The Complainant is Deere & Company, Inc., United States of America (“United States”), internally represented.
The Respondent is Morteza Zamani, Islamic Republic of Iran.
The disputed domain name <iranjohndeere.com> is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2019. On October 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 22, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 25, 2019.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2019.
The Center appointed Antony Gold as the sole panelist in this matter on November 21, 2019. 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.
The Complainant is a manufacturer of equipment for use in agriculture as well as in a number of related fields. It is based in the United States, was founded in 1837, and its products are now sold in more than 130 countries. The Complainant’s revenues for the 2018 fiscal year exceeded USD 37 billion.
The Complainant first branded its products as JOHN DEERE in 1876 and its first trade mark was applied for and registered in 1913. The Complainant now has many trade mark registrations for JOHN DEERE, both in the United States and in other countries. These include, by way of example, United States trade mark registration number 0091860 for JOHN DEERE, registered on June 3, 1913, filed initially for goods in International Class 7 1. The Complainant also owns domain names incorporating its trade mark, including <johndeere.com> and <johndeere.net>, which resolve to websites which provide information about the Complainant’s products and services.
The disputed domain name was registered on November 2, 2015. Screenshots of the website to which the disputed domain name has resolved prominently feature the Complainant’s JOHN DEERE trade mark, as well as its figurative mark of a leaping deer. One of the web pages contains, in large type, the name “Behrooz International Commerce Co., Ltd”. Immediately underneath, in a smaller font, are the words “John Deere Spare Parts”. Beneath that is a claim that “John Deere has entered Iran about 60 years ago and has been imported all along over the years, for years John Deere Combines have been manufactured in the country”. Under a heading “Behrooz’s Services” is a claim that “Our complex […] has commenced collections of thousands of spare parts […] it is also noteworthy that all John Deere products enter Iran with COTECH brand has 6 months of garanty”.
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It draws attention to its registered JOHN DEERE trade marks, full details of one of these marks having been set out above. The most dominant and distinctive portion of the disputed domain name is JOHN DEERE. The Respondent has taken the Complainant’s entire JOHN DEERE mark and simply placed the geographic term “Iran” in front of it, which indicates that this is the country in which the Respondent performs its business activities. The addition of a geographic term is insufficient to distinguish the disputed domain name from the Complainant’s JOHN DEERE marks; see for example: Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768. Moreover, the addition of the generic Top Level Domain (“gTLD”) “.com” as a suffix to the disputed domain name is irrelevant to the analysis of confusing similarity.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not using the disputed domain name for a bona fide offering of goods or services. It is located in Iran, a country in which the Complainant has no business dealings at all and does not sell any product. The Respondent does not have any trade mark registrations for JOHN DEERE, nor is it commonly known as JOHN DEERE, nor does it have any other rights in the mark. The Complainant has not licensed or otherwise permitted the Respondent to use its marks or to apply for any domain name incorporating its marks. Furthermore, the Complainant’s exclusive rights in its marks long pre-date the Respondent’s registration of the disputed domain name.
The Respondent has adopted and registered the disputed domain name because of its confusing similarity with the Complainant’s trade marks and with the intent to profit commercially from the goodwill associated with those marks. This use of a confusingly similar domain name is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use under the Policy; see Caterpillar Inc. v. Matthew Quin, WIPO Case No. D2000-0314.
Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Respondent intentionally registered and is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. By using the logotype of the Complainant and several images of the Complainant’s products, the Respondent has created the impression that its website is authorized by the Complainant. UDRP panels have routinely found bad faith where a respondent’s website gives Internet users the impression that it is an official website of a complainant or a website which is authorized by a complainant. See, for example, Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447.
Moreover, the Respondent knows of the Complainant’s JOHN DEERE trade marks because it uses them to offer its services. Due to the notoriety of the Complainant’s marks it is clear that the Respondent had notice of the Complainant’s rights and interests in them and, therefore, its registration and use constitutes bad faith. See Ty Inc. v. Joseph Parvin d/b/a Domains For Sale, WIPO Case No. D2000-0688. By legal presumption, the Respondent had constructive notice of the Complainant’s prior trade mark rights and, by registering and using the disputed domain name to advertise the Respondent’s services, the Respondent has demonstrated bad faith.
The Respondent did not reply to the Complainant’s contentions.
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 and is being used in bad faith.
For the purpose of considering whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark, the gTLD “.com” is disregarded as this is a technical requirement of registration. The disputed domain name comprises the word “iran” followed by the Complainant’s JOHN DEERE trade mark, in full and without alteration.
The addition of the word “iran” does not impact on an assessment of whether the disputed domain name is confusingly similar to the Complainant’s trade mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Complainant’s mark is clearly recognizable within the disputed domain name and the Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
There is no evidence that the Respondent has been known by the disputed domain name and that the Respondent’s website is noncommercial in nature. There is accordingly no basis for finding that the Respondent can bring itself within either the second or third circumstances outlined above.
The exercise of determining whether the Respondent’s website might comprise a bona fide offering of goods or services requires consideration of both the form and content of the Respondent’s website. The extracts of the Respondent’s website provided by the Complainant suggest that the Respondent is an unauthorised distributor, either of the Complainant’s products or (more likely) of spare parts which are compatible with them.
