ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Assa Abloy AB v. Amir Shahram Soleimani Case No. DIR2023-0017 1. The Parties The Complainant is Assa Abloy AB, Sweden, represented by Coöperatie SNB-REACT U.A., Netherlands (Kingdom of the). The Respondent is Amir Shahram Soleimani, Iran (Islamic Republic of). 2. The Domain Names and Registry The disputed domain names
and are registered with IRNIC. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2023. On December 18, 2023, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain names. On December 19, 2023, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center in January 2024. 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 9, 2024. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2024. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 1, 2024. 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.
page 2 4. Factual Background The Complainant (which is in ASSA ABLOY group) is a global leader in door opening solutions with sales of SEK 95 billion (over USD 9 billion). The Complainant ASSA ABLOY was formed by the merge of ASSA and Abloy in 1994. Since that date the Complainant started to use the trademark ASSA ABLOY in commerce. The Complainant has since 1994 been listed on the NASDAQ Stockholm Large Cap list. Besam was established in 1962 and joined the ASSA ABLOY group in the year 2002. The Complainant has a presence in more than 70 countries worldwide and has presence in Europe, North America, and the Asia Pacific region, within areas such as mechanical and electromechanical locking, access control, identification technology, entrance automation, security doors, hotel security and mobile access. The Complainant also has operations in the Middle East, with its main regional office located in Dubai, United Arab Emirates. The Group also has offices in Qatar and Egypt which serve Persian Gulf markets such as Saudi Arabia, Qatar, Oman, Kuwait, Bahrain, Jordan, Lebanon, and Iraq. The Complainant (ASSA Abloy AB) is the parent company of the trademark holder (ASSA ABLOY Entrance Systems AB), as it is at the head of the ASSA ABLOY Group, which the trademark holder is also part of. The Complainant submits confirmation by ASSA ABLOY Entrance Systems AB of the Complainant’s authority to file and pursue this domain name claim. The Complainant operates a domain name located at “www.assaabloy.com”. The Complaint is based on the following trademarks: International Registration No. 1399880 for ASSA ABLOY in classes 7, 19, 20, 37, and 42, registered on December 11, 2017; and International Registration No. 1264351 for BESAM in classes 6, 7, 9, and 19, registered on June 18, 2015. In addition, the Panel visited and checked the EUIPO and TMView databases and was able to verify that the trademark ASSA ABLOY was registered in Sweden in 1996 and there are several filings with the term ASSA ABLOY at EUIPO including MEGADOOR ASSA ABLOY (International registration no.1169264, registered on June 13, 2013, designated several jurisdictions including the European Union). The disputed domain name was registered on February 9, 2013. The disputed domain name was registered on November 8, 2010. The disputed domain name is currently not in use. However at the time of filing the Complaint it resolved to a website that was using the Complainant trademark and contained, according to the Complainant, a message, with the words ASSA and ABLOY in an extra-large green font, stating: “Saba Software Company (member of Ehsa Group) is the exclusive representative of ASSA ABLOY automatic doors in Iran”. The disputed domain name redirects to . 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.
page 3 Notably, the Complainant contends that: - the disputed domain names are confusingly similar to the trademarks in which it has rights; - the Respondent has no rights or legitimate interests in respect of the disputed domain names; - the Respondent has registered or is using the disputed domain names in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements, which a complainant must satisfy in order to succeed. The Complainant must satisfy that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.0F1 The Complainant has shown rights in respect of trademarks or service marks for the purposes of the Policy. WIPO Overview 3.0, sections 1.2.1 and 1.4. The entirety of the marks are reproduced within the disputed domain names. Accordingly, the disputed domain names are identical or confusingly similar to the marks for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other term “entrance” in the disputed domain name may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in the proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the 1 Given the similarities between the .irDRP and the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel takes note of the applicable WIPO Overview 3.0, sections and the cases therein as relevant.
page 4 respondent. As such, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. The disputed domain name is currently not in use. However at the time of filing the Complaint it resolved to a website that was using the Complainant trademark and, according to the Complainant, contained a message, with the words ASSA and ABLOY in an extra-large green font, stating: “Saba Software Company (member of Ehsa Group) is the exclusive representative of ASSA ABLOY automatic doors in Iran”. The disputed domain name redirects to . Such use cannot be considered as a bona fide offering of goods or services, nor a noncommercial use or fair use, in accordance with paragraph 4(c) of the Policy. Furthermore, the Panel notes the composition of the disputed domain names carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1. The Complainant has not authorized the Respondent to be its representative nor to use its trademark in the disputed domain names. The Panel finds the second element of the Policy has been established. C. Registered or Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith. In the present case, the Panel notes that: - The trademark ASSA BLOY has been in use since at least 1996. - The trademark BESAM has been in use by the Complainant since the year 2002. - More likely than not, the Respondent was aware of the Complainant and its trademark rights when he registered the disputed domain names. Both disputed domain names incorporate one of the Complainant’s trademarks in its entirety, and the website to which the dispute domain name resolves to contains the Complainant’s logos and trademarks on the websites connected to the disputed domain names as well. The disputed domain name redirects to the first disputed domain name . - As a result, it is undisputable that the Respondent had the Complainant in mind when registering the disputed domain names. - The ASSA ABLOY and BESAM marks are distinctive and widely known (Assa Abloy AB v. Goharbarane Sharif / Mohammad Reza Rahmani Zanjani, WIPO Case No. DIR2016-0005, and ASSA ABLOY AB v. P D S AB, WIPO Case No. D2000-0442). ASSA ABLOY is a highly distinctive trademark for the classes of goods and services for which it is registered, and it has no descriptive character.
page 5 - The Complainant has not authorized the Respondent to appear as its representative nor to use its trademarks in the disputed domain names. - The Respondent is in default. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4. Therefore, the Panel finds that the disputed domain names were registered or are being used in bad faith. 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 names and be transferred to the Complainant. /Pablo A. Palazzi/ Pablo A. Palazzi Sole Panelist Date: February 15, 2024.
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