The Complainant is ALGECO of Charnay-les-Macon, France, represented by Cabinet Boettcher, France.
The Respondent is Aktif Medya, Ismail Hakki Yildiz of Istanbul, Turkey. 2. The Domain Names and Registrars
The disputed domain name is registered with GoD, Inc. The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2010. On July 16, 2010, the Center transmitted by email to GoD, Inc. and eNom, Inc. a request for registrar verification in connection with the disputed domain names. On July 16, 2010, GoD, Inc. and eNom, Inc. transmitted by email to the Center their verification response confirming that the Respondent was listed as the registrant of respectively and and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the course of verifying the compliance of the Complaint with the formal requirements of the Rules, the Center noted that the Complaint had not been duly signed as requested by the Rules, paragraph 3(b)(xiv). On July 20, 2010, the Center sent an email to the Complainant, inviting it to amend its Complaint accordingly by July 22, 2010. On July 23, 2010, the Complainant filed an amended Complaint, duly signed by the Complainant’s authorized representative.
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 July 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2010. The Respondent sent an email to the Center on August 10, 2010.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on August 18, 2010. 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. 4. Factual Background
The Complainant is the owner of numerous trademarks incorporating the word “algeco”. One can in particular mention the French trademark ALGECO and design, nº 1716296, that was registered on October 8, 1971 and renewed on July 26, 1991 under classes 06, 12, 19, 20, 35, 37, 39, 41 and 42, as well as two Community Trademarks, respectively nº 6892095 registered on June 15, 2010 with a priority date on May 7, 2008 under classes 6, 19, 20, 37, 39 and 43 (trademark), and nº 3130267 registered on May 26, 2005 with a priority date on April 11, 2003 under classes 6, 19, 20, 37, 39 and 43 (figurative trademark).
The Complainant also owns several registered trademarks containing the word “algeco” with an additional element, such as ALGECOSTOCK, ALGECOSTORAGE or ALGECO ORIGIN.
These trademarks mainly cover metallic and non-metallic transportable buildings (such as single-story buildings for building sites, industrial buildings, hangars or containers) metallic and non-metallic buildings, assembly, disassembly and maintenance of transportable buildings, and rental of transportable buildings.
The first disputed domain name was registered on December 11, 2007, with an expiration date on December 11, 2010. The second disputed domain name was registered on April 16, 2008, with an expiration date on April 16, 2011.
On August 10, 2010, the Respondent sent an email to the Center, stating that: “First of all, we want to declare that Algeco has not been know to us until your e-mail. Therefore, there is no any interest with the Algeco company in purchasing the “algeco” domains. The reason of purchasing them is involved with our market. The meaning of algeco has to be understood as ‘ALuminyum Galvaniz Endüstri COmpany'. The domains are purchased and used because we are a company which use Aluminium and Galvanized products”. The Respondent did not document his assertions.
At the time the Complaint was submitted to the Center, both disputed domain names were linked to websites related to a company “Karmod”. These websites displayed numerous links related to prefabricated houses, building or containers, including links entitled “algeco container”. Both websites also included sections on their homepage entitled “Algeco construction” and “Algeco Container” for , respectively a section written in French and entitled “algeco la maîtrise de l’espace et du temps” for . At the time the Panel was appointed, the website for however appeared to have been suspended for reasons that are unclear to the Panel. 5. Parties’ Contentions A. Complainant
The Complainant first contends that the first disputed domain name is identical to its trademarks containing the word “algeco”. The Complainant also argues that the second disputed domain name is confusingly similar to its trademarks.
The Complainant further contends that the Respondent has no rights or legitimate interests in any of the two disputed domain names. It argues that the Respondent does not hold any right in any registered trademark or service mark identical or similar to the disputed domain names and that the Respondent does not have any business activity under the name “algeco”. The Complainant further contends that no legal or business relationship exists between the Complainant and the Respondent, which has never been authorized by the Complainant to use any of the two disputed domain names.