A number of earlier decisions of UDRP panels have considered the position of resellers or distributors and provide helpful guidance as to the underlying principles which can usefully be applied in these circumstances. Most notably, in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the panel set out a number of cumulative requirements which, if present, would indicate that a reseller or distributor had a legitimate interest in a domain name which included the trade mark of the party whose goods or services it was supplying. These were if;
(i) the respondent is actually offering the goods or services at issue;
(ii) the respondent is using its website to sell only the trade marked goods or services;
(iii) the website accurately and prominently discloses the respondent’s relationship with the trade mark holder; and
(iv) the respondent had not tried to “corner the market” in domain names that reflected the complainant’s trade mark.
These requirements are sometimes referred to as the “Oki Data test”. Dealing with the first criteria, there is no evidence either way as to whether the Respondent is selling the goods in issue, but the Respondent’s website appears to be offering for sale spare parts compatible with the Complainant’s products. So far as the second criteria is concerned, the screen prints of the Respondent’s website suggest it is used solely to sell products relating to the Complainant. Turning to the final consideration, there is no evidence that the Respondent has sought to register any other domain names which include the Complainant’s mark.
The third criteria, that is whether the Respondent’s website accurately and prominently discloses the respondent’s relationship with the Complainant, requires more detailed consideration. For these purposes, the Panel should look at the evidence regarding the use of the disputed domain name at the time of the filing of the Complaint. Sometimes it may be helpful to visit a respondent’s website in order to confirm the evidence submitted in a complaint. The circumstances in which a panel might typically take this course are outlined at section 4.8 of the WIPO Overview 3.0; “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name…”. Having attempted to visit the Respondent’s website, the Panel has established that it is presently inactive.
Based on the screen prints of the website appended to the Complaint, conceivably, an attentive Internet user visiting the Respondent’s website might conclude from the statements made on the home page, the English language version of which has been set out above, that Behrooz International Commerce Co.,Ltd, the website operator, is a company unconnected with the Complainant and that it is selling spares for those products of the Complainant which are located within the Islamic Republic of Iran.
But the position is far from clear and not all Internet users would make that inference. The requirement for a respondent to state its lack of a relationship with a complainant in these circumstances “accurately and prominently” almost invariably means that it needs to publish a disclaimer on the home page of its website explaining that it has no commercial connection with a complainant. Without this, many Internet users will mistakenly assume, that a website which features a complainant’s trade mark as a component of the domain name by which it is accessed and which (usually) also prominently features a complainant’s trade marks in website content, will have some commercial association with the complainant. A clear and unambiguous disclaimer is required to prevent such a misunderstanding.
In this respect, the Panel has considered the decisions of earlier UDRP panels referred to at section 2.8 of the WIPO Overview 3.0, which discusses claims of nominative (fair) use by resellers or distributors. In each of the cases where the complaint was not upheld, because the panel concluded that the respondent had satisfied the Oki Data test, the respondent’s website had featured such a disclaimer. See, by way of example, General Motors LLC v. Flashcraft, Inc DBA Cad Company, WIPO Case No. D2011-2117, where the respondent’s website contained a disclaimer in bold type that the respondent “is not affiliated, in any way shape or form, with Cadillac Division of General Motors”.
There is no such disclaimer on the Respondent’s website. The failure to disclose the lack of a relationship is not a purely technical shortcoming, but one of substance, which is liable to lead at least some Internet users to wrongly assume that there is a connection between the Respondent’s business and that of the Complainant. The Respondent’s website does not accordingly comprise a bona fide offering of goods and services.
Moreover, the Panel notes the composition of the disputed domain name which carries a risk of implied affiliation as outlined at section 2.5.1 of the WIPO Overview 3.0.
There are no other circumstances which might point to a right or legitimate interest in the disputed domain name on the part of the Respondent. The Panel therefore finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
The Complainant’s JOHN DEERE mark is inherently distinctive. The registration by the Respondent of the disputed domain name, which comprises the trade mark in its entirety preceded by the word “Iran”, being the shortened name for the country where the Respondent is based and conducts business, points to an awareness of the Respondent of the Complainant as at the date of registration. As explained at section 3.1.4 of the WIPO Overview 3.0 “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”.
The fact that, following registration, the disputed domain name has resolved to a website which offers for sale spare parts which are expressed to be compatible with the Complainant’s products, strongly suggests that this was the purpose for which the disputed domain name was registered. Many Internet users seeing the Respondent’s website will be misled by its content and appearance into believing that the website is operated by, or with the approval of, the Complainant and the Respondent has taken no steps to attempt to dispel that confusion. The position is broadly similar to that considered by the panel in Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747: “By virtue of its extensive use and advertising since the 1960s, the Complainant and its trade mark VALENTINO enjoy a significant reputation worldwide and a strong online presence. There is no doubt that that the Respondents were aware of the Complainant and its trade mark when they registered the disputed domain names, given that they have reproduced the Complainant’s trade marks and have listed VALENTINO products for sale on their websites. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith. The Panel determines that the Respondents’ purpose of registering the disputed domain names was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded products to their own websites for financial gain”.
Paragraph 4(b) of the Policy sets out, without limitation, four circumstances which, if found by a panel to be present, will be considered as evidence of bad faith registration and use of a domain name. The circumstance set out at paragraph 4(b)(iv) of the Policy is, in summary, if, by using a domain name a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Respondent’s conduct falls squarely within these provisions. The Panel accordingly finds that the disputed domain name has both been registered and is being used in bad faith.
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 <iranjohndeere.com> be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: December 5, 2019
1 The Complainant also owns trade marks for DEERE, but it is not necessary to consider these marks for the purposes of determining the Complaint.