The Complainant is SMS Global Holdings Pty Ltd, Australia, represented K&L Gates, Australia.
The Respondent is Yadollah Shahkochaki, 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 May 14, 2021. On May 14, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On May 15, 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 May 25, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2021. On June 15, 2021, the Center notified the Respondent’s default. The Center appointed Adam Taylor as the sole panelist in this matter on June 28, 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 July 3, 2021, the Center received an email communication from the Respondent. 4. Factual Background The Complainant has offered SMS-related services under the name “SMSGlobal” since 2007. The Complainant now has approximately 400,000 customers in some 186 countries. The Complainant’s main website is located at “www.smsglobal.com”. The Complainant owns the following Australian trade marks: No. 1633079 registered on November 19, 2015 for the term SMSGLOBAL and No. 1633080 registered on June 12, 2015 for a logo comprising double inverted commas, both filed on July 8, 2014, in classes 9, 35, 38, 42. The Respondent registered the disputed domain name on December 31, 2016. As of May 13, 2021, the Respondent used the disputed domain name for a website in Arabic that was branded with the stylised word “SMSGlobal” together with the Complainant’s double inverted commas logo. The Respondent also operated a page on GitHub, the software collaboration and development platform, that was branded with the Complainant’s name and logo and described the Respondent’s service as “[s]end web service and advertising bulk sms”. The Respondent published code on The GitHub page that was copied from the Complainant’s code but substituting the disputed domain name for the Complainant’s domain name. 5. Parties’ Contentions A. Complainant The Complainant has developed a substantial reputation as a result of the extensive use and promotion of its trade marks. The disputed domain name is identical to the Complainant’s trade marks. The Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Respondent, which has no connection with the Complainant, is not commonly known by the disputed domain name. Nor does the Respondent own any registered trade marks or business names incorporating the Complainant’s trade mark. There is no evidence that the Respondent has used, or made preparations for use of, the disputed domain name in connection with a bona fide offering of goods or services. Nor is the Respondent making a legitimate noncommercial use of the disputed domain name, for example to offer criticism or reviews of the Complainant. Instead, the Respondent is using the disputed domain name for a website promoting identical goods and services to those of the Complainant, and by reference to the Complainant’s trade marks, in order to misleadingly divert the Complainant’s customers and potentially scam them into providing personal information and/or making payments to the Respondent. The disputed domain name was registered and is being used in bad faith. The Respondent’s use of the disputed domain name, which is confusingly similar to the Complainant’s name, and of the Complainant’s logo, as well as its copying of the Complainant’s code, shows that the Respondent was well aware of the Complainant and its rights. The disputed domain name was registered primarily for the purpose of disrupting the Complainant’s business in accordance with paragraph 4(b)(iii) of the Policy in that it resolved to a fake website that impersonated the Complainant and attempted to divert business from the Complainant. The Respondent has intentionally confused customers into thinking that its website was connected with the Complainant in accordance with paragraph 4(b)(iv) of the Policy. B. Respondent The Respondent did not submit a formal Response. In his email to the Center dated July 3, 2021, the Respondent contends that he has a small start-up in Iran (Islamic Republic of) and has owned the disputed domain name for five years. He claims that the disputed domain name was almost inactive until about last year and that important information and data of his customers are saved in the disputed domain name. The Respondent requests the Center to unblock the disputed domain name. 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 Complainant has established rights in the mark SMSGLOBAL by virtue of its registered trade mark for that term. Disregarding the country-code Top-Level Domain (“ccTLD”) suffix, in this case “.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. B. Rights or Legitimate Interests As explained in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)1, 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 Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not 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. The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent. 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. C. Registered or Used in Bad Faith It is clear from the identity between the disputed domain name and the Complainant’s trade mark, as well as from the Respondent’s use of the Complainant’s logo and its copying of the Complainant’s software, that the Respondent registered and used the disputed domain name for the purpose of impersonating the Complainant in connection with a service offering similar to that of the Complainant. Furthermore, the Respondent has not come forward 2 to deny the Complainant’s assertions of bad faith. The Panel concludes from the foregoing that the Respondent has registered and is using the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark. For the above reasons, the Panel considers 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 In view of 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. 2 In its email to the Center after the Response deadline, the Respondent did not dispute the Complainant’s contentions in the Complaint. Instead, the main purpose of the email was apparently to ask the Center to help retrieve the Respondent’s customer data, which was allegedly “saved in” the disputed domain name and which the Respondent was allegedly unable to access because its hosting services had been blocked. The Panel would point out that, while this proceeding involves locking the disputed domain name so that ownership cannot be transferred during the case, it does not entail any interference with website hosting services and any such dispute is primarily a matter between the Respondent and its host.
- 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. Identical or Confusingly Similar
Sole Panelist
Date: July 12, 2021
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