The Complainant is Fenis Teknik Urunler A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Abdunnur GUNAY of Izmir, Turkey. 2. The Domain Names and Registrar
The disputed domain names and are registered with Intercosmos Media Group d/b/a directNIC.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2010. On October 18, 2010, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain names. On October 18, 2010, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a confirmation request from the Center, the Complainant filed an amendment to the Complaint on November 4, 2010.
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” 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 accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2010.
The Center appointed Selma Ünlü as the sole panelist in this matter on December 2, 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 evidence attached to the Complaint lays down the following:
(1) The Complainant is Fenis Teknik Urunler A.S. (Fenis Technical Products Co. Inc.), which was established in 1967 with a purpose to produce and sell aluminum based radiators and solar collectors. It provides the abovementioned services under the trademarks ALURAD and SOLARTEK.
(2) The Complainant is the registered owner of trademarks ALURAD and SOLARTEK before the Turkish Patent Institute dating back to 1989 and 1996 respectively. Annex 5 of the Complaint also demonstrates that several trademarks containing “Alurad” and “Solartek” phrases are registered for Fenis Teknik Urunler A.S. with renewal dates varying between 2004 and 2009.
(3) Annex 6a and 6b of the Complaint demonstrates that the Complainant has also international trademark registrations under the Madrid Protocol.
(4) Annex 7 demonstrates that the Complainant’s trademark ALURAD was registered as a Community Trademark (CTM) in 2007 before the Office for Harmonization in the Internal Market (OHIM). Additionally, the Complainant’s SOLARTEK trademark was registered as a CTM in accordance with the Madrid Protocol in 2006.
(5) The Complainant is the legal owner of the domain names and as of August 3, 2000 and June 14, 2001 respectively.
Panel’s observation of the case file reveals the following:
(1) The disputed domain names and were registered in the name of the Respondent in April 19, 2008 and January 23, 2008 respectively.
(2) The name, corporate address and email address details of the Respondent provided by the Registrar indicates that the Respondent is an individual, residing in Izmir, Turkey. 5. Parties’ Contentions A. Complainant
The Complainant requests the Panel to issue a decision transferring the disputed domain names to the Complainant on the following grounds:
(i) The disputed domain names are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names were registered and are being used in bad faith. (i) Identical or Confusingly Similar
The Complainant alleges that the disputed domain names are indistinguishably similar with its trademarks ALURAD and SOLARTEK as well as its domain names, namely and as one of the disputed domain names, , uses the generic word “radyator” (radiator in English) after the trademark ALURAD and the other disputed domain name contains both of the Complainant’s trademarks in one domain name. The Complainant also argues that the word “radyator” is a generic word that is used in the industry in which the Complainant is active, and the public has come to associate the words “alurad” and “radyator”. The Complainant has referred to Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant,WIPO Case No. D2004-0896 and ESAT Digifone Limited v. Colin Hayes,WIPO Case No. D2000-0600. (ii) Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names since the Respondent has made no claim that he is using the domain names in connection with a bona fide offering of goods and services and the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or any domain names consisting of such related marks. The Respondent also does not have a trademark registration or application filed in his own name and he does not have any personal rights in the terms “alurad” and “solartek” and therefore the disputed domain names are not a mark by which the Respondent is commonly known. Further, the Respondent has made no legitimate noncommercial or fair use of the domain names. (iii) Registered and Used in Bad Faith
The Complainant argues that registration and use of a domain name incorporating a famous-well-known mark is necessarily in bad faith where a respondent knew at the time of the registration that he could not make any actual use of the registered domain name without infringing on the trademark owner’s rights, and that in this case both the Complainant and the Respondent appear to be of Turkish origin and living in Turkey and active in the same industry. Therefore the Respondent has unfairly tried to take advantage of the undisputed fame of the trademarks ALURAD and SOLARTEK associated directly with the Complainant.
It has also been argued by the Complainant that the Respondent through his company namely Tekfen Dogalgaz Muh.Isi Ltd.St had previously registered (Fenis Teknik Urunler A.S. V. Tekfen Dogalgaz Muh.Isi Ltd.ST,WIPO Case No. D2008-0002). Following the decision dated March 7, 2008 which ordered the transfer of the domain name, , the Respondent registered the disputed domain names and .
The Complainant further claims that the Respondent registered the domain names in order to prevent the owner of the mark from reflecting the mark in corresponding domain names and from offering online services through said domain names.
Lastly, the Complainant alleges that the Respondent does not actively use the domain name. Rather, the Respondent has included superficial links to a handful of third parties’ commercial sites that even belong to the competitors of the Complainant and apparently create revenue for the Respondent. The Complainant also mentions that the Respondent registered a domain name incorporating the Complainant’s trademarks, despite having no connection to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain names are identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all these requirements are fulfilled. A. Identical or Confusingly Similar
Based on the evidence submitted by the Complainant concerning its various trademark registrations for the ALURAD and SOLARTEK marks, the Panel finds that the Complainant has successfully proven its earlier rights in the ALURAD and SOLARTEK marks. The Complainant has also proven ownership of the domain names and . Both disputed domain names contain the ALURAD mark which is a registered trademark of the Complainant and one of the disputed domain names consists of both trademarks of the Complainant. The disputed domain name which contains one of the two trademarks consists of the Complainant’s trademark together with a generic word, namely the word “radyator”.
