First '.ir' ccTLD decision issued
In Total SA v PayaHost Web Solutions, a World Intellectual Property Organization (WIPO) panellist has issued the first decision involving a domain name in the Iranian '.ir' country-code top-level domain (ccTLD). The panellist ordered the transfer of 'total.ir' to the complainant under the '.ir' Domain Name Dispute Resolution Policy (irDRP), which is very similar to the Uniform Domain Name Dispute Resolution Policy (UDRP).
Paragraph 4(a) of the irDRP requires that a complainant must prove each of the following requirements in order to obtain the transfer of a disputed '.ir' domain name:
- the domain name registered by the respondent must be identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- the respondent must have no rights or legitimate interests in the domain name; and
- the domain name must have been registered or used in bad faith.
It is interesting to note that although requirements one and two are identical to the UDRP, requirement three is significantly easier to prove than the corresponding requirement under the UDRP as it only requires registration or use in bad faith, rather than the registration and use required under the UDRP. The need for both registration and use under the UDRP has caused much discussion, particularly in cases where the domain name is not being used. This has led to the development of the principle, first established in Telstra Corporation Ltd v Nuclear Marshmallows, that registration of a domain name together with inaction may amount to bad faith registration and use in certain specific circumstances (for example, when the trademark concerned has a very strong reputation). However, under the irDRP proof of bad faith registration is sufficient in itself, which will obviate the need for complainants to construct an argument based on the slippery concept of passive bad faith in the event of non-use.
Similarly, in a number of cases decided under the UDRP, panellists have been obliged to find that subsequent renewal of a domain name in bad faith when the original registration was in good faith cannot be equated with bad faith registration, which is thus not sufficient to obtain a transfer. Presumably, under the irDRP this will not always be the case as a lack of bad faith registration can be overcome by proof of subsequent bad faith use.
The WIPO panellist in the case at hand found in favour of multinational energy company Total SA and ordered the transfer of the domain name 'total.ir' from the registrant - PayaHost Web Solutions. In this instance, bad faith registration or use was indicated by the strength of Total's well-known TOTAL mark, including in Iran (which PayaHost could not fail to be aware of, despite assertions to the contrary) and by the fact that PayaHost had also registered other well-known brands as domain names.
David Taylor, Lovells, Paris
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