GoPro, Inc. v Pooneh Jafari
Claim Number: FA1407001569628
Complainant is GoPro, Inc. (“Complainant”), represented by Michelle Hon Donovan of Duane Morris, LLP, California. Respondent is Pooneh Jafari (“Respondent”), IR.
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is <goproiran.com>, registered with Onlinenic Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 14, 2014; the National Arbitration Forum received payment on July 15, 2014.
On Jul 15, 2014, Onlinenic Inc confirmed by e-mail to the National Arbitration Forum that the <goproiran.com> domain name(s) is/are registered with Onlinenic Inc and that Respondent is the current registrant of the names. Onlinenic Inc has verified that Respondent is bound by the Onlinenic Inc 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 July 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@goproiran.com. Also on July 17, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 8, 2014, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the GOPRO trademark to identify its cameras and related accessories.
The GOPRO mark has been registered with the United States Patent and Trade-mark Office ("USPTO") (Registry No. 3,032,989 registered December 20, 2005).
The <goproiran.com> domain name was registered October 14, 2013.
The domain name is confusingly similar to Complainant’s GOPRO trademark.
Respondent has not been commonly known by the domain name.
Respondent is not legitimately affiliated with Complainant in any way.
Complainant has not granted Respondent permission to use its GOPRO trademark in a domain name or otherwise.
Respondent employs the domain name to sell counterfeit GOPRO goods, and it claims to sell GOPRO goods in IRAN — activity which is illegal because of an embargo on trade imposed by the United States government.
Respondent has no to rights or legitimate interests in the domain name.
Respondent is trying to pass itself off as being affiliated with Complainant.
Respondent is profiting from confusion caused among Internet users as to an apparent affiliation between Respondent and Complainant.
Respondent registered the domain name with knowledge of Complainant’s rights in the GOPRO mark.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.
Complainant has rights in the GOPRO trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (finding that that USPTO registration of a mark is sufficient to establish Policy ¶ 4(a)(i) rights.
This is true without regard to whether Complainant has acquired rights in its mark by virtue of its registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Iran). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in its mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that the <goproiran.com> domain name is confusingly similar to Complainant’s GOPRO trademark. The domain name contains the entire mark, adding only the geographically descriptive term “iran” and the generic top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
See also Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding the <indiaticketmaster.com> domain name confusingly similar to a UDRP complainant’s TICKETMASTER mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <goproiran.com> domain name, that Respondent is not affiliated with Complainant in any way, and that Complainant has not given Respondent permission to use its GOPRO trademark in a domain name or in any other way. Moreover, the domain name’s WHOIS information identifies the registrant only as “Pooneh Jafari,” which does not re-semble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (finding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent seeks to profit by employing the <goproiran.com> domain name to sell counterfeit GOPRO goods. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncom-mercial or fair use under Policy ¶ 4(c)(iii). See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights or legitimate interests in a contested domain name where a respondent employed a domain name which was confusingly similar to the mark of another to sell counterfeit versions of a UDRP complainant’s products in competition with that complainant’s business).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent seeks to profit from the confusing similarity between the <goproiran.com> domain name and Complain-ant’s GOPRO trademark by misleading Internet users as to the possibility of an affiliation with Complainant, thus to sell counterfeit goods. Under Policy ¶ 4(b)(iv), behavior this stands as evidence of Respondent’s bad faith in the registration and use of the domain name. See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), a panel there finding, under Policy ¶ 4(b)(iv), bad faith registration and use of a domain name in a respondent’s attempt to profit from a likelihood of confusion between its domain name and a UDRP complainant’s trademark, where the domain name was used to divert Internet users to a website that sold counterfeit merchandise.
In addition, we are convinced by the evidence that Respondent registered the <goproiran.com> domain name while knowing of Complainant and its rights in the GOPRO trademark. This further demonstrates Respondent’s bad faith in the registration of the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of” a UDRP complainant's YAHOO! mark at the time of its registration of a confus-ingly similar domain name).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <goproiran.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 11, 2014
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