The Panel considers that the word “radyator”, which means “radiator” in English, is a generic word which has no distinctiveness. The use of this generic word does not result in the disputed domain name being distinctly different from the Complainant’s registered trademark and accordingly the generic word ‘radyator” does not create distinctiveness for the Respondent’s domain name . See, e.g., Abertis Infraestructuras, S.A. v. Syed Hussain (PDAPB),WIPO Case No. D2006-1007, Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002. The disputed domain name incorporates both of the Complainant’s trademarks, thus the Panel finds that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.
The Panel therefore finds the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy rules that, 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 you [Respondent] of the dispute, your use of, or demonstrable 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.”
The burden of proof lays on the Complainant who must demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above elements, prove rights or legitimate interests in the disputed domain names.
The Panel finds that the Complainant has proven its rights in the ALURAD and SOLARTEK marks, since it is comprehended that the Complainant is the registered owner of trademarks ALURAD and SOLARTEK before the Turkish Patent Institute dating back to 1989 and 1996 respectively. Annex 5 of the Complaint also proves that several trademarks containing the ALURAD and SOLARTEK marks are registered for Fenis Teknik Urunler A.S. with renewal dates varying between 2004 and 2009. Besides, the Complainant is the legal owner of the domain names and as of August 3, 2000 and June 14, 2001 respectively. The aforementioned data sufficiently demonstrates the fact that the Respondent does not have any rights in the ALURAD and SOLARTEK marks.
The Panel also finds that the Respondent has not provided evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. Thus, the Panel finds that the Respondent has failed to furnish evidence to show that it has rights or legitimate interests in the disputed domain names.
In this sense, based on the content of the case file, the Panel holds that the use of the ALURAD and SOLARTEK marks have not been authorized or licensed to the Respondent, the Respondent cannot be regarded as using the disputed domain names in connection with a bona fide offering of goods or services and the disputed domain names do not correspond to the Respondent’s name or a trade name by which he has become commonly known.
Further, the Respondent has failed to prove that he has made legitimate noncommercial or fair use of the domain names.
Hence, as the rights or legitimate interests of the Respondent have not been duly proven under paragraph 4(c)(ii) of the Policy, the Panel concludes that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on respondent’s website or location.
In light of the evidence submitted, the Panel is of the opinion that the Respondent has registered the domain names in order to prevent the owner of the trademark from reflecting the marks in corresponding domain names and intentionally attempted to attract Internet users to his websites for commercial gain by benefitting from the Complainant’s reputation. The Complainant and the Respondent are evidently of Turkish origin, reside in Turkey and are alleged to be active in the same industry. Given the circumstances, the Panel is of the opinion that it is not possible for the Respondent to be unaware of the Complainant, its trademarks and domain names and also to register the disputed domain names which contain the Complainant’s trademarks literally without being aware. See, e.g., Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087.
The Panel is therefore of the opinion that the Respondent, who did not submit a formal Response to the Complaint, has acted in bad faith to create likelihood of confusion and misleading impression that the disputed domain names were somehow connected with the Complainant thereby unfairly benefitting from the reputation of a third party’s trademarks.
Additionally, the Complainant’s arguments with regard to Fenis Teknik Urunler A.S. V. Tekfen Dogalgaz Muh.Isi Ltd.ST, supra, regarding the domain name, which was previously registered by the Respondent, through his company, namely Tekfen Dogalgaz Muh.Isi Ltd.Sti has been examined and confirmed by the Panel. It is accurate that the referred decision dated March 7, 2008 ordered the transfer of the domain name, , to the Complainant which was registered in the name of Tekfen Dogalgaz Muh.Isi Ltd.Sti on August 26, 1998. The Panel therefore finds that this also shows the bad faith of the Respondent as the Respondent registered a domain name containing the Complainant’s trademark in the past as well.
Lastly, the screenshot of the domain name that has been submitted to the case file by the Complainant indicates that the domain name was used to divert potential customers of the Complainant to his own website. Upon examination of the Panel it has been concluded that currently neither the domain name nor the domain name are used. However, the Panel is of the opinion that this does not prevent a finding that the domain names are being used in bad faith (see, e.g., Eveready Battery Company Inc. v. Oscar Haynes,WIPO Case No. D2003-1005 and Intel Corporation v. the Pentium Group, WIPO Case No. D2009-0273).
The Panel is therefore convinced that the disputed domain names have been registered and are being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a)(iii) of the Policy. 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 domain names, and be transferred to the Complainant.
Selma Ünlü
Sole Panelist
Dated: December 16, 2010
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