WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clair AG v. Mohammadali Mokhtari

Case No. DIR2020-0004

1. The Parties

The Complainant is Clair AG, Switzerland, represented Rentsch & Partner, Switzerland.

The Respondent is Mohammadali Mokhtari, Islamic Republic of Iran, self-represented.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2020. On May 1, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On May 2, 2020, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 11, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2020. On May 28, 2020, the Respondent sent an email to the Center requesting an extension of the Response due date until June 10, 2020. In accordance with paragraph 5(d) of the Rules, the Center issued an extension of the Response due date until June 10, 2020. The Response was filed with the Center on June 10, 2020.

The Center appointed Jane Seager as the sole panelist in this matter on June 18, 2020. 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 is a Swiss real estate and holding company. As a wholly-owned subsidiary, the Complainant holds Degussa Sonne/Mond Goldhandel AG, a Swiss company engaged in dealing with precious metals and coins, and gold bullion trading. The Complainant also maintains a contractual relationship with the German company Degussa Sonne/Mond Goldhandel GmbH, which allows for its German counterpart to make use of the Complainant’s trademarks. The name “Degussa” is derived from the Complainant’s predecessor-in-interest, called “Deutsche Gold-und Silber Scheide-Anstalt”, which was founded in 1873.

For use in connection with the Complainant’s subsidiary’s business activities, the Complainant is the owner of trademark registrations for the DEGUSSA trademark, including but not limited to the following:¹

- Irish Trademark Registration No. 53567, DEGUSSA (and design), registered on June 3, 1931;

- United Kingdom Trademark Registration No, 523196B, DEGUSSA (and design), registered on September 30, 1932;

- German Trademark Registration No. DE302009062828, DEGUSSA (and design), registered on February 14, 1977;

- International Trademark Registration No. 431497A, DEGUSSA (and design), registered on June 8, 1977;

- European Union Trade Mark Registration No, 009122649, DEGUSSA (and design), registered on March 19, 1999; and

- Iranian Trademark Registration No. 12416, DEGUSSA (and design), registered on June 22, 1954.

The Respondent is an individual based in the Islamic Republic of Iran. The disputed domain name was first registered on September 25, 2007, and was acquired by the Respondent on November 8, 2008. At the time that the Complaint was submitted to the Center, the disputed domain name did not resolve to an active website. At the time of this decision, the disputed domain name resolves to a website titled “DEGUSSA Digital Earth (DE) Global Usages by (GU) Systems Science Approach (SSA)”, and displays an article titled “The Digital Earth: Understanding our planet in the 21st Century”, which appears to have been authored by Al Gore in January 1998.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the DEGUSSA trademark. The Complainant submits that the disputed domain name contains the Complainant’s DEGUSSA trademark, causing confusion with the Complainant’s mark.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent is not a representative, employee, or licensee of the Complainant, nor has the Respondent been otherwise authorized to use the Complainant’s DEGUSSA trademark. The Complainant asserts that the Respondent does not own any rights in any trademark comprising the disputed domain name, nor is the Respondent commonly known under the disputed domain name. The Complainant argues that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

In regard to bad faith, the Complainant submits that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Complainant notes that the disputed domain name resolves to a blank error page. The Complainant asserts that the Respondent knew or should have known about the Complainant’s earlier rights in the DEGUSSA trademark when the Respondent registered the disputed domain name. The Complainant submits that Degussa is a well-known brand. The Complainant argues that the passive holding of the disputed domain name amounts to use in bad faith, and that it is not possible to conceive of any use that the Respondent might make of the disputed domain name that would not involve bad faith. Accordingly, the Complainant submits that the disputed domain name was registered or is being used in bad faith.

B. Respondent

The Respondent argues, in relevant part, as follows:

The Respondent claims to be the vice chairman of the board of directors of the company Pars Pardazesh Farda Co. Ltd, an Iranian company founded in 2006, engaged in engineering, import and export, trading and finance, information and telecommunications technology, electronic trading, e-commerce, domain name registration, web development, consulting administrative services, and others.

The Respondent asserts that the name “DEGUSSA” is an abbreviated acronym referring to “Digital Earth Global Usages by Systems Science Approach”. The Respondent states that the term “Digital Earth” was first introduced by Al Gore in 1998. The Respondent submits that he has rights or legitimate interests in the disputed domain name resulting from its use in connection with the definition of the acronym “DEGUSSA”. In this regard, the Respondent argues that the disputed domain name is being used for a website for introduction to “Digital Earth and its Global Usages by Systems Science Approach.” The Respondent claims to have a background in civil and environmental engineering, earth sciences and finance, and claims to have registered several domain names related to such topics, including such domain names as <wind.ir>, <hydrogen.ir>, <ozone.ir>, <pollution.ir>, <osmosis.ir>, etc. The Respondent submits that his website is intended for information purposes, and is not for commercial gain.