Finally, the Complainant argues that the Respondent has registered and is using the two disputed domain names in bad faith because they are used in relation with the website of a direct competitor, the Karmod Company, which is active in the same field of modular constructions. To emphasize the Respondent’s bad faith, the Complainant points out that the websites to which the two disputed domain names are linked uses French descriptions and titles to create a confusion and a reference to the Complainant, which is a company incorporated in France; furthermore, the links displayed on the websites would mainly contain keywords among which the names of the Complainant as well as of another competitor in the world of modular constructions, Portakabin, would appear. B. Respondent
In an email dated August 10, 2010 sent to the Center, the Respondent contends that the Complainant was not known to him until the receipt of the Complaint. He further argues that the word “algeco” has to be understood as the acronym for “Aluminyum Galvaniz Endüstri Company”. The Respondent however did neither provide the Center nor the other party with additional explanations nor attached any evidentiary document to his Response. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
As concluded in InfoS, Inc. v. Hari Prakash,WIPO Case No. D2000-0076, the Panel considered that his powers under Rules, Paragraph 10(a), allow the Panel to independently visit the Internet in order to obtain additional light in a proceeding.
On August 26, 2010, the Panel tried to visit the websites of the Respondent linked to both disputed domain names, and . The connection resulted in an information message, stating that the websites had been suspended. The server was not accessible. On August 30, 2010, the Panel tried to access the websites linked to the two disputed domain names, and the connection resulted on that occasion in an error message, informing the Internet users that the access to the websites had been limited. The server remained unaccessible. On August 31, 2010, the connection with appeared to have been reestablished, while the connection to the website linked to remained suspended.
Absent any additional information on the circumstances of the suspension of the websites at the disputed domain names, and in particular on the origin of the decision to suspend them, the Panel will not deem that element relevant and conclusive for the purpose on making its decision. Indeed, the suspension may result from a request by the Respondent in order to prevent any access to the websites by the Panel, but it may also be that the concerned Registrars have a common practice to suspend access to any website linked to a disputed domain name undergoing administrative proceedings. Therefore, due to the absence of information, the Panel shall render its decision based on the element of the Complaint only, without taking the said suspension into consideration.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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. A. Procedural Issues
a) Delay
Prior to ruling on the merits of the case, the Panel notes that a deadline had been set on July 20, 2010 for the Complainant to amend its Complaint and submit a duly signed Complaint to the Center by July 22, 2010. Considering that the amended Complaint was only submitted on July 23, 2010, the Panel deems it necessary to address the consequences of such delay in the proceedings.
While the Panel finds it regretful that the Complainant proved unable to submit a duly signed Complaint within two days as requested by the Center, a period of time that was far sufficient, it is of the opinion that such a delay should however not deprive the Complainant of its rights under the Policy and its Rules. According to the Rules, paragraph 4(b), “If the Provider finds the complaint to be administratively deficient, it shall promptly notify the Complainant and the Respondent of the nature of the deficiencies identified. The Complainant shall have five (5) calendar days within which to correct any such deficiencies, after which the administrative proceeding will be deemed withdrawn without prejudice to submission of a different complaint by Complainant”. Considering that these five calendar days would have elapsed on July 25, 2010, the Panel considers the Complaint to have been duly submitted.
b) Respondent’s identity
The Respondent to a Complaint must be the current Registrant to the disputed domain name.
In the present Case, the sole Respondent named in the Complaint and notified by the Center is Aktif Medya, Ismail Hakki Yildiz. The Panel has however noted that the names of the registrants for the two disputed domain names are not identical, as it results from the answer by the two Registrars to the Center’s inquiries on the disputed domain names. Indeed, the registrant for the disputed domain name is Ismail Hakki Yildiz, whereas the registrant for the disputed domain name is Aktyf Medya - Ismail Hakki Yildiz.
It however results from the answers provided by the Registrars to the Center that the portion “Aktyf medya” also appears in the contact information of Hakki Yildiz. Furthermore, in his email of August 10, 2010, the Respondent did not object that both registrants would be different; on the contrary, his explanations clearly referred to both disputed domain names, thus making it clear that both disputed domain names were actually held by a sole and unique registrant.
The Panel is therefore satisfied that the two registrants are in fact a sole and unique registrant and the Complaint is therefore validly directed towards the correct Respondent. B. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of numerous trademarks containing the word “algeco”. It is widely agreed upon that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or sufficiently similar to a registered trademark for purposes of the Policy (see Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works,WIPO Case No. D2005-0941 and Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358).
