Digi-Key Corporation v. Ali Mohammadizadeh / Pars ICT
Claim Number: FA1410001582800
Complainant is Digi-Key Corporation (“Complainant”), represented by Joel D. Leviton of Stinson Leonard Street LLP, Minnesota, USA. Respondent is Ali Mohammadizadeh / Pars ICT (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <digikapart.com>, registered with Realtime Register B.V.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Héctor Ariel Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2014; the National Arbitration Forum received payment on October 2, 2014.
On October 2, 2014, Realtime Register B.V. confirmed by e-mail to the National Arbitration Forum that the <digikapart.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@digikapart.com. Also on October 2, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 6, 2014.
An Additional Submission was received from Complainant and determined to be complete on October 10, 2014.
An Additional Submission was received from Respondent on October 15, 2014 and found complete.
On October 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Héctor Ariel Manoff as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Digi-Key Corporation is a leading distributor of electronic parts which has been in the market for over forty years.
2. Digi-Key offers its services through a network of websites to more than 170 countries.
3. Digi-Key’s US website is located at <digikey.com>.
4. Digi-Key owns dozen of registrations throughout the world for its DIGI-KEY trademark and its DIGI-KEY oval logo in connection with electronic part distribution services.
5. Respondent registered and uses the <digikapart.com> domain name to operate a purported electronic part distribution website that it intentionally designed to impersonate a Digi-Key website.
6. Respondent’s clear intent to pass off its website as a Digi-Key website is demonstrated by its use of a red and white oval logo containing DIGI-KA designation which is an obvious copy of DIGI-KEY.
7. Digi-Key’s common law trademark and registrations precede Respondent’s registration of the Domain Name on May 31, 2009.
8. The <digikapart.com> domain name is confusingly similar to the DIGI-KEY mark since it is comprised of the term “Digi Ka” coupled with the generic term “part” which refers to the products sold by Digi-Key. Digi Ka is phonetically similar to DIGI-KEY.
9. The <digikapart.com> domain name resolves to a website that prominently features a red and white oval logo that is an obvious copy of DIGI-KEY’s logo. 10. Respondent even includes the confusingly similar logo adjacent to the URL address.
11. A generic top level domain such as .com also does not distinguish the domain name from Digi-Key’s DIGI-KEY trademark.
12. Respondent does not use the domain name in connection with a bona fide offering of goods or services.
13. Respondent is not making a noncommercial fair use of the domain name.
14. Respondent has never been known or referred to as “DigiKaPart.”
15. Respondent is not commonly known as “DigiKaPart.” The whois record for the domain name lists Respondent’s name as “Ali Mohammadizadeh.”.
16. Respondent has no legitimate interests in the <digikapart.com> domain name.
17. Respondent was well aware of Digi-Key, registered a domain name containing the confusingly similar term “Digi Ka” and a generic term related to Digi-Key’s business and built a website that is a knockoff of Digi-Key website, using the same logo, photos, text, and color scheme found on authentic Digi-Key websites.
18. Respondent clearly intends to misdirect users searching for Digi-Key to its website.
19. Given Respondent’s knowledge of Digi-Key’s prior trademark rights, Respondent registered and is using the DomainName in bad faith.
B. Respondent
1. The domain name is the initials of the Respondent’s name in Farsi: Di stands for Danesh -means: knowledge Gi stands for Gostaran -means: Developers Ka stands for Kala -means: Merchandise
Part is Farsi word and used to be one of the ancient tribe and wasn’t meant to be interpreted as piece in English.
2. Respondent acknowledges that their contracting web-designing company has used the pictures of Complainant’s webpage.
3. Respondent states they have already changed the logo and announced on their webpage that their company is not related to Digi-Key.
4. Respondent argues that the marketing field of Digikapart is inside Iran and has no sale or export to other countries.
5. Respondent alleges that the Iranian consumers cannot access Digi.key webpage.
C. Complainant’s Additional Submission
1. Even after Digi-Key filed the UDRP Complaint and after Respondent modified its logo, Respondent continued to display images that were taken from Digi-Key's website.
2. According to the named registrant, Ali Mohammadizadeh / Pars ICT, the true registrant is "Danesh Gostaran Kala-ye Part (digikapar.com)." According to the apparent true registrant, its name is "Danesh Gostaran-e-Kalaye-e- Part."
3. In an attempt to claim a legitimate interest in the Domain Name, a person identified as "Nima shirvani" writes that "Di" was selected as shorthand for "Darnesh" and "Gi" was selected as shorthand for "Gostaran." Assuming that Respondent actually intended to represent an abbreviation of "Darnesh" and Gostaran" in a domain name, that would correspond to "Da" and "Go" not "Di" and "Gi." Even if Respondent's name actually does begin with "Darnesh Gostaran," that does not equate "Digi." As for the "Ka" component, which not coincidentally is phonetically similar to "key," Respondent claims Ka stands for "Kala." Respondent could have registered a domain name containing "dagokala," but instead it registered <digikapart.com>. As for the "part" component, Nima shirvani claims that "part" is a Farsi term. Yet the link provided by Nima shirvani provides background on the term "Parthia" not "part." There is no evidence that "part" has any association with Respondent's purported business. It is not a coincidence that the Domain Name contains the term "part" and that Digi-Key is a leading distributor of electronic parts.