The Respondent denies having registered the disputed domain name in bad faith, arguing that the DEGUSSA trademark is not famous in the Islamic Republic of Iran. The Respondent submits that the disputed domain name was registered in 2008, two years before the Complainant’s incorporation in 2010 and subsequent acquisition of the DEGUSSA trademark. The Respondent notes that the Complaint was filed 12 years after the disputed domain name was registered, and submits that as a result the Complainant is unable to prove bad faith.

The Respondent requests that the Panel enter a finding of Reverse Domain Name Hijacking (“RDNH”) on the basis that (i) the Complainant has provided materially-false evidence by censoring parts of its trademark assignment agreement; (ii) the Complainant had not acquired trademark rights until two years after the disputed domain name was registered; and (iii) the Complainant knew that it had no reasonable prospect of success, but proceeded to file the Complaint anyway.

6. Discussion and Findings

6.1. Preliminary Matters: The Language of the Proceedings and the Complainant’s Evidence

The Panel notes that the Respondent appears to take issue with the fact that certain evidence has been provided in German, and that extracts of the Complainant’s evidence have been redacted.

Paragraph 11(a) of the Rules states that unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, i.e., Persian or English, subject to the authority of the Provider or the Panel, as the case may be, to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Panel notes that IRNIC has confirmed that the language of the Registration Agreement pursuant to which the disputed domain name was registered is English, the Complaint was submitted in English, and that all communications from the Center to the Parties have been sent in English. The Complainant is a Swiss company, whose primary operational language is German. The Panel notes that limited parts of the Complainant’s evidence have been provided in German; however, the Panel does not consider that the provision of certain elements of the Complainant’s evidence in German has materially affected the Respondent’s ability to understand the nature of the Complainant’s case, or to respond to the Complaint.

The Panel further notes that certain paragraphs of the Complainant’s trademark assignment agreement containing commercially-sensitive information have been redacted. The Panel does not consider that the Complainant’s redaction of sensitive or confidential information has had any unfairly prejudicial effect on the Respondent, and finds that the Respondent’s claims of impropriety against the Complainant are unwarranted.

6.2. Substantive Matters

In order to prevail in its Complaint, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:

(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.

Noting the substantive and procedural similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), with the exception of the third element, where it is sufficient under the Policy for the Complainant to prove that the disputed domain name has been either registered or used in bad faith, in support of its findings the Panel has referred to prior UDRP decisions, where appropriate, including as expressed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the DEGUSSA (and design) trademark, the registration details of which are provided in the factual background above. The disputed domain name incorporates the textual components of the Complainant’s trademark in their entirety and without alteration under the country code Top-Level Domain (“ccTLD”) “.ir”. The applicable ccTLD may be disregarded for the purposes of assessment under the first element; see WIPO Overview 3.0, section 1.11.1. The Panel finds that the disputed domain name is identical to the textual components of the Complainant’s trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As stated in WIPO Overview 3.0, section 2.11, panels tend to assess claimed respondent rights or legitimate interests in a domain name with a view to the circumstances prevailing at the time of filing of the complaint.

The evidence on record indicates that at the time of filing the Complaint, the disputed domain name did not resolve to an active website. The Respondent asserts rights and legitimate interests in the disputed domain name based on his recent use of the disputed domain name to resolve to a website displaying an article, apparently written by Al Gore, titled “The Digital Earth: Understanding our planet in the 21st Century”. The current use of the disputed domain name appears to be noncommercial in nature, and will therefore be addressed below in relation to the panel’s discussion under paragraph 4(c)(3) of the Policy. The Panel does not consider the Respondent’s non-use of the disputed domain name at the time of filing of the Complaint to amount to a bona fide offering of goods or services as contemplated by paragraph 4(c)(1) of the Policy. For completeness, the Panel notes that the Respondent has been the registrant of the disputed domain name since 2008. It is generally 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; see WIPO Overview 3.0, section 4.8. The Panel has reviewed historic screen captures of the disputed domain name available at the Internet Archive (“www.archive.org”), and notes that in 2018, the disputed domain name was parked and offered for sale, and that in 2012 and 2011, the disputed domain name resolved to a landing page stating “Welcome to DEGUSSA”. In the 12 years that the Respondent has been the registrant of the disputed domain name, the Respondent does not appear to have made any other active use of the disputed domain name, nor is there any evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent is listed in the disputed domain name as “Mohammadali Mokhtari”, which bears no resemblance to the disputed domain name whatsoever. The Respondent does not appear to own any trademark rights for “degussa” or any variations thereof. There is no evidence to suggest that the Respondent has acquired any reputation in the disputed domain name to support a finding that the Respondent is commonly known by the disputed domain name pursuant to paragraph 4(c)(2) of the Policy.

