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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nialla Trading Co. v. Aryasoft Co.

Case No. DIR2006-0001

1. The Parties

The Complainants are Nialla Trading Co., Tehran, Islamic Republic of Iran, represented by Fariborz Bahi, Islamic Republic of Iran.

The Respondent is Aryasoft Co., Tehran, Islamic Republic of Iran, represented by Mr. Pejman Nikjoo.

2. The Domain Names and Registrar

The disputed domain names <safilo.ir> and <safiloiran.ir> are registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2006. On January 30, 2006, the Center transmitted by email to IRNIC a request for registrar verification in connection with the domain names at issue. On January 31, 2006, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 23, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 March 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2006. The Response was filed with the Center on January 30, 2006.

The Center appointed Peter G. Nitter as the sole panelist in this matter on March 29, 2006. 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.

On the Panel’s instructions, the Center issued on April 11, 2006 Administrative Panel Procedural Order No. 1, which requested the Complainant to submit additional evidence, namely:

1. A signed declaration by Safilo S.p.a. stating that, either

(1) Safilo S.p.a. agrees to join Nialla Trading Co. as joint Complainant in the current proceeding; or

(2) Safilo S.p.a. endorses the Complaint and consents to its requested outcome.

2. A copy of the Italian registration of the trademark SAFILO, as well as evidence of the Complainant’s use of the trademark SAFILO.

According to the Administrative Panel Procedural Order No. 1, the Complainant was bound to file a submission by April 21, 2006. No submission was received by the Center within the time limitations.

4. Parties’ Contentions

A. Complainant

The Complainant is authorized by Safilo S.p.a. to sell SAFILO products in Iran.

Safilo S.p.a. is an internationally known manufacturing company of eyewear/sunglasses sold in many countries. The brand SAFILO has been used since the 1930’s and is registered as a trademark in Italy by Safilo Group.

The Complainant submits that the disputed domain names are identical or confusingly similar to Complainant’s trademark SAFILO.

The disputed domain names were registered by the Respondent, which is a company active in domain name registrations and web hosting, by direct order from the Complainant. The Complainant later discovered that the Respondent registered the disputed domain names for itself, despite the fact that the Complainant had paid the Respondent to register the disputed domain names on behalf of the Complainant.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. SAFILO is not a general and commonly used name or term.

The Respondent is neither authorized by Safilo S.p.a. nor by the Complainant to use SAFILO. Further, the Respondent neither owns any trademarks, service marks or products containing the name SAFILO, nor is it in any way known by the name SAFILO.

According to the Complainant, the Respondent has leased <safilo.ir> to a competitor of the Complainant, Setayesh Optic Central.

The Complainant further submits that the Respondent was aware of Safilo Group’s rights when registering the disputed domain names.

B. Respondent

The Respondent submits that Safilo S.p.a. has not been registered under Regal Rules in the Islamic Republic of Iran. Further, the Respondent asserts that Safilo S.p.a. does not have an official headquarter in Iran.

According to the Respondent, SAFILO is a common name in Iran and not known as a trademark in that country.

The Respondent submits that the Complainant has neither been known by the disputed domain names in Iran nor has it proved any right to use the disputed names.

According to the Respondent, SAFILO is not identical or confusingly similar to the Complainant’s name that has been registered in Iran.

The Respondent submits that it never linked <safilo.ir> to a web hosting service from the registration of the domain name on November 8, 2004, until its renewal on November 22, 2005. Further, the Respondent submits that safiloiran.ir was not connected to a web hosting service from its registration date January 17, 2006, until today.

According to the Respondent the disputed domain names were not registered by direct order from the Complainant. The disputed domain safilo.ir was registered by direct order of one Mr. Nael on November 8, 2004. Mr. Nael’s contract with the Respondent expired November 9, 2005. Mr. Nael has refused to renew this domain name and the domain name has been locked on November 9, 2005.

The disputed domain <safiloiran.ir> was registered on January 17, 2006.

According to the Respondent, the Complainant has copied the Respondent’s head letter and filled in the Complainant’s name and information.

The Respondent further submits that the Complainant did not have a valid dealership agreement with Safilo S.p.a. before January 1, 2005.

According to the Respondent, the Respondent did not know about the Complainant when the disputed domain names were registered.

The Respondent submits that the disputed domain names were not registered to disrupt the Respondent’s business. Further, the Respondent did not register the disputed domain names for the purpose of selling or renting them to Safilo S.p.a.

6. Discussion and Findings

The Panel finds that the Complainant has not demonstrated rights to the trademark SAFILO, which was indeed asserted as being held by a third party, namely Safilo S.p.a. of Italy. Upon the evidence submitted by the Complainant, it appears that the latter is in fact an authorized reseller of SAFILO goods in Iran. The question as to whether the Complainant is further related to Safilo S.p.a. in any other way (e.g. as an exclusive reseller or as a licensee) was not addressed. The involvement of Safilo S.p.a. in this proceeding also remains unclear.

In this regard, the Panel observes that the opportunity to shed some light over these issues was given to the Complainant through Administrative Panel Procedural Order No. 1, to which the Complainant defaulted.

Under these circumstances, the Panel is unable to conclude that the Complainant has rights in the trademark SAFILO. The mere fact of being a dealer in goods or services bearing a trademark held by another is insufficient to succeed under the first element of the Policy.

As the Complainant has failed under this first element, it is not necessary to discuss the second and third elements. The Panel notes however that there is little evidence supporting the Respondent under the second and third element. This decision should not in any way be regarded as an endorsement of a legitimate interest to the domain name on the Respondent’s side.

The Complaint is therefore denied due to lack of evidence under the first element of the Policy. This decision is not meant to prejudge or influence an eventual national court proceeding between the parties, which would entail different procedural and substantive rules.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Peter G. Nitter
Sole Panelist

Date: June 1st, 2006