The first disputed domain name incorporates the trademark ALGECO in its entirety with no additional element and can therefore be found to be identical to a trademark in which the Complainant has rights.
The first disputed domain name being identical to the Complainant’s trademarks, the Panel finds that the Policy, paragraph 4(b)(i) has been satisfied with regards to that domain name.
As to the second disputed domain name, , panels are unanimous to consider that the addition of descriptive words to complainant’s trademark is not sufficient to prevent the domain name to be found similar to such trademark (see EAuto LLC v. EAuto Parts,WIPO Case No. D2000-0096). Such is the case of , which fully incorporates the trademark ALGECO with the mere addition of the descriptive term “container”. Such an addition does not constitute a sufficiently distinctive element to prevent any confusion with the Complainant’s trademarks.
The second disputed domain name being confusingly similar to the Complainant’s trademarks, the Panel finds that the Policy, paragraph 4(b)(i) has been satisfied as to the both disputed domain names. C. Rights or Legitimate Interests
According to the Policy, paragraph 4(b)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain names.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative fact, a difficult, if not impossible, task.” Thus, in this decision, the panel established that “where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it was deemed sufficient for the complainant to make a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once a prima facie case has been made, it is the respondent’s burden to prove its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(b)(ii) of the Policy. See e.g. paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
A respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to it of the dispute, he used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent is commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the present case, the Respondent argues in his email that he has a legitimate interest in the use of the disputed domain names, because the word “algeco” is an acronym for “Aluminyum Galvaniz Endüstri Company”, and that he actually uses aluminum and galvanized products in his company. The Respondent did however not establish that he was using the disputed domain names specifically in relation with aluminum or galvanized products. More than that, the Respondent did not deem it worth to substantiate his assertion according to which the word “algeco” would be an acronym for an actual Turkish company. Mere assertions cannot be considered to be conclusive evidence by the Panel. The Respondent had ample opportunities to document his assertions and has to bear the consequences of his negligence on that regard. Such assertions therefore prove insufficient absent any supporting evidence to demonstrate a legitimate interest in the disputed domain names.
The Respondent did neither establish in his email that he was commonly known by any of the two disputed domain names, nor that he was making a legitimate noncommercial or fair use of the domain names. To the contrary, the Respondent clearly used the disputed domain names for commercial purposes, i.e. to redirect potential customers to the website of the Karmod company, a direct competitor of the Complainant.
Consequently, the Panel considers the Policy, paragraph 4(a)(ii) to be fulfilled. D. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
To have registered the disputed domain names in bad faith, the Respondent first must have been aware of the existence of the Complainant. Considering the evidence brought by the Complainant, in particular the screenshots of the two websites at the disputed domain names displaying, inter alia, links containing the word “algeco”, the Panel is convinced that the Respondent was well aware of the Complainant’s existence when it registered the disputed domain names.
The Respondent’s bad faith is furthermore evidenced by the fact that both disputed domain names were attached to websites that clearly relate to prefabricated houses, containers and buildings, i.e. the very activities carried out by the Complainant. The display of “Algeco” sections depicting modular constructions on both websites, even written in French on “www.” cannot be understood in any other way but as a sign of bad faith. One can indeed not explain, and the Respondent does not try to bring any explanation either, why such section would be used in such manner but for creating a confusion with the Complainant’s activities.
The Panel is convinced based on the evidence submitted by the Complainant that the Respondent primarily registered the disputed domain names for the purpose of diverting the Complainant’s customers for his own commercial gain.
The Respondent’s bad faith can also be pointed out by the doubtful commercial practice that he seems to have adopted in mentioning competitors’ commercial names or their trademarks on his own websites to create a confusion in Internet users’ minds between his own company and his competitors, or to create the appearance of an existing business relationship between them.
These facts clearly show the Respondent’s intention to use the Complainant’s goodwill and reputation for his own commercial gain, and is evidence of the Respondent’s bad faith under the Policy, paragraph 4(a)(iii). 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, and be transferred to the Complainant.
Philippe Gilliéron
Sole Panelist
Dated: September 1, 2010.
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