The Complainant is Garmin International of Olathe, Kansas, United States of America (“United States” or “US”), represented Hovey Williams LLP, United States.
The Respondent is Route Communication Co. of Tehran, the Islamic Republic of Iran, represented by Dr. Masoudi, the Islamic Republic of Iran.
The disputed domain name <garmin.ir> (“Domain Name”) is registered with IRNIC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2015. On November 13, 2015, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On November 21, 2015, 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 on December 1, 2015.
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 December 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2015. Upon the request of the Respondent, to which the Complainant did not object, the due date for Response was extended through January 1, 2016. The Response was filed with the Center on December 31, 2015. The Complainant submitted a Supplemental Filing on January 15, 2016.
The Center appointed Nicholas Smith as the sole panelist in this matter on January 19, 2016. 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.
On January 20, 2016, the Panel issued the following Panel Order:
“Under the Rules for .ir Domain Name Dispute Resolution Policy (the ‘Rules’), the Panel may, at its sole discretion request, in addition to the Complaint and the Response, further statements or documents from either of the Parties.
The Panel notes that:
1. The Response as filed in this matter makes the following statements in respect of the domain name that is the subject of the proceeding:
a) that the proper owner of the Domain Name is ‘Route Communication Co.’;
b) that the Domain Name was registered on September 24, 2005. The second statement differs from the information provided by the Registrar to the Center, which appears to indicate that the Domain Name was created on October 4, 2015.
2) The Complainant has sought to file a Supplemental Filing in this matter, dated January 15, 2016, in which it referred to the Respondent as Route Communication Co.
Therefore the Panel makes the following orders:
1) The Panel has agreed to accept the Complainant’s Supplemental Filing of January 15, 2016.
2) The Respondent has through January 27, 2016 to file a supplementary filing in response to the Complainant’s Supplemental Filing. The content of the Respondent’s Supplemental Filing should be limited to responding to any matters raised in the Complainant’s Supplemental Filing and any documentary evidence to support its contention that the Route Communication Co. registered the Domain Name on September 24, 2005.
3) The Center is directed to contact the [Registry] to confirm the accuracy of information previously provided by the Registrar to the Center, which appears to indicate that the Domain Name was created on October 4, 2015.
4) The Complainant has through January 27, 2016 to file a short confirmation with the Center confirming that it wishes to amend its original Complaint to add Route Communication Co. as a Respondent in this proceeding.
5) The additional material provided by the Complainant and the Respondent should be served on the other party using the e-mail addresses provided in the Complaint or Response.
6) Any submissions or amended documents should be submitted to the WIPO Arbitration and Mediation Center by email to […]@wipo.int for forwarding to the Panel.
7) Absent extraordinary circumstances, no further supplemental filings will be accepted by the Panel.
8) The Panel will deliver its decision on or before February 2, 2016.”
On January 27, 2016 the Respondent filed a Response to the Complainant’s Supplemental Filing. On January 29, 2016 the Complainant communicated with the Center that it was prepared to amend its original Complaint if Route Communications Co. was deemed to be the true registrant of the Domain Name. On January 28, 2016 the Center contacted the Registry to confirm the accuracy of the information previously provided by the Registry to the Center and on January 30, 2016 the Registry responded that the accurate date of the creation of the Domain Name was September 24, 2005.
The Complainant is a technology company based in the United States that develops navigation technology products sold in aviation, marine, automative and sports markets. The Complainant has been trading under its name since at least 1991 and operates the website “www.garmin.com” (“Complainant’s Website”).
The Complainant is the owner of a trade mark registration consisting of the word “garmin” (the “GARMIN Mark”), which it first registered in the United States on July 15, 2008, with a date of first use in commerce on April 25, 1991. The GARMIN Mark is registered for various goods and services that relate to satellite navigation and global positioning systems in international classes 9, 10, 25, 35, 38, 39 and 42. The Complainant is also the owner of a trade mark consisting of the word “garmin” and a stylized isosceles triangle design (the “GARMIN DESIGN Mark”) which it registered on July 15, 2008.
