The Complainant is Technogym S.p.A., Italy, represented by Iusgate, Italy.
The Respondent is Tavan Bakhsh Kala Gostar, Iran (Islamic Republic of). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2020. On November 10, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On November 14, 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 December 18, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2021. On January 8, 2021, the Center notified the Respondent’s default. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 2, 2021. 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 an Italian joint-stock company founded in 1983 and states that it is a world-leading international supplier of products, services and solutions in the fields of fitness and wellness with 2,000 employees and 14 branches across Europe, the United States of America, Asia, the Middle East, Australia and South Africa. It has been an official supplier for the last seven Olympic Games. The Complainant has used the TECHNOGYM trademark since 1986 and is the owner of a variety of figurative, stylized and non-stylized registered trademarks for this mark, including for example, international registered trademark no. 866986 for the word mark TECHNOGYM, registered on February 18, 2005 in classes 9, 28 and 41, and designated in respect of some 21 countries including Iran (Islamic Republic of), where the Respondent is based. An example of the Complainant’s figurative/stylized TECHNOGYM marks may be found in international registered trademark no. 645891 for the mark TECHNOGYM in a distinctive black on yellow style, where the crossbar of the “T” and tail of the “Y” are elongated over the top and bottom of the word respectively, registered on August 2, 1995 in classes 9, 10, 28, 35, 41 and 42, and designated in respect of 7 countries. As verified by IRNIC, the disputed domain name was registered by the Respondent on August 9, 2015. Based on the agreements between the Parties, discussed further below, and the WhoIs record for the disputed domain name, the Respondent appears to be a company incorporated under the law of Iran (Islamic Republic of) with its registered office in Tehran, Iran (Islamic Republic of). Alternatively, the Respondent may be a natural person of the same name as, and the controller of, said company. For example, the Respondent is referred to on the website associated with the disputed domain name as “he” but the address given is largely the same as the address of said company as listed on the various agreements between the Parties. In any event, it does not matter for the purposes of this Decision whether the Respondent is the company or a natural person as it is clear that both are closely linked via the disputed domain name and its related website. The Panel will therefore refer to both company and individual as “the Respondent”. According to the Complainant, the Parties entered into a supply agreement on January 1, 2016, which terminated on June 30, 2016. The Complainant has not produced a copy of said agreement. As narrated by the Complainant, the Parties then entered into a subsequent agreement, which is produced, to provide for the completion of certain pending orders notwithstanding the expiration of the said supply agreement. Thereafter, on March 2, 2017, the Parties entered into an amendment agreement, also produced, which made various changes to the process for completion of pending orders, including by terminating and reinstating these as new orders, without prejudice to said subsequent agreement. The amendment agreement included a clause whereby the Respondent agreed to transfer the disputed domain name to the Complainant with immediate effect along with codes to allow the Complainant to operate the associated website as sole authorized owner. Between March and May 2017, the Complainant made several requests to the Respondent to honor its obligation to transfer the disputed domain name. The Respondent did not transfer the disputed domain name in response to such requests. According to screenshots produced by the Complainant, the present iteration of the website associated with the disputed domain name features the Complainant’s logo alongside the statement “The only representative of TechnoGym in Iran”. 5. Parties’ Contentions A. Complainant The Complainant contends as follows: Identical or confusingly similar The Complainant’s TECHNOGYM trademark is identical to the disputed domain name. The addition of the country code Top-Level Domain (“ccTLD”) “.ir” is irrelevant with respect to the test as it is viewed as a standard registration requirement. Rights and legitimate interests At the time of filing of the Complaint, the Respondent does not have rights and legitimate interests in the disputed domain name. The Respondent entered into a supply agreement with the Complainant for the supply of TECHNOGYM products in Iran (Islamic Republic of), with an expiry date of June 30, 2016. The Parties subsequently signed an agreement on March 2, 2017 providing inter alia the Respondent’s obligation to transfer to the Complainant the disputed domain name and any other elements, contents, passwords and any other possible element as necessary to the Complainant to use the Respondent’s website as sole authorized owner. The Respondent did not transfer the disputed domain name despite reminders and requests by the Complainant. The disputed domain name previously resolved to a website in Persian language, which reproduced the Complainant’s TECHNOGYM mark and also made use of the images of the Complainant’s products, giving the misleading impression to be an authorized distributor or seller of the Complainant. The current iteration of said website also reproduces the TECHNOGYM mark and features a link to “Instagram” pages about the Complainant, suggesting an affiliation. When clicking on the “Instagram” button, users are directed to a page which (i) reproduces the TECHNOGYM Trademark; (ii) indicates the name and contact references of Tavan Bakhsh Kala Gostar, also identified by the relevant logo, and (iii)displays the image of several Complainant’s products. The Complainant has no contractual relationship with the Respondent and has given no permission for its mark to be used in a domain name or as part of a website. The Respondent’s use of the disputed domain name cannot constitute a bona fide offering of goods or services. Registered or used in bad faith Under the agreements between the Parties, the Respondent had no title or right to register or use the TECHNOGYM mark and, in particular, the subsequent agreement included the Respondent’s obligation to transfer the disputed domain name to the Complainant. By using the disputed domain name linked to both the previous and present iteration of the Respondent’s website, even more so after the subsequent agreement between the Parties, the Respondent has intentionally attempted to attract