4. Nima shirvani acknowledges that the website associated with the Domain Name contained a logo that copied the DIGI-KEY logo and images from Digi-Key's website, which adds to the confusing nature of the Domain Name.
D. Respondent’s Additional Submission
Digi stands for digital goods and ka stands for kala, which means goods in Farsi. There was no intention of breaking copyright rules, and the <digikapart.com> domain name is directed only at local parties in Iran.
Digi-Key Corporation is a leading distributor of electronic parts which has been in the market for over forty years. Its US website is located at <digikey.com>. Digi-Key owns dozen of registrations throughout the world for its DIGI-KEY trademark and its DIGI-KEY oval logo in connection with electronic part distribution services.
Respondent registered and uses the <digikapart.com> domain name on a website with a very similar logo and combination of colors. Respondent acknowledges that their contracting web-designing company has used the pictures of Complainant’s webpage.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant uses the DIGI-KEY mark and a red and white design logo for distribution of electronic parts to engineers and product manufacturers. Complainant holds rights in the DIGI-KEY mark and logo in different countries, including the US Reg. No. 1,487,965 registered on May 10, 1988.
This Panel finds that trademark registrations in the name of the Complainant are sufficient establish rights in the mark under Policy ¶ 4(a)(i), especially taking into account it has been firstly registered before Respondent’s domain name registration. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
This Panel concludes that <digikapart.com> domain name is confusingly similar to the DIGI-KEY mark as the terms “digi ka” are phonetically similar to DIGI-KEY, and the added term “part” is descriptive of Complainant’s products, namely, electronic parts. See Yokohama Tire Corp. v. Jones, FA 739888 (Nat. Arb. Forum Aug. 3, 2006) “The Panel finds that the mere elimination, misspelling and addition of terms to Complainant’s mark in the <yokahamatires.com> domain name is not sufficient for Respondent to distinguish the disputed domain name from the Y YOKOHAMA mark, especially because the disputed domain name remains phonetically similar to the mark.”
Moreover, the Panel finds that the deletion of the hyphen from the mark and the addition of a gTLD are insignificant alterations under Policy ¶ 4(a)(i). See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark).
Consequently the Panel finds that the <digikapart.com> domain name is confusingly similar to the DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests on the <digikapart.com> domain name, since it has not provided sufficient evidence that Respondent has been commonly known by the cited domain names. The WHOIS information corresponding to the domain name identifies Respondent “Ali Mohammadizadeh / Pars ICT”.
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
This Panel finds that the WHOIS information for the disputed domain names identifies the domain name’s registrant as “Ali Mohammadizadeh / Pars ICT”, which bears no resemblance to the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
This Panel concludes that Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii) so the burden shifts to Respondent.
According to both this named registrant and the apparent true registrant/Respondent, Respondent’s name is “Danesh Gostaran-e-Kalaye -e-Part” and the domain name is the initials of the Respondent’s name in Farsi: Di stands for Danesh -means: knowledge Gi stands for Gostaran -means: Developers Ka stands for Kala -means: Merchandise Part is Farsi word and used to be one of the ancient tribe and wasn’t meant to be interpreted as piece in English.
This Panel finds that Respondent’s allegations about the origin of the name DIGIKA or DIGIKAPART are not sufficient to prove that it is commonly known as DIGIKA, or DIGIKAPART or by the domain name <digikapart.com>.
This Panels finds that Respondent’s use of the domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use, especially taking into account that Respondent has acknowledged that their contracting web-designing company has used the pictures of Complainant’s webpage and the very similar red and white design logo. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
The Panel finds Respondent’s efforts to pass off as Complainant is not a use protected under Policy ¶¶ 4(c)(i) or (iii).
Respondent argues to have already changed the logo and announced on their webpage that their company is not related to Digi-Key. This Panel concludes that
a disclaimer included after the initiation of this proceeding does not alleviate Respondent’s Policy ¶ 4(a)(ii) burden. See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
This Panel finds that Complainant submitted sufficient evidence to prove that Respondent attempted to pass off as Complainant: the domain name is very similar in view and sound, the Respondent’s website includes a very similar design logo, similar combination of colors and some identical pictures which belonged to Complainant’s website. Moreover, Respondent has acknowledged that their contracting web-designing company has used the pictures of Complainant’s webpage and the very similar red and white design.
This Panel concludes that it constitutes bad faith registration and use. Prior panels have found evidence of bad faith where the respondent used the disputed domain name in connection with an imitation website. In Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002), the panel held, “Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”
The Panel concludes that Respondent is in violation of Policy ¶ 4(b)(iv).
Moreover this Panel finds that Respondent knew Complainant’s rights in the mark and logo when registering and using the disputed domain name and offered electronic components via the <digikapart.com> domain name.
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <digikapart.com> domain name be TRANSFERRED from Respondent to Complainant
Héctor Ariel Manoff, Panelist
Dated: October 24, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page