The Complainant is CSL Behring GmbH, Germany, represented Saba & Co.
The Respondent is Hesamaldin Amininejad, 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 January 19, 2021. On January 19, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On January 21, 2021, 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 January 28, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2021. On February 18, 2021, the Center notified the Respondent’s default. The Center appointed Olga Zalomiy as the sole panelist in this matter on February 26, 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. On March 23, 2021, the Panel issued Procedural Order No. 1, seeking further information from the Complainant, also giving Respondent until March 26, 2021 to file any related submissions and extending the deadline for a decision to at least March 31, 2021. On March 23, 2021, the Respondent sent the following email in response to the Order: “I register[sic] the domain cslbehring.ir in 2016 to be Partner with CSL Behring in our country with [sic] after full CSL Behring Co. permission but till [sic] now i [sic] wasn’t able to negotiate...” On March 25, 2020, the Complainant submitted a response to Procedural Order No. 1 along with several trademark registration certificates in the name of CSL Behring LLC, a Delaware limited liability company. 4. Factual Background The Complainant is an affiliate of CSL Behring group of companies (“CSL Behring”) with offices all around the world. CSL Behring is a biopharmaceutical company, manufacturing plasma-derived and recombinant therapeutic products. CSL Behring LLC, which is another member of the group, owns several trademark registrations for the CSL Behring trademark, such as: - the United Arab Emirates trademark registration No. 327051 for the word mark CSL BEHRING, registered on June 28, 2020; and - the United States of America trademark registration for the word mark BEHRING, registration No. 3127022, registered on August 8, 2006 with priority date of November 28, 2003. CSL Behring LLC also owns several domain name registrations including the CSL BEHRING trademark, such as ˂cslbehring.com˃ registered on February 22, 2006 that directs to the CSL Behring main website. According to excerpts from the Wayback Machine (“www.archive.org”), CSL Behring has been using the “www.cslbehring.com” website since 2007. Also according to Wikipedia, as part of a global alignment, the CSL Behring brand was established in 2007 (being previously known as ZLB Behring). The Respondent registered Domain Name some time prior to 2020 and updated the Domain Name registration on October 20, 2020. According to IRNIC the Domain Name was created in 2016. The Domain Name does not resolve to any active website. 5. Parties’ Contentions A. Complainant The Complainant claims that it is a biopharmaceutical company, manufacturing plasma-derived and recombinant therapeutic products. The Complainant contends that the Domain Name is confusingly similar to its well-known name because that is the only component of the Domain Name. The Complainant alleges that the Respondent has not been commonly known by the Domain Name. The Complainant contends that it has not authorized the Respondent to use its CSL Behring name in any way. The Complainant argues that the Respondent is not making any legitimate noncommercial use of the Domain Name. The Complainant alleges that its CSL Behring name is well-known, so there is no other reason for the Respondent to use the arbitrary and famous CSL Behring name other than to trade off the established goodwill in the products of the Complainant. The Complainant moreover points out that it has been exporting its products to Iran for more than 8 years. The Complainant submits that the Domain Name was registered by the Respondent in bad faith, because the Respondent registered the Domain Name incorporating the Complainant’s name without any authorization from Complainant to attract Internet users for commercial gain. The Complainant contends that the Respondent registered the Domain Name for no purpose other than to create a false impression of an association with the Complainant. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. The Respondent sent an informal communication on March 23, 2021 to the Center in response to Procedural Order No. 1. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered or is being used in bad faith. Given the similarities between the Policy and the UDRP, the Panel takes note of the applicable WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections and the cases therein as relevant. A. Identical or Confusingly Similar To prove this element, the Complainant is required to establish that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights. The Complainant contends that the Domain Name is confusingly similar to its famous trade name. The Complainant notes that while it owns trademark registrations for its products, it registered “CSL Behring” as a trade name which has been in use for nearly 15 years. The Complainant submitted several business name registrations for the companies in Australia, the United States of America, and Switzerland. The Complainant’s affiliate company owns trademark registrations for the CSL BEHRING trademark. Pursuant to Section 1.4.1 