The Complainant is Desenio AB, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Amir Shabani, Rayan Dadeh Negar Dena, Iran (Islamic Republic of).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 4, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On August 7, 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 August 25, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2021. On September 20, 2021, the Center notified the Respondent’s default.
The Center appointed Steven A. Maier as the sole panelist in this matter on September 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.
4. Factual BackgroundThe Complainant is a company registered in Sweden. It is a supplier of posters, prints and other wall art under the name and trademark DESENIO.
The Complainant is the owner of trademark registrations for the mark DESENIO, including for example for the following:
- Sweden trademark number 526769 for the word mark DESENIO, registered on September 18, 2015 for goods and services including paintings, posters, art prints and graphic art prints in International Class 16.
- European Union Trade Mark number 016333569 for the word mark DESENIO, registered on July 31, 2017 for goods and services including graphic images, printed images and posters in International Class 16.
- International trademark number 1383099 for the word mark DESENIO, registered on November 21, 2017 for goods and services including printed visuals and posters in International Class 16.
According to the available WhoIs report, the status of the disputed domain name was last updated on August 7, 2021.
The Complainant has exhibited evidence that the disputed domain name has resolved both to an inactive website and to a website stating “DESENIO.IR - POSTER WALL ART - Our website is under construction and Coming Soon…”
As at the date of this decision, the disputed domain name resolves to a website, principally in the Persian language, headed “DESENIO.IR” which appears to offer wall art for sale online.
5. Parties’ Contentions A. ComplainantThe Complainant states that it is active in more than 30 countries and that its trademark rights in the mark DESENIO long precede the Respondent’s use of the disputed domain name.
The Complainant submits that the disputed domain name is identical to its trademark DESENIO.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never authorized the Respondent to use its DESENIO trademark, that the Respondent has not commonly been known by that name and that the Respondent is not making legitimate noncommercial or fair use of the disputed domain name. The Complainant contends instead that the Respondent registered the disputed domain name with the Complainant’s trademark in mind in order to profit from the confusion that would be caused to Internet users.
The Complainant submits that the disputed domain name was registered and has been used in bad faith. The Complainant relies on its registration of the DESENIO mark long before the Respondent started to use the disputed domain name and contends that the Respondent’s website is intended to mislead Internet users into believing that it is operated by the Complainant.
The Complainant also exhibits a “cease and desist” letter which it sent to the Respondent on June 13, 2021. While the Complainant says that the Respondent did not reply to that letter, that is not consistent with a reply from the Respondent dated July 9, 2021, which the Complainant also exhibits. That reply states that “… we are a startup since 2019, mainly inspired by sites like Desenio and other sites in the fields of art, photography and interior design”. The reply goes on to say that that the Respondent is fully active in its domestic market and plans to launch in other English, Arabic and Turkish speaking markets. It continues: “Please let us know if you have any opinion and approach in this regard. We fully understand your concern and we are open for any suggestions to solve these concerns and hopefully cooperate with you.”
The Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered or is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has established that it is the owner of registered trademark rights in the name and mark DESENIO. The disputed domain name
In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered or Used in Bad FaithThe Panel finds the Complainant’s trademark DESENIO to be distinctive and to be associated by members of the public with the Complainant’s business of selling prints, posters and other wall art. The Respondent has admitted that it was “inspired” by sites such as the Complainant’s, has used the disputed domain name for a similar business offering and has offered no other explanation for its choice of the disputed domain name. The Panel also observes (based on its own inspection) that the appearance and structure of the Respondent’s website at the date of this decision bears a significance resemblance to the Complainant’s own websites. The Panel therefore has no hesitation in finding that the Respondent registered the disputed domain name in the knowledge of the Complainant’s DESENIO mark and with the intention of misleadingly creating an association with that mark. The Panel finds the Respondent’s use of the disputed domain name in this manner to constitute a deliberate impersonation of the Complainant and therefore to evidence registration and use of the disputed domain name in bad faith.
The Panel further infers from the Respondent’s email dated July 9, 2021 that the Respondent intended to benefit from its registration of the disputed domain name, being identical to the Complainant’s DESENIO trademark, for example, by selling the disputed domain name to the Complainant for a sum in excess of its documented out-of-pocket costs related to the registration (paragraph 4(b)(i) of the Policy). That impression is bolstered by the Respondent’s recent adoption of a website which resembles the Complainant’s websites.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
7. DecisionFor 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,
Steven A. Maier
Sole Panelist
Date: October 4, 2021