WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Terex MHPS GmbH v. Mohsen Mashayekh, Pouyasazan Fanavari Etelaat

Case No. DIR2016-0015

1. The Parties

The Complainant is Terex MHPS GmbH of Dusseldorf, Germany, represented by Bryan Cave, LLP, United States of America.

The Respondent is Mohsen Mashayekh, Pouyasazan Fanavari Etelaat of Tehran, the Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <demag.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 3, 2016. On May 3, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On May 4, 2016, 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 May 17, 2016.

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 May 31, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2016. No Response was submitted. Accordingly, on June 21, 2016, the Center notified the Respondent's default.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on June 29, 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.

4. Factual Background

The Complainant owns the international trademark registration number 873164 for the trademark DEMAG, registered on August 18, 2004 and which covers the Islamic Republic of Iran.

The Respondent registered the disputed domain name on July 12, 2011, which resolves to a website that offers products and services similar to those offered by the Complainant.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant's mark as it incorporates the trademark of the Complainant. The Complainant contends that it is one of the world's leading suppliers of cranes and their components and relevant services all offered under the trademark DEMAG. The Respondent has incorporated the Complainant's trademark in the disputed domain name and has used it in conjunction with the country code Top-Level Domain ("ccTLD") ".ir". This does not eliminate the confusion with the trademark of the Complainant.

The Complainant contends that the Respondent lacks any rights or legitimate interests in the disputed domain name. The Complainant contends that the use of its trademark by the Respondent is not authorized and the Respondent is not an agent of the Complainant. The Complainant contends that its trademark is well known and has been in use for over a century. Furthermore, there is nothing to show that the Respondent is known under the disputed domain name. In addition, the Respondent is using the Complainant's trademark together with its design and logo to offer products and services similar to those of the Complainant and by doing so, the Respondent is attempting to benefit from the goodwill established in the Complainant's trademark and reputation. The Respondent has even copied into his website sections of the text used by the Complainant on its websites in order to mislead consumers into believing that the Respondent offers products of the Complainant. Lastly, the Respondent is offering material under the trademark of the Complainant without being authorized to do so.

The Complainant contends that the Respondent has registered and uses the disputed domain name in bad faith. The Respondent is offering goods and services using the trademark of the Complainant which he is not authorized to use. The Respondent is either offering counterfeit products or products that are obtained illegally as the Complainant does not sell in the Islamic Republic of Iran. Either way, such conduct constitutes bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established its ownership of the trademark DEMAG through its international trademark registration number 873164. The Respondent has incorporated the trademark of the Complainant in its entirety in the disputed domain name. It is well established that the ccTLD is typically not taken into consideration when assessing the confusing similarity. The Panel is therefore of the view that the disputed domain name is identical to the Complainant's trademark and consequently, the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark. The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. In the absence of such response, the Panel believes that the Complainant met the requirement under the Policy showing that the Respondent does not have any rights or legitimate interests.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered or Used in Bad Faith

The trademark DEMAG is used in connection with cranes. The disputed domain name is used in connection with the offering of cranes and other related services. Therefore, it seems that the Respondent knew or should have known of the existence of the trademark DEMAG and has registered and used it with the aim of attracting consumers to its own products and services.

Prior panels have found that a respondent has "registered the Disputed Domain Name in bad faith because the Trademark is distinctively identifying the Complainant and the Complainant's products so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Trademark owned by the Complainant. In addition, the Respondent's use of the Disputed Domain Name for selling goods under the Trademark without authorization from the Complainant on the website associated with the Disputed Domain Name also establishes the Respondent's bad faith use of the Disputed Domain Name". See Eleven v. Howword Flower, WIPO Case No. D2013-1423¹.

The Panel is therefore of the view that the Respondent has registered the disputed domain name and is using it in bad faith. Accordingly, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 name <demag.ir> be cancelled.

Nayiri Boghossian
Sole Panelist
Date: July 2, 2016

¹ As the Policy is largely based on the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel cites to the UDRP decisions where instructive.