Fortinet, Inc. v. Pouyesh Afzar Houshmand Eng. Co.
Case No. DIR2007-0003
1. The Parties
The Complainant is Fortinet Inc., of Sunnyvale, California, United States of America, represented internally.
The Respondent is Pouyesh Afzar Houshmand Eng. Co. of Tehran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <fortinet.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2007. On October 17, 2007, the Center transmitted by email to IRNIC a request for registrar verification in connection with the domain name at issue. On October 17, 2007, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center on October 19, 2007 that the Complaint was administratively deficient in that there was a slight mis-spelling of the Respondent’s name - Azfar instead of Afzar - the Complainant filed an amendment to the Complaint rectifying this deficiency and a second amendment regarding the relief which it seeks. Both amendments were received by the Center by email on October 25, 2007 and in hard copy on November 12, 2007. The Center verified that the Complaint, together with the amendments to the Complaint, satisfied the formal requirements of the .IR Domain Name Dispute Resolution Policy (the “Policy”), 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 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2007.
The Center appointed Alan L. Limbury as the sole panelist in this matter on December 19, 2007. 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 2, 2008, due to exceptional circumstances, the Panel extended by one week, to January 9, 2008, the time by which its decision was to be transmitted to the Center.
The language of the proceeding is English, being the language of the registration agreement.
4. Factual Background
Through a multi-tiered worldwide system of distribution partners, the Complainant supplies computer network security systems, classified in the United States of America as “strong encryption” products, under the trademark FORTINET, which it registered in the United States of America on December 10, 2002 under No.78093927 in class 9. On August 10, 2007, the Complainant applied to register the FORTINET mark in the European Community under CTM No.006189088.
The Respondent registered the <fortinet.ir> domain name on or about February 14, 2005. It resolves to a website offering Fortinet products and services, with numerous links directly to the Complainant’s corporate website, “www.fortinet.com”.
United States of America law prohibits sales without an export licence of “strong encryption” products into countries against which it has imposed a trade and investment embargo. The Islamic Republic of Iran is one of those countries.
On November 5, 2006, the Complainant sent to the Respondent a ‘cease and desist’ email. On November 19, 2006, the Respondent replied, inter alia, that it began working on Fortinet systems in 2004; that it had sold the Complainant’s products nationwide; and that its efforts to introduce Fortinet products “were made without any support from the mother company, their authorized distributors or branch offices”.
5. Parties’ Contentions
A. Complainant
The Respondent is not an authorized reseller or a recognized partner of the Complainant yet its website is constructed to give the appearance of being an official Fortinet website. Indeed, the Respondent’s website contains almost no substantive content created by the Respondent, but rather provides the bulk of its substantive content (product and service information and specifications) by the inclusion of links to the Complainant’s website.
The Respondent’s website appears to be an attempt improperly to build a business based on misleading consumers into believing that the Respondent is an authorized sales representative or distribution partner of the Complainant in the Islamic Republic of Iran.
The Complainant does not sell its products to users within embargoed countries. The Respondent’s use of the disputed domain name, combined with its sales of Fortinet products, gives the appearance that the Complainant is violating United States export laws.
The disputed domain name is identical to the Complainant’s trademark. Given its fanciful nature, the use of the mark by the Respondent is per se likely to confuse and a bad faith use – intended improperly to capitalize on the Complainant’s name and reputation.
To the Complainant’s knowledge, the Respondent is not known by, or has otherwise acquired any rights in, the Complainant’s marks. The Respondent is not an affiliate of the Complainant nor has the Respondent been given any rights to use the Complainant’s trademarks.
The Respondent cannot claim a legitimate interest in the disputed domain name based on its reselling activities because although it appears to sell only Fortinet products and services on its website, it does not disclose its relationship (or lack thereof) with the trademark owner, one of the criteria required to establish legitimate rights in a domain name which conflicts with the trademark of the producer of the offered products. See Dell Inc. v. Mojtaba Behnoudi, WIPO Case No. DIR2006-0006.
By its use of the disputed domain name, the Respondent is holding itself out as the Complainant’s official website and sales establishment in the Islamic Republic of Iran, essentially pretending to be an Iranian affiliate of the Complainant. The “www.fortinet.ir” website is intentionally designed to mislead users and redirect them to purchase Fortinet goods and services from the Respondent. By giving the false impression that the Complainant is directly operating in the Islamic Republic of Iran, the website also subjects the Complainant to inquiry by the press and by United States agencies that monitor United States trade.
Because the ”www.fortinet.ir” website exists to sell Fortinet products and services and contains almost exclusively misappropriated copyrighted material of the Complainant, it is obvious that the Respondent has at all times been actually aware of the Complainant and its marks. The Respondent knowingly, intentionally and fraudulently holds itself out, through its website, as having an association with the Complainant while blatantly misappropriating the Complainant’s trademarks and copyrighted material. This could not have occurred without a deliberate effort by the Respondent.