The Domain Name <garmin.ir> was registered on September 24, 2005. It currently resolves to an Internet site (“Respondent’s Website”) which closely resembles the Complainant’s Website, including the presence of the GARMIN DESIGN Mark and includes an “About us” page referencing the Complainant’s founding. The Respondent’s website contains statements in Farsi that translate to “Products for Garmin in Iran” and “The first and largest provider of products Garmin”.
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s GARMIN Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and/or is being used in bad faith.
The Complainant is the owner of the GARMIN Mark having registered the GARMIN Mark and related marks in the United States.
The Domain Name consists of the GARMIN Mark in its entirety with the addition of country code Top-Level Domain (ccTLD) “.ir”. The Domain Name is hence confusingly similar to the Complainant’s GARMIN Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is using the Domain Name to divert Internet traffic to the Respondent’s Website for commercial purposes, intentionally leading consumers to the false impression that it is selling the Complainant’s products in the Islamic Republic of Iran. The Complainant has no contact with the Respondent and does not trade in the Islamic Republic of Iran, as the United States has placed economic sanctions on the Islamic Republic of Iran, forbidding any US company from selling its products there. It is well established that the use of a domain name in this matter does not constitute a bona fide offering of goods or services. This constitutes prima facie evidence of no rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered with the Complainant in mind as it fully incorporates the Complainant’s inherently distinctive GARMIN Mark and resolves to a website that is extremely similar to the Complainant’s Website and purports to offer the Complainant’s products in the Islamic Republic of Iran. It is the clear and obvious intention of the Respondent to attract consumers to its website under the misimpression that it is the Complainant’s website and to profit from this confusion. The Respondent’s conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent, Route Communications Co., registered the Domain Name on September 24, 2005 and the Complainant has made no allegation relating to the Domain Name for ten years, and therefore has waived or acquiesced to the Respondent’s registration and use of the Domain Name. The Respondent initially named in the Complaint, Amir Ahmad Bigdeli, was a former employee of Route Communications Co. who registered the Domain Name on behalf of the company.
The Respondent is a company legitimately registered in, and conducting its business in accordance with the laws of, the Islamic Republic of Iran. It buys the Complainant’s products from other markets and sells and distributes them in the Islamic Republic of Iran.
The Respondent has not registered or used the Domain Name in bad faith. It has never made any attempt to sell the Domain Name, nor has it attempted to disrupt the business of the Complainant. Rather it has been involved in promoting the Complainant’s business in the Islamic Republic of Iran and introducing the Complainant’s products to that country. It has always been seeking to negotiate with the Complainant in order to acquire a licence to act as its official representative in the Islamic Republic of Iran. Moreover, in respect to the Complainant’s allegation about the economic sanctions imposed by the United States on the Islamic Republic of Iran, there has been no contractual relationship between the Complainant and the Respondent.
The Complainant initially named Amir Ahmad Bigdeli as the respondent to these proceedings. Under the Rules, the Respondent is defined as the holder of a domain name registration against which a complaint is initiated. A Panel cannot issue an order to transfer or deny a Domain Name without making specific findings in relation to the named holder of the Domain Name. The Registry, in its response to the Center’s request for Registrar verification, has clearly indicated that that holder of the Domain Name is Route Communication Co. The Complainant has since indicated its consent to its Complaint being deemed to be amended to include Route Communication Co. as a Respondent. As such the proper Respondent under the Policy is the holder of the domain name registration, being Route Communication Co.
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the GARMIN Mark, having registrations for the GARMIN Mark as a trade mark in the United States.
The Domain Name consists of the GARMIN Mark, with the addition of the ccTLD “.ir”. Discounting the ccTLD the Domain Name is identical to the Complainant’s GARMIN Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the GARMIN Mark or a mark similar to the GARMIN Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
The Respondent uses the Domain Name to operate a website to sell products, which in the Response are stated to be the Complainant’s products and appear to be certified by a third party organization. However, the Complainant has put at issue whether the products sold by the Respondent are genuine, legitimate GARMIN products or competitor/counterfeit products.