for commercial gain Internet users to said website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source of the website and its products, giving the false impression of affiliation with or authorization by the Complainant. This proves that the Respondent has registered and/or is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In terms of the Policy, the Complainant must prove that each of three elements is present: (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 Panel is satisfied that the Complainant has established rights in its TECHNOGYM registered trademark as outlined in the factual background section above. This mark is identical to the second level of the disputed domain name. The ccTLD “.ir” may be disregarded for the purposes of comparison with the Complainant’s mark as it is required for technical reasons only. In all of the above circumstances, the Panel finds that the disputed domain name is identical to the Complainant’s TECHNOGYM mark. The first element under the Policy has therefore been established. B. Rights or Legitimate Interests The consensus view on this element of the Policy is that where a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name concerned, the burden of production shifts to the respondent to bring forward relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element (see, for example, the discussion in Dassault Systèmes SE v. Ali Mohseni,WIPO Case No. DIR2020-0024). In the present case, the Complainant has asserted that the Respondent entered an agreement to transfer the disputed domain name to the Complainant following a previous trading relationship and that the Respondent has failed to implement such transfer. More importantly, the Complainant asserts that the Respondent is using the disputed domain name for a website which references the Complainant’s TECHNOGYM mark and suggests that the Parties are affiliated when they are not. Said website features an “Instagram” link making a further representation which is suggestive of affiliation with or endorsement by the Complainant. The Panel is satisfied that these submissions constitute the requisite prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name. In particular, panels under the Policy have found that an exact match between the Second-Level of a domain name and the Complainant’s trademark carries a high risk of implied affiliation (Dassault Systèmes SE v. Ali Mohseni, ibid). The Respondent has chosen not to engage with the administrative proceeding and has therefore failed to address the Complainant’s allegations of failure to transfer the disputed domain name in default of a prior agreement and regarding a suggested affiliation between the Parties where none exists. On the basis of the present record, the Panel cannot identify any reasonable facts and circumstances whereby the Respondent might have rebutted the Complainant’s prima facie case. There is no suggestion, for example, that the Respondent is an authorized agent of the Complainant and, even if there was, the Parties’ agreements indicate that any relationship which might previously have existed between the Parties is at an end. Accordingly, the Panel finds that the Respondent has no rights and legitimate interests in the disputed domain name and therefore that the second element under the Policy has been established. C. Registered or Used in Bad Faith The actual or probable circumstances surrounding the registration of the disputed domain name have not been established to the Panel’s satisfaction in the present case. In particular, the nature of the Parties’ prior dealings is not exactly clear to the Panel. The Complainant does not describe the past history of the Parties’ relationship other than to mention the supply agreement, allegedly dating from 2016, which it has not produced with the Complaint. The date of registration of the disputed domain name by the Respondent is August 9, 2015 which is around four months prior to the date of the alleged supply agreement. The Complainant does not say whether the Respondent registered the disputed domain name in connection with any relationship between the Parties predating the supply agreement or in contemplation of the Parties concluding the supply agreement and/or, if so, whether this was done with or without the Complainant’s knowledge and/or consent. It is not therefore possible to determine whether the Respondent registered the disputed domain name in connection with an actual or contemplated business relationship with the Complainant or whether it had the Complainant’s express or implied permission to do so. In all of these circumstances, the Panel is not prepared to make a finding of registration in bad faith on the present record. Turning to the question of use in bad faith, the Panel notes that any permission or consent which might have been given to the Respondent to use the disputed domain name by the Complainant must have been effectively withdrawn following termination of the supply agreement and, furthermore, the Parties then also agreed specifically that the disputed domain name would be transferred to the Complainant with immediate effect. The Respondent has not executed such a transfer despite repeated requests and is now using the disputed domain name to point to a website (and, through this to an “Instagram” page) which suggests that the Parties are affiliated. Said website states, in terms, that the Respondent is “The only representative of TechnoGym in Iran” alongside a copy of the Complainant’s logo, protected in terms of the figurative registered trademark described in the factual background section above. The Respondent does not represent the Complainant in Iran (Islamic Republic of) and the Panel accepts the Complainant’s submission that the present use of the disputed domain name is manifestly intended to exploit the Complainant’s reputation to attract Internet users by creating a likelihood of confusion with the Complainant’s trademark. The Panel cannot see, in the circumstances of this case, how this could constitute a good faith use of the disputed domain name. It should be noted that the Respondent has received the opportunity to explain its failure to transfer the disputed domain name in implementation of the relative agreement, to outline the Parties’ commercial dealings from its own perspective, or otherwise to enlighten the Panel as to how its present use of the disputed domain name could be considered to be in good faith. The Respondent has failed to do so. In the absence of any such explanation or enlightenment, the Panel finds on the balance of probabilities that the Respondent is using the disputed domain name in bad faith. Accordingly, the third element under the Policy has been established. 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 Andrew D. S. Lothian
Sole Panelist
Date: February 16, 2021
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