WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dassault Systèmes SE v. Alireza Shams, Baloot Rayaneh co.
Case No. DIR2020-0023
1. The Parties
The Complainant is Dassault Systèmes SE, France, represented IP Twins S.A.S., France.
The Respondent is Alireza Shams, Baloot Rayaneh co., Iran (Islamic Republic of).
2. The Domain Name and Registrar
The disputed domain name <catia.ir> is registered with IRNIC (the “Disputed Domain Name”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2020. On October 26, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Disputed Domain Name. On October 27, 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 November 2, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2020. The Respondent did not submit any response. On November 24, 2020, the Center notified the Respondent’s default.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 11, 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
With more than 20,000 employees in 140 countries, the Complainant is a leading software company founded in 1981 that specialises in developing software for 3D design. In 2019, the Complainant generated around EUR 4 billion in revenue.
The Complainant is the owner of numerous trade mark registrations for the CATIA mark in various jurisdictions, including, inter alia, the international CATIA trade mark (Reg. No. 1004961) registered on December 19, 2008, the international CATIA trade mark (Reg. No. 466057) registered on November 27, 1981, and the CATIA trade mark (Reg. No. 3584516) registered on June 26, 2008 in France.
The Complainant also owns and operates various domain names containing the CATIA trade mark, including <catia.com> which was registered on July 28, 1995.
The Respondent registered the Disputed Domain Name on September 10, 2008.
5. Parties’ Contentions
A. Complainant
The Complainant’s primary contentions can be summarised as follows:
(a) The Complainant is the registered owner of the CATIA trade mark. The Disputed Domain Name is identical to the Complainant’s CATIA trade mark, which has been wholly incorporated into the Disputed Domain Name;
(b) The Respondent does not have any rights in the Disputed Domain Name as the Respondent does not hold any valid trade mark registration for the CATIA mark in Iran (Islamic Republic of). The Complainant has never authorized or given permission to the Respondent, who is not associated with the Complainant in any way, to use its CATIA trade mark. The Respondent does not have any legitimate interests in the Disputed Domain Name as the website to which the Disputed Domain Name resolves reproduces many of the Complainant’s trade marks without authorisation from the Complainant. The website to which the Disputed Domain Name resolves creates an impression that it is associated with or endorsed by the Complainant, and this is further supported by the lack of any disclaimer contained in the website; and
(c) A quick trade mark search conducted by the Respondent would have revealed the Complainant’s rights in the CATIA trade mark. Therefore, the Respondent must have been aware of the Complainant’s CATIA trade mark at the time of registration of the Disputed Domain Name. The Disputed Domain Name has also been used to mislead visitors into believing that the website (to which the Disputed Domain Name resolves) is one of the Complainant’s official websites and to attract Internet users for commercial gain by selling training courses that are related to the Complainant’s products. As such, the Disputed Domain Name was registered and has been used by the Respondent in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,
WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,
WIPO Case No. D2000-04031).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the CATIA trade mark, based on its various trade mark registrations.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain (“TLD”) extension (“.ir” in this case) may be disregarded. See section 1.11 of the WIPO Overview 3.0.
The Disputed Domain Name incorporates the Complainant’s CATIA trade mark in its entirety without any prefixes or suffixes. As such, the Panel finds that the Disputed Domain Name is identical to the Complainant’s CATIA trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel accepts that the Complainant has not authorised the Respondent to use the CATIA trade mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the CATIA trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services;
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services, since the Disputed Domain Name resolves to a website that reproduces many of the Complainant’s registered trade marks and sells training courses related to the Complainant’s products without the Complainant’s consent or authorisation. The Panel agrees with the Complainant that such use of the Disputed Domain Name would give an impression that the Disputed Domain Name is associated with and/or endorsed by the Complainant and does not constitute a bona fide offering of goods and services.
There is also no evidence to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that the Respondent has become known by the Disputed Domain Name. Further, no evidence has been provided to suggest that the Disputed Domain Name has been used in connection with any legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad Faith
Previous panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
The Complainant’s CATIA trade mark appears to be fairly well known. A quick Internet search conducted by the Panel shows that the top search results returned for the keyword “catia” are the Complainant’s websites and third party websites either referencing the Complainant or providing information relating to the Complainant’s products. Therefore, the Panel accepts the Complainant’s argument that the Respondent must have been aware of the Complainant and its rights in the CATIA trade mark when registering the Disputed Domain Name. As such, the fact that the Disputed Domain Name incorporates the Complainant’s CATIA trade mark in its entirety creates a presumption of bad faith.
In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name has been registered and is being used by the Respondent in bad faith:
(i) the Respondent failed to respond to the Complainant’s contentions and provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;
(ii) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name is identical to the Complainant’s CATIA trade mark, and that the website to which the Disputed Domain Name resolves provides training courses relating to the Complainant’s software products and displays numerous other trade marks owned by the Complainant without authorisation; and
(iii) any use of the Disputed Domain Name would likely mislead Internet users into believing the Disputed Domain Name is associated with and/or endorsed by the Complainant, particularly given that the Disputed Domain Name is identical to the Complainant’s domain name <catia.com> and the website to which the Disputed Domain Name resolves contains no disclaimer and uses expressions such as “Welcome to CATIA Iran”, likely with the intention to confuse Internet users.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
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 <catia.ir> be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: December 24, 2020
1 Noting the substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to prior UDRP decisions and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where appropriate.
