The Complainant is Esmod, France, represented Saba & Co. IP, Lebanon.
The Respondent is Nima Mir Derickvand, 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 November 8, 2021. On November 8, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On November 9, 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 November 9, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2021. On November 30, 2021, the Center notified the Respondent’s default.
The Center appointed Marilena Comanescu as the sole panelist in this matter on December 3, 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 well-known fashion design and business school incorporated in France in 1957.
The Complainant holds trademark registrations for ESMOD, such as the following:
- the French Trademark Registration No. 1534654 filed and registered on June 5, 1989 for ESMOD (word), covering goods and services in International Classes 16, 35, 40 and 41; and
- the International Registration No. 522602 registered on February 5, 1988 for ESMOD (word), designating many countries worldwide and covering goods and services in International Classes 16, 35, 40, 41 and 42.
The Complainant holds domain names that include the ESMOD mark such as
The disputed domain name
The Complainant sent a cease and desist letter to the Respondent to transfer the disputed domain name to it on July 17, 2019 and a follow up letter on September 27, 2021. No satisfactory response was received.
The parties were involved in another dispute under the Uniform Domain Name Dispute Resolution Policy ("UDRP”) solved in the favour of the Complainant. See case ESMOD v. Nima Mirderrickvand,WIPO Case No. D2019-0832 (although the name of the Respondent is slightly modified).
According to Annex 7 to Complaint, during the correspondence between the parties regarding “
The Complainant contends that the disputed domain name is identical to its well-known trademark, trade name and domain names, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn view of the default and the absence of any reply to the Complaint by the Respondent, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.1
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant holds rights in the ESMOD trademark.
The disputed domain name reproduces the Complainant’s trademark identically.
It is well established in decisions under the UDRP2 that the country-code Top-Level Domain (“ccTLD”) (e.g.,“.ir”, “.fr”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Given the above, the Panel finds that the disputed domain name is identical to the Complainant’s trademark ESMOD, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate InterestsThe Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark ESMOD, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.
The Respondent registered the disputed domain name incorporating a third party’s trademark widely used worldwide, without any authorization and keeps it inactive.
Furthermore, and without prejudice to the above, the nature of the disputed domain name, comprising the Complainant’s trademark in its entirety, carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered or Used in Bad FaithThe Complainant is using the tradename Esmod since 1957 and holds trademark rights for ESMOD since at least 1988. Due to its extensive use and marketing, the ESMOD trademark has become distinctive and gained reputation in its industry.
The disputed domain name was registered in 2019 and reproduces the Complainant’s mark identically.
At the time of filing the Complaint, the disputed domain name was not actively used.
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” or other similar inactive page) would not prevent a finding of bad faith under the doctrine of passive holding. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be relevant circumstances found to be indicative of bad faith include the degree of distinctiveness or reputation of the Complainant’s mark and the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use. See section 3.3 of the WIPO Overview 3.0.
The Complainant’s trademark is well-known worldwide in its industry and there is no plausible explanation for the Respondent to choose and register such domain name other than to create confusion or association with the Complainant and its ESMOD mark.
While the Respodent (has not submitted) failed to submit a response in this case, according to Annex 7 to Complaint, in a correspondence between parties as described in section 4 above, the Respondent was claiming to be a domain seller. While the business of buying and selling domain names is a legitimate business, domainers have some duty of making a good faith effort to search for and avoid the registration of trademark-abusive domain names. See section 3.2.3 of the WIPO Overview 3.0.
Furthermore, the Respondent was involved in a prior UDRP dispute, see case ESMOD v. Nima Mirderrickvand supra and refused to participate in the present proceeding in order to provide any arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.
Finally, it was consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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
Marilena Comanescu
Sole Panelist
Date: December 17, 2021
1 The difference between the irDRP and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) is that under the irDRP it is sufficient to prove that either registration or subsequent use of the domain name by the registrant occurred in bad faith, whereas the UDRP requires the complainant to prove both elements.
2 Because the irDRP shares similarities with the UDRP the Panel refers to previous UDRP precedent where appropriate.