The Complainant is Safe Spice Gida Sterilizasyon Sanayi ve Dış Ticaret A.S of Izmir, Turkey, represented by Aydin Bugra Ilter, Turkey.
The Respondent is Yousuke Fujiyama of Kawaguchi-Shi, Saitama, Japan. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Key-Systems GmbH dba . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2011. On May 16, 2011, the Center transmitted by email to Key-Systems GmbH dba a request for registrar verification in connection with the Domain Name. On May 16, 2011, Key-Systems GmbH dba transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 23, 2011, the Center transmitted an email communication to the parties in both English and Japanese regarding the language of the proceeding. On May 24, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2011.
The Center appointed Haig Oghigian, Ugur G. Yalçiner and Teruo Doi as panelists in this matter on July 11, 2011. The Panel finds that it was properly constituted. Each member of 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
As there is no submission from the Respondent, the facts are taken from the Complaint and generally are accepted as true.
The Complainant is engaged in the business of granulating and packaging of spice products, agricultural food products, production, packaging, import and export of food products in Turkey. The Complainant has contributed extensively to the new developments in the industry and has been particularly known in the market for its expertise in steam sterilizing herbs. The Complainant and its products are certified by various institutions such as the British Retail Consortium, the American Institute of Baking, the Control Union and the United States Department of Agriculture.
The Complainant has bee operating in the market for nearly 15 years with the SAFE SPICE company name and trade mark since its establishment in 1998. The Complainant owns the trademark SAFE SPICE (the “SAFE SPICE Mark”) in Turkey, under Classes 39 and 40 registered with the Turkish Patent Institute on March 29, 2000. The registration for the SAFE SPICE Mark has been renewed on March 11, 2009 for the successive ten years.
The Complainant used the Domain Name for commercial purposes over a period of more than ten years between 1999 and 2011. However, the registration was not renewed, and had lapsed after the due date. The Complainant is currently using a similar domain name with the country code extension, .
The Domain Name was registered on February 2, 2011. 5. Parties’ Contentions A. Complainant
The Complainant requests that the Domain Name be transferred from the Respondent to the Complainant.
The Complainant contends that it has rights in the SAFE SPICE Mark based on: (i) its use of SAFE SPICE in and as part of a trademark since 2000; and (ii) its company name since the start of its business in 1998.
The Complainant argues that the Domain Name is identical or confusingly similar to its SAFE SPICE Mark because the Domain Name incorporates, in its entirety, the SAFE SPICE Mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Respondent does not have the right to use the SAFE SPICE Mark as a trade name, company name or brand, and there is no evidence to suggest hat the Respondent has been or is commonly known by the Domain Name.
Further, the Complainant contends that the Domain Name was registered and is being used in bad faith as the Respondent is aiming to benefit from the fame of the trade name, Safe Spice through the use of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:
(i) The domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such provision, the Complainant must prove that it enjoys the trademark right, and that the domain name is identical with or confusingly similar to its trademark or service mark.
It is established that “where a domain name incorporates complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy”. See, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105.
The Complainant has rights in the SAFE SPICE Mark based on its use of in and as part of trademark registration with the Turkish Patent Institute in 2000 and its use of the SAFE SPICE Mark on spice products not only in Turkey, but outside Turkey, through their exported products.
The Panel acknowledges that no additions have been made to the SAFE SPİCE Mark to distinguish the Domain Name from the SAFE SPİCE Mark owned by the Complainant. On its face, it is evident that the Domain Name is identical to the SAFE SPİCE Mark in which the Complainant has established its rights. Credit Management Solutions, Inc. v. Collex Resource Management,WIPO Case No. D2000-0029.
The Panel acknowledges that the Domain Name incorporates, in its entirety, the SAFE SPICE Mark.
Therefore, the Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s name and mark. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests. Such circumstances include:
- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
- legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
Since the Complainant’s adoption and use of the SAFE SPICE Mark predates the registration of the Domain Name, the burden is on the Respondent to establish its rights or legitimate interests in the Domain Name. See, PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174. The Panel finds that there is no evidence that suggests that the Respondent has rights or legitimate interests in the Domain Name.
Registration of the Domain Name occurred after the Complainant had made use of the SAFE SPICE Mark from the time the Complainant had started its business in 1998, and after the Complainant had obtained registration for its SAFE SPICE Mark in 2000.
There is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name, the SAFE SPICE Mark, or any mark confusingly similar thereto, as a domain name or for any other purpose.
There is no evidence to suggest that the Respondent has been or is commonly known by the Domain Name.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
As mentioned above, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or use of the Domain Name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000-0944).
Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and has used the Domain Name in bad faith.
The Complainant argues that the Respondent is making an attempt to benefit from the popularity of the name and the Domain Name. However, the Complainant has not adduced any evidence that the Respondent has made an attempt to engage in such conduct. Moreover, the Domain Name resolves to a noncommercial website that is completely unrelated to the Complainant’s industry. The Respondent’s website merely offers travelling tips and information on preparing for business trips.
Additionally, if the Respondent were located in Turkey, this evidence would have raised a very strong inference that the Respondent must have known about the Complainant's trademark when he registered the Domain Name. However, in this case, the Panel is unable to infer bad faith at the time of registration because the Complainant owns the trademark in one country, while the Respondent operates in another country. The Panel further notes that, although the Complainant alleges that it is well-known all over the world, none of the evidence submitted to the Panel suggests that the Complainant operates business in Japan, or in countries other than Turkey.
Therefore, the Panel rules that the Complainant has failed to establish bad faith as required by paragraph 4(a)(iii). 7. Decision
For all the foregoing reasons, the Complaint is denied.
Haig Oghigian
Presiding Panelist
Ugur G. Yalçiner
Panelist
Teruo Doi
Panelist
Dated: August 25, 2011
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