The Complainant is TechSmith Corporation, United States of America (“United States”), represented Duby Law Firm, United States.
The Respondent is Mohammad Zandian, mohandesmoallem, 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 October 8, 2021. On October 12, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On October 17, 2021, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.
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, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2021. On November 26, 2021, the Center notified the Respondent’s default.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on December 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 BackgroundThe Complainant has been in business for over 30 years. The Complainant owns many trademark registrations for CAMTASIA such as:
(1) United States of America registration No. 2,488,689, registered on September 11, 2001;
(2) Japan trademark registration No. 4893383, registered on September 9, 2005;
(3) European Union Trade Mark registration No. 2068575, registered on September 27, 2002.
The disputed domain name was registered by the Respondent on December 1, 2020. The disputed domain name resolves to a website offering the Complainant’s products and other products.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has registered its trademark worldwide. The Respondent is using the disputed domain name only since 2020 to diver Internet users to its site where it offers unauthorized copies of the Complainant’s software. The disputed domain name reproduces the Complainant’s trademark CAMTASIA and uses the country code Top-Level Domain (“ccTLD”) “.ir”, which does not distinguish the disputed domain name from the Complainant’s trademark CAMTASIA.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is using the disputed domain name since 2020, which is well after the Complainant had started using its trademark. The Respondent is not authorized by the Complainant to use its trademark. The Respondent is not commonly known by the disputed domain name. The unauthorized offering of the Complainant’s goods cannot be considered a bona fide offering of goods and services. Offering competing goods cannot be considered a bona fide offering of goods and services. The Respondent is using the disputed domain name for commercial gain and/or to disrupt the business of the Complainant by misleading consumers. There is a high risk of implied affiliation as the disputed domain name is identical to the Complainant’s trademark.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name reproduces the Complainant’s trademark in its entirety to create a likelihood of confusion so that the Respondent can benefit commercially. The Respondent uses the disputed domain name to host a website through which it offers unauthorized downloads/copies/versions of the Complainant’s products. Such use competes with the Complainant and is disruptive to its business. The Respondent knew of the Complainant’s trademark as the disputed domain name is used to offer unauthorized copies of the Complainant’s products and as the Complainant’s trademark is well known. The mere reproduction of a well-known trademark in a domain name indicates bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant owns trademark registrations for CAMTASIA. The Panel is satisfied that the Complainant has established its ownership of the trademark CAMTASIA. The disputed domain name incorporates the Complainant’s trademark CAMTASIA in its entirety. The ccTLD “.ir” should typically be ignored when assessing confusing similarity as established by prior panels.
Consequently, the Panel finds that the disputed domain name is identical to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant to use its trademark. Therefore, it is for the Respondent to prove that it has rights or legitimate interests.
According to the Policy, the use of the disputed domain name would be legitimate if it is used in connection with a bona fide offering of goods or services. The website to which the disputed domain name resolves offers products and the services offered by the Complainant. Therefore, there may be an argument that the disputed domain name is being used with a bona fide offering of goods or services and the current dispute should be analyzed in line with the Oki Data test. According to the Oki Data test, the following requirements have to be met (see Oki Data Americas, Inc v. ASD, Inc., WIPO Case No. D2001-0903 );
1. “Respondent must actually be offering the goods or services at issue”;
2. “Respondent must use the site to sell only the trademarked goods”;
3. “The site must accurately disclose the registrant’s relationship with the trademark owner”; and
4. “The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name”.
The Panel analyzes each of these requirements below:
a. Requirement no. 1: This requirement is met in the instant case as the disputed domain name resolves to a website which offers the Complainant’s products.
b. Requirement no. 2: This requirement is not met. The website to which the disputed domain name resolves offers the Complainant’s products. Pictures and the name of the Respondent also appear on the website and it appears that other products not related to the Complainant are being offered.
c. Requirement no. 3: This requirement is not met as the website to which the disputed domain name resolves does not disclose the relationship with the Complainant.
d. Requirement no. 4: This requirement is not met as there is no evidence the Respondent has tried to corner the market.
In addition, the Panel finds that the disputed domain name carries a high risk of implied affiliation with the Complainant.
Given that some of the requirements were not met, the Respondent has not been able to prove any rights or legitimate interests in the disputed domain name. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad FaithThe Respondent must have been aware of the Complainant’s trademark as it provides the Complainant’s products to customers (in addition to other products not related to the Complainant), and uses the Complainant’s logo and green color on its website. As such, the disputed domain name suggests affiliation with the Complainant in order to attract consumers and offer a variety of goods and services, which is an act of bad faith.
Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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
Nayiri Boghossian
Sole Panelist
Date: December 10, 2021
1 Given the similarities between the .irDRP and the UDRP, the Panel takes note of the applicable WIPO Overview 3.0, sections and the cases therein as relevant.