Iranian sun cancelled

A resident of the Islamic Republic of Iran recently sought to profit from the 'sun.ir' domain name, but ended up getting burned. Mohammad Mahdi Rafiee of Tehran used the domain name for a website purporting to be the official Iranian website of Sun Microsystems Inc. The long-established, multi-national company with business operations in many areas, including computer hardware, computer software, network computing equipment and related services filed a complaint with the World Intellectual Property Organization (WIPO) to obtain cancellation of the domain name. WIPO is the sole provider of dispute resolution services under the '.ir' Domain Name Dispute Resolution Policy ('.ir' DRP), the local variant of the Uniform Domain Name Dispute Resolution Policy (UDRP) introduced by the Internet Corporation for Assigned Names and Numbers.

To succeed under the '.ir' DRP, the complainant has to prove all three of the following elements:

• the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  
  
• the respondent has no rights or legitimate interests in respect of the domain name; and
  
  
• the domain name has been registered or is used in bad faith.

It should be noted that the '.ir' DRP policy is somewhat broader than the UDRP as the UDRP requires cumulative evidence of registration and use in bad faith to rule in favour of the complainant, whereas only registration or use in bad faith is necessary under the '.ir' DRP.

As Sun Microsystems had rights in numerous registered trademarks relating to the term 'sun' covering Iran, establishing its rights was not an issue. The panel nevertheless noted that the marks included a highly generic term which may have proved fatal to the complainant when trying to establish that Rafiee had no rights or legitimate interests in respect of the domain name. The panel indeed indicated in that respect that because of the highly generic character of the disputed domain name, it would generally not be difficult for a respondent to rebut the claims of the complainant.

In this case, though, the evidence indicated that Rafiee was using the disputed domain name fraudulently to identify himself as Sun Microsystems. The website associated with the disputed domain name reproduced numerous SUN trademarks and logos, and appeared to be a modified version of an old page from the official Sun Microsystems website. The panel therefore concluded that Rafiee was trying to give the false impression of an association with Sun Microsystems. This fact prevented the panel from finding that Rafiee had any rights or legitimate interests in respect of the disputed domain name. It also followed from the wholesale copying of Sun Microsystems' materials that Rafiee was engaged in a deliberate effort to disrupt the business of Sun Microsystems, a course of action establishing bad faith in the use of the domain name.

The conclusion did not therefore come as a surprise. What did is the remedy sought by Sun Microsystems, which asked the panel for cancellation of the domain name. This means that, as soon as it is released from the control of Rafiee, any eligible party will be able to register it again, meaning that Sun Microsystems could well be faced with another cybersquatting situation. In fact the domain name has already been reregistered in the name of Goharbaran Sharif Co in Tehran.

WIPO has decided a little more than 10,000 domain name cases since the introduction of the UDRP in late 1999. In only 65 decisions cancellation was ordered, which is just 0.65% of the total. One may therefore wonder why Sun Microsystems asked for this remedy. The answer may well lie in the eligibility criteria for '.ir' domain names. According to the Domain Rules of '.ir', only the following may apply for a '.ir' domain name:

• organizations legally represented within the geographic boundary of Iran;
  
  
• individuals residing officially in Iran;
  
  
• organizations connected with the official representation of Iran abroad; and
  
  
• other individuals or organizations whose activity and the use of the domain name are not in conflict with the laws, practices and interests of the Islamic Republic of Iran.

David Taylor and Charles Simon, Lovells LLP, Paris