The Complainant is Nilfisk-Advance A/S of Brondby, Denmark, represented internally.
The Respondent is Sezgin Hazangil, Hazan Isi ve Makina Sanltdsti CID102906 of Istanbul, Turkey. 2. The Domain Names and Registrars
The disputed domain names ; ; ; ; ; are registered with FBS Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2011. On January 7, 2011, the Center transmitted by email to FBS Inc. a request for registrar verification in connection with the disputed domain names. On January 7, 2011 and on January 17, 2011, FBS Inc. 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 notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 20, 2011.
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 January 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2011. The Respondent did not submit any formal response.
The Center appointed Kaya Köklü as the sole panelist in this matter on March 3, 2011. 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.
Although the language of the Registration Agreement is in the Turkish language, the Panel determines in accordance with the Complainant’s request and the Rules paragraph 11(a), that the language of these administrative proceedings shall be the English language. The Panel finds that the Respondent will not likely be prejudiced by a decision being rendered in English. This is particularly the case as the Respondent appears capable to write and understand English, as evidenced by documents in the case file demonstrating that the Respondent’s official company Internet presentation, available under the domain name is provided in fluent English language. 4. Factual Background
The Complainant is a long-standing Danish company manufacturing and selling household, commercial and professional cleaning machines and equipment. It owns a large number of trademarks in the sign NILFISK. The first trademark registration dates back to the year 1910. Since then, various trademark rights were registered in nearly all industrialized countries worldwide, including China, United States and Germany. In Turkey, the first NILFISK trademark was registered in 1996, claiming protection for various goods and services including for cleaning machines and respective equipment.
Further to its trademark rights, the Complainant has registered and operates hundreds of domain names with various level variants and combinations. Among these domain names owned by the Complainant, there are several domain names with the Turkish TLD “.tr”, including , , and .
The Respondent is a Turkish company located in Istanbul. According to its official company homepage , it is doing business in selling cleaning machines and providing respective services.
The disputed domain names ; were created on July 12, 2010. The disputed domain names ; ; and were created on August 2, 2010. 5. Parties’ Contentions A. Complainant
The Complainant argues that it is a global player in the manufacturing and selling of household, commercial and professional cleaning machines with about 5,000 employees worldwide and a turnover of the Nilfisk-Advance Group in 2009 of approximately EUR 690,000,000. It is further alleged that the Complainant has made business in Turkey since the 1930’s.
As a remedy in these administrative proceedings, the Complainant requests the transfer of the disputed domain names.
The Complainant in particular points out that the disputed domain names are identical or at least confusingly similar to the Complainant’s trademarks as they fully incorporate the Complainant’s NILFISK trademark. The Complainant argues that the difference between the disputed domain names and the Complainant’s trademark NILFISK is that the disputed domain names comprise some additional generic terms in the Turkish language which do not negate the confusing similarity.
Additionally, the Complainant argues that the Respondent has no rights or legitimate interest in respect of the disputed domain names and has registered and used the disputed domain names in bad faith. The Complainant is of the opinion that the Respondent intentionally tries to mislead Internet users by creating the impression of being part of the Nilfisk-Advance Group of companies. In this regard, the Complainant underlines that it has never granted a permission or license to the Respondent to use the trademark NILFISK.
It is further alleged that the Respondent has never used and does not intent to use the mark NILFISK in connection with a bona fide offering of goods and services.
Finally, the Complainant is of the opinion that the Respondent must have known the Complainant’s existing NILFISK trademark rights well before the registration of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
However, the Center received an informal email communication on January 21, 2011 sent from the email address of the Respondent. This email communication was a response to the Center regarding the language of the proceedings but also contained some statements on the merits of the case.
In its email, the Respondent requests in the Turkish language to deny the remedies claimed by the Complainant.
The Respondent mainly argues to have the better rights in the disputed domain names. The Respondent asserts that it sells original new and second hand NILFISK CFM products and, hence, believes to have a legitimate right to use the NILFISK trademark in order to promote its products for sale. Otherwise, the Respondent argues, it would have no possibility to sufficiently inform its customers about its NILFISK products. 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 other 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 is obliged to prove that each of the three following elements are satisfied:
(i) The disputed domain names are identical or confusingly similar to the trademark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the 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 bears the burden of proving that all these requirements are fulfilled.
To begin with, the Panel finds that the informal email communication received by the Center on January 21, 2011 does not qualify to be a properly drafted response to the Complaint as it formally refers to the language of the proceedings only. However, as it contains some argumentation on the merits of the case, the informal communication will nevertheless be considered by the Panel in its decision.
With regard to any uncontested information provided by the Complainant, the Panel may appropriately accept the provided reasonable factual allegations in the Complaint as true, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark NILFISK.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding its mark NILFISK. The Complainant has provided sufficient evidence showing that it owns a large number of NILFISK trademarks in various jurisdictions worldwide. According to the current record, long-standing trademark protection for the mark NILFISK is also given in Turkey, where the Respondent is apparently located.
Although not identical, the disputed domain names fully incorporate the Complainant’s trademark NILFISK.