of the WIPO Overview 3.0, a trademark owner’s authorized affiliate is considered to have rights in a trademark under the Policy for purposes of standing to file a complaint. The Domain Name consists of the CSL BEHRING trademark and the country code Top-Level Domain “ir” (“ccTLD”). It is well-established, that the applicable ccTLD should be disregarded under the confusingly similarity test as a standard registration requirement.1 Because the ccTLD “.ir” is disregarded under the confusing similarity standard, the Domain Name is identical to the Complainant’s trademark. The Panel finds that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests To satisfy the second Policy element, the Complainant must make a prima facie case in respect to the lack of rights or legitimate interests of the Respondent.2 Pursuant to paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(2) of the Policy: (i) before any notice of the dispute, the respondent’s use of, or 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 (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Although the Respondent claims that it registered the Domain Name with the Complainant’s permission to be the Complainant’s local partner, there is no evidence in the record showing that Complainant provided such permission (indeed the very filing of this case undercuts such assertion by the Respondent). Therefore, it is likely, that the Respondent did not have an authorization from the Complainant to register the Domain Name. The Panel also accepts that there is no evidence that the Respondent has been commonly known by the Domain Name. Further, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name because the Domain Name does not resolve to any active website. The Respondent’s non-use, or passive holding, of the Domain Name does not constitute bona fide offering of goods or services or a legitimate noncommercial or fair use. See, e.g., Bayerische Motoren Werke AG v. David Weiss, Weiss Ent,WIPO Case No. D2017-2145 (“The Panel agrees that the use of the disputed domain name in connection with a ‘coming soon’ website is analogous to non-use or passive holding, which does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use.”). Moreover, the Respondent concedes that it registered the Domain Name to be the Complainant’s business partner, but they never came to an agreement, that confirms that the Respondent has no rights or legitimate interests in the Domain Name. For the reasons stated, the Panel finds that the Complainant has made a prima facie case in respect to the lack of rights or legitimate interests of the Respondent in the Domain Name. Once a complainant makes a prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.3 The Respondent has failed to do so. Thus, the Panel concludes that the Complainant has satisfied the second element of the Policy. C. Registered or Used in Bad Faith Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered or is being used in bad faith. The Complainant contends that that the Respondent registered the Domain Name in bad faith because the Respondent’s email of March 23, 2021 confirms it. The Panel finds the Complainant’s contention plausible. While the Respondent registered the Domain Name prior to the Complainant’s CSL BEHRING trademark registration in the United Arab Emirates, it registered the Domain Name many years after the Complainant’s United States of America trademark was registered and this points to an inference that this was done so with the knowledge of the Complainant and, likely, with the knowledge of the Complainant’s BEHRING trademark. The Respondent contends that the Domain Name was registered in 2016 and the Complainant does not dispute it; IRNIC has moreover confirmed that this was when the Domain Name was created. Here, the Complainant has been using the “CSL Behring” name since 2007 and the CSL BEHRING trademark since 2019. The Complainant also owns the BEHRING trademark with the priority date of November 28, 2003. The Respondent concedes that it registered the Domain Name to hopefully become the Complainant’s partner. Therefore, it is clear that the Respondent registered the Domain Name with the knowledge of the Complainant and its trademark rights to capitalize on the Complainant mark’s goodwill. It is also well-established that non-use of a domain name would not prevent a finding of bad faith under certain circumstances.4 The following circumstances have been considered “relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; and […] (iv) the implausibility of any good faith use to which the domain name may be put”.5 Here, the Respondent concedes that it has been unable to become a Complainant’s local partner as it allegedly planned. Therefore, no good faith use of the Domain Name, which is almost identical to the Complainant’s trademark and the Complainant’s domain name, is plausible taken into account a risk of implied affiliation. Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the Policy has been satisfied. 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 Domain name Olga Zalomiy 1 Section 1.11.1, WIPO Overview 3.0 2 Section 2.1, WIPO Overview 3.0 3 Section 2.1, WIPO Overview 3.0 4 Section 3.3, WIPO Overview 3.0 5 Id.
Sole Panelist
Date: March 29, 2021
Full & Egal Universal Law Academy