Noting that rights and legitimate interests are to be assessed at the time that the Complaint is submitted, the Panel is of the view that the Respondent’s then non-use of the disputed domain name does not amount to legitimate noncommercial or fair use of the disputed domain name. Even if the Panel is to take the Respondent’s current use of the disputed domain name into account, the Panel does not consider that it is of a nature so as to confer rights or legitimate interests onto the Respondent. First, the content at the Respondent’s website appears to have gone up as a reaction to having received notification of the Complaint. Secondly, none of the content at the Respondent’s website appears to have been authored by the Respondent himself. Thirdly, the majority of the other “.ir” domain names that the Respondent makes reference to in the Response are composed of dictionary or dictionary-like terms (e.g., <wind.ir>, <hydrogen.ir>, <ozone.ir>, <pollution.ir>, <osmosis.ir>, etc.) whereas the term “degussa” does not have any readily-apparent meaning independent from the Complainant’s trademark. The above factors combined support the view that the Respondent’s attempt to ascribe the phrase “Digital Earth Global Usages by Systems Science Approach” as an acronym in the disputed domain name, by placing an article apparently drafted by Al Gore in 1998 referring to “Digital Earth”, is a pretextual attempt to establish rights or legitimate interests in the disputed domain name. The Panel does not consider that the Respondent’s current use of the disputed domain name amounts to genuine noncommercial or fair use, within the meaning of paragraph 4(c)(3) of the Policy.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered or Used in Bad Faith

The Respondent argues that he could not have registered the disputed domain name in bad faith in light of the fact that the Complainant was incorporated in 2010, two years after the Respondent acquired the disputed domain name, and that the Complaint should accordingly fail; however, such an approach overlooks the fact that unlike the UDRP, under the Policy it is sufficient for a complainant to prove either registration or use in bad faith. Furthermore, the Complainant’s predecessors-in-interest have a corporate history going back well over 100 years, the Complainant’s trademark was first registered in 1931, and has been registered in the Islamic Republic of Iran since 1954. Those trademark rights have since been duly assigned to the Complainant. The notion that the enforceable rights in the DEGUSSA trademark were only accrued at the time of the Complainant’s incorporation in 2010 is misguided. In addition, mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits; see WIPO Overview 3.0, section 4.17.

In light of the Complainant’s longstanding international use of its DEGUSSA trademark in connection with its precious-metals business, and the identity between the disputed domain name and the Complainant’s trademark, which has no readily-apparent descriptive meaning independent from the Complainant’s trademark, the Panel finds it more likely than not that the Respondent had the Complainant’s trademark in mind when registering the disputed domain name. As set out above, prior to receiving notice of the current proceeding, the Respondent had not sought to make any legitimate use of the disputed domain name. In fact, the only apparent prior active use of the disputed domain name was to park it and offer it for sale. The Panel further notes that the Respondent has been named as the Respondent in several prior decisions under the Policy in which the Respondent had registered “.ir” domain names that were exact matches with well-known third-party trademarks; see Tetra Laval Holdings & Finance S.A. v. Mohammad Ali Mokhtari, WIPO Case No. DIR2010-0007 (<tetrapak.ir>); Petróleo Brasileiro S.A. - Petrobras v. Mohammad Ali Mokhtari, WIPO Case No. DIR2013-0004 (<petrobras.ir>); Amundi v. Mohammad Ali Mokhtari, WIPO Case No. DIR2015-0010 (<amundi.ir>); Accor v. Mohammad Ali Mokhtari, WIPO Case No. DIR2016-0004 (<novotel.ir>); Sodexo v. Mohammad Ali Mokhtari, WIPO Case No. DIR2017-0006 (<sodexo.ir>); Bollore v. Mohammadali Mokhtari, WIPO Case No. DIR2018-0014 (<bollore.ir>); and F. Hoffmann-La Roche AG v. Mohammadali Mokhtari, WIPO Case No. DIR2019-0007 (<roche.ir>). In light of the above, the Panel finds that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its DEGUSSA trademark in a corresponding domain name under the “.ir” ccTLD, having engaged in a pattern of such conduct, in bad faith pursuant to paragraph 4(b)(ii) of the Policy.

As noted above, at the time of filing the Complaint, the disputed domain name did not resolve to an active website. It is well established that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding; see WIPO Overview 3.0, section 3.3. The Complainant together with its predecessors-in-interest has a longstanding international history of the DEGUSSA trademark. Despite having registered the disputed domain name some 12 years ago, the Respondent has not produced convincing evidence of any actual or contemplated good-faith use of the disputed domain name – rather, the Respondent has presented pretextual use of the disputed domain name. The disputed domain name is identical to the Complainant’s trademark, and therefore carries with it a high risk of implied affiliation with the Complainant. In light of the composition of the disputed domain name itself, the Panel is unable to conceive of any good-faith use to which the disputed domain name could be put by the Respondent that would not have the effect of creating a misleading impression of association with the Complainant. In the circumstances, the Panel finds that the Respondent’s non-use of the disputed domain name at the time of filing of the Complaint also supports the finding of bad faith.

For the foregoing reasons the Panel finds that the disputed domain name was both registered and is being used in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. In light of the above, the Panel need not give further consideration to the Respondent’s allegations of RDNH.

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 <degussa.ir> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: July 7, 2020

¹ The Panel notes that the Complainant was incorporated in 2010 and that the trademarks relied upon were originally registered by the Complainant’s predecessors-in-interest. The Complainant has provided evidence that the trademarks were duly assigned to the Complainant.