The disputed domain names differ from the trademark by the addition of some generic terms in the Turkish language. The Panel, which is familiar with the Turkish language, confirms that the Turkish terms used in the disputed domain names have the following meanings in the English language:
“Nilfiskim” means “my Nilfisk”
“Nilfisk supurgem” means “my Nilfisk vacuum cleaner”
“Nilfisk temizlik makinalarim” means “my Nilfisk cleaning machines”
“Nilfisk temizlik makinasim” means “my Nilfisk cleaning machine” (whereas the spelling of “makinasim” is from a Turkish language perspective grammatically not correct)
“Nilfisk temizlik makineleri” means “Nilfisk cleaning machines”
“Nilfisk temizilik makinesi” means “Nilfisk cleaning machine”
In the Panel’s view, the addition of generic terms like “machine” or “my” does not negate the confusing similarity between the Complainant’s trademark and the disputed domain names. The Panel finds that these incorporations are descriptive and do not create a new distinctiveness separate from the Complainant’s trademark NILFISK. On the contrary, the full inclusion of the Complainant’s trademark in combination with these generic terms in the Turkish language may even enhance the false impression that any offered product or service under the disputed domain names are somehow officially linked to the Nilfisk-Advance Group.
In other words, the Panel is of the opinion that the disputed domain names which wholly incorporate the Complainant’s registered trademark NILFISK are sufficient to establish confusing similarity for the purpose of the Policy (see Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd.) v. Arthur Wrangle, WIPO Case No. D2005-1105).
Given the findings above, the Panel concludes that the first requirement under paragraph 4(a) of the Policy is fulfilled. B. Rights or Legitimate Interests
The Panel further believes that the Respondent has not demonstrated any right or legitimate interest in the disputed domain names.
While the burden of proof remains with the Complainant, the Panel recognizes that this would result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge and sphere of the Respondent. Therefore, the Panel agrees in line with prior UDRP panels that the Complainant is required to make out a prima facie case before the responsibility shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names in order to meet the requirements in paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement by providing uncontested prima facie evidence that the Respondent has no trademark, license or any similar right to use the Complainant’s mark in the disputed domain names.
The Respondent has failed to file any evidence or convincing arguments to demonstrate a right or legitimate interest or any other evidence of a right or legitimate interest in the disputed domain names according to the Policy, paragraphs 4(a)(ii) and 4(c).
In particular, the Respondent has failed to show that it has rights or legitimate interests in the disputed domain names in connection with a bona fide offering of goods or services. The Respondent’s allegation to have better rights in the disputed domain names is not convincing. Based on the current record, the Respondent cannot claim to have a right or legitimate interest in the disputed domain names as a reseller or repair service for any of the Complainant’s products. This would only have been conceivable if the Respondent had accurately disclosed on its websites linked to the disputed domain names it’s legal and business relation to the Complainant and efficiently prevented any confusing similarity with official and authorized services provided by the Complainant or its local agencies. The Panel finds that in the present case the Respondent does not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant as it uses domain names fully incorporating the Complainant’s trademark with the addition of some only very generic Turkish terms which do not negate the impression that the disputed domain names are linked to an authorized reseller or service provider of the Complainant.
Furthermore, there is also no indication in the file that the Respondent is commonly known by the disputed domain names. On the contrary, the Panel is convinced that the Respondent is – if at all – known by its own company’s Internet presentation linked to . Even on its company letter head used in its email and post communication of January 20, 2011 (p. 132 in the case file), the Respondent does only refer to as its official company domain name.
Finally, the Respondent states in its defense pleading that it sells goods and provides services for commercial purposes under the web sites linked to the disputed domain names. Hence, the Respondent does not make a legitimate noncommercial or fair use of the disputed domain names without the intent for commercial gain to misleadingly divert users or to tarnish the NILFISK trademark.
Hence, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is further of the opinion that the Respondent has registered and used the disputed domain names in bad faith.
First, the Panel is convinced that the Respondent was well aware of the Complainant’s trademark rights when registering the disputed domain names. This is apparently the case as the disputed domain names were registered after the Complainant registered and used its trademark NILFISK in Turkey in 1996. As the Respondent seems to be located in Turkey, the Panel does not find it likely that the Respondent did not know the Complainant’s trademark when registering the disputed domain names, in particular as the Respondent appears to be selling NILFISK products in Turkey.
In the Panel’s view, it rather appears that the Respondent has registered and used the disputed domain names for the main purpose of creating an association with the Complainant and its cleaning products business. The way of combining the Complainant’s trademark NILFISK with generic Turkish terms in the disputed domain names as described above causes the impression that the Respondent has registered and used the disputed domain names solely for the purpose to divert Internet traffic from the Complainant’s sites to the Respondent’s sites.
The Respondent’s argumentation that he would not be able to sell NILFISK products without using the Complainant’s trademark as part of the disputed domain names cannot convince.
Even an unauthorized reseller or service provider may be entitled to use a third party’s trademark if they accurately disclose on their websites their legal and business relation to the relevant trademark owner, or lack thereof, and efficiently prevent any confusing similarity with official and authorized products or services provided by the trademark owner or its local agencies. In other words, the Panel believes that attracting Internet traffic by way of misleading Internet users without sufficiently disclosing the legal and business relationship to the owner of the used trademark is an indication for bad faith registration and use.
In the present case, the Panel is of the opinion that the Respondent has registered and used the Complainant’s trademark only for the purpose of misleading Internet users who may search for the Complainant’s official Turkish Internet presentation. The Respondent in particular failed to sufficiently disclose the lack of its business relationship to the Complainant. The Panel believes that the Respondent has used the Complainant’s trademark NILFISK within the disputed domain names for commercial purposes mainly in order to gain unlawful benefit and unfair advantage from misled Internet users.
In the light of the above, the Panel concludes that the disputed domain names were registered and are being used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, 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.
Kaya Köklü
Sole Panelist
Dated: March 17, 2011
Full & Egal Universal Law Academy