondent removed it from the site to demonstrate his goodwill. 6. Discussion and Findings Under the Policy, the Complainant is required to prove on the balance of probabilities that: - the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; The Response does not comply with the formal requirements set out in paragraph 5 of the Rules. For example, there is no statement of truth. The Panel has nonetheless decided to admit the Response in accordance with its powers under paragraph 10(d) of the Rules but to bear in mind the Response’s non-compliance with the Rules, including in particular the absence of a statement of truth, when weighing up the Respondent’s assertions in this case. B. Preliminary - Supplemental Filings Each party has made an unsolicited supplemental filing. Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)1 states that UDRP panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response, e.g., owing to some “exceptional” circumstance. In this case, the Panel has decided to admit the Complainant’s supplemental filing because it deals principally with an event which occurred after the Complaint was filed. The Panel had also decided to admit the Respondent’s supplemental filing because it adds some detail the Respondent’s case which the Panel finds helpful. C. Identical or Confusingly Similar The Complainant has established rights in the mark DELMIA by virtue of its registered trade marks . Disregarding the country code Top-Level Domain (“ccTLD”) “.ir”, the disputed domain name is identical to the Complainant’s trade mark. The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. D. Rights or Legitimate Interests As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element. Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark. Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests. As to paragraph 4(c)(i) of the Policy, the Respondent denies that has sold illicit versions of the Complainant’s software and instead claims that its only use of the disputed domain name has been to provide free training in the Complainant’s products to poor students. As explained in section 6E below, the Panel is sceptical about the Respondent’s assertion. However, even if the Respondent’s version is correct, for reasons explained below the Panel does not consider that such use of the disputed domain name constitutes rights or legitimate interests for the purposes of the Policy. The Panel thinks it appropriate to approach this as a reseller-type case because the Respondent claims to be offering a service relating to the Complainant’s products. The consensus view of UDRP panels – as expressed in section 2.8 of WIPO Overview 3.0 – is that to establish a bona fide offering of goods or services in such circumstances, the respondent must comply with certain requirements (known as the “Oki Data test”) including: 1. use of the site to sell only the trade marked goods or services; and 2. the site’s accurately and prominently disclosing the Respondent’s relationship with the trade mark holder. It may be that the Respondent has not met the first requirement above because it admits in the Response that it is using the website at the disputed domain name with respect to software offered by other companies as well as that of the Complainant – although such other software is not evident in the screenshots that have been supplied to the Panel. In any case, the Panel is satisfied that the Respondent has failed to comply with the second requirement above as there is no evidence showing that the website accurately and prominently disclosed the Respondent’s relationship with the Complainant. On the contrary, the screenshots before the Panel, albeit not translated, imply that the Respondent’s website was prominently branded with the Complainant’s logo. Furthermore, UDRP panels have found that domain names identical to a complainant’s trade mark – as here - carry a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. Accordingly, the Panel considers that the Respondent’s use of the disputed domain name cannot be said to be bona fide. Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case – see further under section 6E below. The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. E. Registered or Used in Bad Faith The Panel is satisfied that the Respondent registered the disputed domain name with the Complainant’s distinctive trade mark in mind, given the use of disputed domain name for a website either to sell illicit versions of the Complainant’s software (as the Complainant claims) or to provide free training in the Complainant’s software (as the Respondent claims), In these circumstances, the Panel is not convinced by the Respondent’s assertion that it selected the disputed domain name because it corresponded with the name of an old girlfriend. This seems an unlikely coincidence and, in any case, no proof of her identity has been provided. As regards use of the disputed domain name, the Panel has been hampered to some extent by the lack of a translation from either party of the Arabic text on the previous version of the Respondent’s website. However, not only has the Respondent provided no evidence in support of its claim that it used the disputed domain name for a website to provide free training services, the Respondent has acknowledged in its supplemental filing that a button on the site containing the word “Delmia” plus the Complainant’s “DS” logo was at least a “text advertisement”. The Panel considers that It is reasonable to infer from this admission that the Respondent sought to profit from use of the Complainant’s trade mark. The Panel is not convinced that the sole purpose of such an advertisement would have been to “be seen in search engines”. Furthermore, following filing of the Complaint, the Respondent temporarily replaced the website with a statement that “The Delmia (Free Engineering Training Academy) website is being updated”. To the Panel, this looks less like routine website maintenance, as the Respondent claims, and more like a defensive move designed to bolster the Response – as does the belated disclaimer “delmia.ir has no connection with Dassault Systeme company, the owner of the delmia brand”. The Panel also notes that the Respondent has not sought to justify or explain its apparently incorrect assertion to the Complainant in the 2018 that the disputed domain name had been “given to someone else” or its use of seemingly meaningless words and an incorrect telephone number in the registrant details for the disputed domain name. Such matters cast further doubt on the credibility of the Respondent’s version events. In any event, it is unnecessary for the Panel to reach a conclusion as to whether or not the Respondent offered the Complainant’s software for sale on its website. Even if the Respondent has only ever used the disputed domain name to offer free training in the Complainant’s software, as it claims, this would still constitute use in bad faith in the circumstances of this case. In particular, in the Panel’s view the Respondent would still have set out to create a likelihood of confusion with the Complainant’s mark for the purposes of paragraph 4(b)(iv) of the Policy by selecting a domain name comprising the Complainant’s distinctive mark, by branding the website with the Complainant’s logo and omitting any prominent disclaimer, and by using the website to offer services (free or otherwise) relating not only to the Complainant’s products but to those of other software providers also. For the above reasons, the Panel finds that the Respondent has registered and/or used the disputed domain name in bad faith and that the Complainant has established the third element of paragraph 4(a) 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 Adam Taylor 1 Noting the substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to WIPO Overview 3.0, where appropriate.
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered or is being used in bad faith. A. Preliminary - Informal Response
Sole Panelist
Date: December 15, 2020
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