GoPro, Inc. v. Amir Sorouri
Claim Number: FA1407001569627
Complainant is GoPro, Inc. (“Complainant”), represented by Michelle Hon Donovan of Duane Morris, LLP, California. Respondent is Amir Sorouri (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <irangopro.com>, registered with Realtime Register B.V.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2014; the National Arbitration Forum received payment on July 15, 2014.
On July 16, 2014, Realtime Register B.V. confirmed by e-mail to the National Arbitration Forum that the <irangopro.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 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@irangopro.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 decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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. 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 makes the following assertions:
1. Respondent’s <irangopro.com> domain name, the domain name at issue, is confusingly similar to Complainant’s GOPRO mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses GOPRO to identify its cameras and accessories. The GOPRO mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,032,989 registered December 20, 2005). The <irangopro.com> domain name adds the geographically descriptive term “iran” and the generic top-level domain ("gTLD") “.com” on to the trademark.
Respondent has no rights or interests in this domain name. First, Respondent is not commonly known by the <irangopro.com> domain name. Second, Respondent fraudulently sells counterfeits and claims to be a GOPRO sales representative in Iran when such an assertion suggests illegal activity due to an embargo on trade imposed by the United States government.
Respondent’s conduct amounts to bad faith at registration through use of the <irangopro.com> domain name. First, Respondent is profiting through the likelihood Internet users will mistakenly believe that Complainant endorses the sale of these counterfeits. Second, Respondent is trying to pass itself off in a fraudulent and illegal manner by giving Internet users the impression that Complainant cares very little about the law with respect to the embargo on Iran. Finally, Respondent registered the domain name with actual knowledge of Complainant’s rights in the GOPRO mark, as illustrated by Respondent’s specific use of the domain name to sell counterfeit GOPRO goods.
The <irangopro.com> domain name was registered September 24, 2013.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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 uses GOPRO to identify its cameras and accessories. The GOPRO mark has been registered with the USPTO (e.g., Reg. No. 3,032,989 registered December 20, 2005). The USPTO registration here is sufficient evidence of Policy ¶ 4(a)(i) rights in the domain name. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The <irangopro.com> domain name merely adds the geographically descriptive term “iran” and the gTLD “.com” on to the trademark and thus remains confusingly similar to the GOPRO mark. The panel notes that gTLDs are not relevant to this analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The geographic term “iran” amplifies confusing similarity as it merely associates the GOPRO mark with the Islamic Republic of Iran. See, e.g., Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Accordingly, the Panel finds that the <irangopro.com> domain name is confusingly similar to the GOPRO mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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.”).
Respondent is not commonly known as the <irangopro.com> domain name. The domain name’s WHOIS information lists “Amir Sorouri” as the registrant of record. Based on this WHOIS information, there is no reason to conclude that Respondent has ever been commonly known by this domain name as envisioned under Policy ¶ 4(c)(ii). See Jordan Cook p/k/a Reignwolf v. Ryan Crase, Ryan Crase Creative Media, FA 1520515 (Nat. Arb. Forum Oct. 28, 2013) (noting that past panels had “declined to make findings under Policy ¶ 4(c)(ii) when the respondent did not make any claim that it was actually known by the domain names. Th[is] Panel agrees that there is no evidence that Respondent is known by the <reignwolf.com> and <reignwolfmusic.com> domain names under Policy ¶ 4(c)(ii).”).
Respondent fraudulently sells counterfeits and claims to be a GOPRO sales representative in Iran when such an assertion suggests illegal activity due to an embargo on trade imposed by the United States government. A roughly copied black and white image at the resolving website evidences the use of Complainant’s mark and the domain name. Respondent’s use of the disputed domain name to operate a storefront for counterfeit goods is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See, e.g., Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is profiting through the likelihood Internet users will mistakenly believe that Complainant endorses the sale of these counterfeits. The Panel notes that this domain name sends users to a Farsi language website wherein GOPRO goods are sold. In H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009), the panel agreed that there was a high likelihood of confusion, and thus Policy ¶ 4(b)(iv) bad faith, when the domain name was used to shuttle Internet users to a website that sold counterfeit merchandise. This attempt to market GOPRO goods to the Iranian market is both unauthorized and illegitimate and constitutes Policy ¶ 4(b)(iv) bad faith as Internet users may mistakenly believe Complainant is engaging in business in Iran.
Second, Respondent is falsely giving Internet users the impression that Complainant cares very little about the law with respect to the embargo on Iran. The domain name is used to create the impression that the GOPRO brand is making a presence in Iran. This attempt at passing off is illustrative of bad faith, particularly when an American trade embargo makes it illegal for Complainant to reasonably conduct business in Iran. See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“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.”).
Finally, Respondent registered the domain name with actual knowledge of Complainant’s rights in the GOPRO mark, as illustrated by Respondent’s specific use of the domain name to sell counterfeit GOPRO goods. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to the fame of Complainant's mark, and the use made of it on the resolving website, it is clear that Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <irangopro.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 15, 2014
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