By registering and using the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the FORTINET mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Moreover, given that the Respondent has refused to cease and desist in its activities, it is clear that it is acting in a manner directly and intentionally to disrupt the Complainant’s business and business interests. This behavior constitutes a per se bad faith use of the disputed domain name. See Dell Inc. v. Mojtaba Behnoudi, WIPO Case No. DIR2006-0006.
The Complainant requests the Administrative Panel to issue a decision that the disputed domain name be transferred to the Complainant or cancelled in the event such transfer is prohibited by law or other statutory requirement.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond. In this case, the Panel finds that the Center complied with all formalities and that the Complaint, together with the Notification of Complaint and Commencement of Administrative Proceeding, were delivered to the Respondent by email on November 21, 2007 and by courier on November 26, 2007.
Paragraph 4(a) of the Policy sets forth three elements that must be established by the Complainant to merit a finding that the Respondent has engaged in abusive domain name registration, and for the Complainant to obtain relief. These elements are that:
(i) the Respondent’s 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 domain name; and
(iii) the Respondent’s domain name has been registered or is being used in bad faith.
Paragraph 5(e) of the Rules provides that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. As with the UDRP, under these circumstances, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant, pursuant to paragraph 14(b) of the Rules: Joanne Rowling v. Hostine.net,
WIPO Case No. DIR2006-0004; see also Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,
WIPO Case No. D2003-0109; SSL International PLC v. MARK FREEMAN,
WIPO Case No. D2000-1080; and ALTAVISTA Company v. Grandtotal Finances Limited et al.,
WIPO Case No. D2000-0848.
A. Identical or Confusingly Similar
The Complainant has rights in the United States of America registered trademark FORTINET. Its 2007 European Community trademark application does not give rise to trademark rights: see Aspen Grove, Inc. v. Aspen Grove,
WIPO Case No. D2001-0798 and Spencer Douglass MGA v. Absolute Bonding Corporation,
WIPO Case No. D2001-0904.
As with the UDRP, the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: BHP Billiton Innovation Pty Ltd v. Ahmad Puraminy,
WIPO Case No. DIR2007-0001; Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. The top level domains “.com”, “.net” and “org” and, in this case, “.ir”, are to be disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429. Likewise the content of the Respondent’s website must be disregarded: A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgenson, WIPO Case No. D2001-0900.
Applying this test, the disputed domain name is unquestionably identical to the Complainant’s mark. The Complainant has established this element of its case.
B. Rights or Legitimate Interests
UDRP panelists have consistently found that the burden is on the Respondent to provide evidence of its rights or legitimate interests under paragraph 4(c) of the UDRP, the equivalent to paragraph 4(iii) of the Policy. For an affirmation of that principle, see for example Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,
WIPO Case No. D2004-0753. That burden arises once the Complainant establishes a prima facie case against the Respondent. The Complainant has established that case, as set out below. No response to that case was made by the Respondent. As also indicated below, there is no other evidence contrary to the case made by the Complainant.
The Respondent is not an affiliate of the Complainant nor has it been given any right to use the Complainant’s trademark. Although the Respondent sells on its website under the disputed domain name only products of the Complainant, there is no disclosure or indication regarding the Respondent’s relationship or lack of relationship with the trademark owner. The Respondent clearly represents itself as the Iranian affiliate of the Complainant.
UDRP panelists have established a consensus view about the circumstances under which a reseller can have a legitimate right or interest in a domain name that is identical or confusingly similar to the manufacturer’s trademark. One of these requirements is the aforementioned disclosure that is absent here. Therefore, the Respondent cannot establish such rights or legitimate interests. Any bona fide offering of goods or legitimate non-commercial use can be ruled out under such circumstances. Further, there is no evidence that the Respondent is commonly known by the disputed domain name.
Accordingly the Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant has established this element of its case.
C. Registered or Used in Bad Faith
Under the circumstances, the Panel finds that the Respondent aims to divert potential clients of the Complainant to a website under the disputed domain name by pretending to be an affiliate of the Complainant. Thus by using the domain name, the 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 of its website and the products and services on its website. This conduct is evidence of both bad faith registration and bad faith use.
The Complainant has established this element of its case.
7. Decision
For all the foregoing reasons, the Complainant is entitled, under the Policy, to the transfer to it of the disputed domain name or to its cancellation. Here the Complainant seeks transfer but in the alternative, lest transfer be contrary to law (presumably that of the United States of America or the Islamic Republic of Iran) the Complainant seeks cancellation. It is not for the Panel to determine whether transfer to the Complainant would be contrary to law in this case.
In the circumstances, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <fortinet.ir>, at the option of the Complainant, be transferred to the Complainant or cancelled.
Alan L. Limbury Sole Panelist
Dated: January 9, 2008
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