If the products sold by the Respondent via the Respondent’s Website are not genuine GARMIN products, the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant’s GARMIN Mark for a site selling other products.
If the Respondent is offering genuine GARMIN products from the Respondent’s Website, such use does not automatically grant it rights or legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of Uniform Domain Name Disputed Resolution Policy (UDRP) Decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.1
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) summarizes the consensus views of UDRP panels in response to the question about whether a reseller/distributor of trademarked goods or services has rights or legitimate interests in a domain name which contains such a trademark in the following manner:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the sites accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather, its prominent display of the GARMIN Mark, the GARMIN DESIGN Mark and various statements on the Respondent’s Website relating to the founding of the Complainant provide the impression that the Respondent’s Website is an official website of the Complainant in the Islamic Republic of Iran or an official website of the Complainant’s Iranian distributor. Members of the public who are interested in the Complainant’s products may visit the Respondent’s Website on the assumption that the Respondent is the Complainant itself or an authorized dealer or reseller of GARMIN products. This is not the case. In the event that the Respondent is reselling genuine GARMIN products, its use of the website in its present fform does not grant it rights or legitimate interests in the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
For the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b))
The Panel finds on balance that it is likely that the Respondent was aware of the Complainant and its reputation in the GARMIN Mark at the time the Domain Name was registered in 2005. The Domain Name resolves to a website that reproduces the GARMIN and GARMIN DESIGN Marks. Furthermore the Respondent acknowledges that it is in the business of reselling the Complainant’s products in the Islamic Republic of Iran and registered the Domain Name for that purpose.
The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights and legitimate interests of its own amounts to registration in bad faith.
The Respondent is operating the Domain Name for the purposes of operating a website that sells goods and services that either compete directly (in the sense that potential customers of the Complainant in the Islamic Republic of Iran could purchase the Complainant’s goods while travelling overseas) or potentially compete directly (in the event that the Complainant chose to offer its products directly in the Islamic Republic of Iran) with the Complainant’s goods and services. The Respondent is using the Domain Name, which is confusingly similar to the GARMIN Mark, to sell products, be they legitimate or otherwise, in competition with the Complainant and without the Complainant’s approval. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s GARMIN Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.
The Panel, while noting that the Policy only requires that a complainant show that a respondent registered or subsequently used the domain name at issue in bad faith, finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
The Respondent in its Response also raises the question of laches. Given the Domain Name was registered in 2005 and the Respondent has been operating since 2003, one would naturally question why the Complainant waited ten years to bring a proceeding in this matter. The Complaint provides no explanation for this delay but one relevant factor may be that the United States has since 1979 imposed sanctions on the Islamic Republic of Iran that limit the ability of companies located in the United States, such as the Complainant, from trading in the Islamic Republic of Iran.
The Panel notes that the passing of ten years between the registration of the Domain Name and the commencement of the present proceedings and the lack of any explanation for the delay has made it more difficult for the Complainant to establish its case on the merits. “The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration.” AVN Media Network, Inc. v. Hossam Shaltout, WIPO Case No. D2007-1011.
While a small number of panels may acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the Policy where the facts so warrant, the present case is not a case where the facts so warrant. There is no evidence that the Complainant was aware of the registration of the Domain Name in 2005 nor that it had ever given its permission, on an express or implied basis, for the registration and use of the Domain Name. Indeed, due to the economic sanctions imposed on the Islamic Republic of Iran by the United States, a factor that the Respondent was aware of, it may not have even been possible for the Complainant to give its permission, on an express or implied basis for the registration and use of the Domain Name. As noted in the Complaint, any violation of the sanctions imposed on the Islamic Republic of Iran may subject the Complainant to the threat of legal liability in the US. The Panel does not find that the delay in the Complainant bringing a complaint under the Policy prevents the Complainant being awarded the remedy it seeks on the basis of waiver, laches or acquiescence.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <garmin.ir> be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: February 2, 2016
1 While the Complaint is brought under the Policy, and not the UDRP, given the similarities between the two, the Panel considers UDRP precedent and secondary UDRP materials such as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) relevant to the current proceedings, and will refer to them throughout.