The Complainant is Elektromak Büro Makineleri Sanayi ve Ticaret A.Ş. of Istanbul, Turkey, represented by Burçak Başkan, Turkey.
The Respondent is Domain Sales, You Want Your Name LLC of Las Vegas, Nevada, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Gal Communications (CommuniGal) Ltd. d/b/a Galcomm (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2012. On March 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2012.
The Center appointed Marilena Comanescu as the sole panelist in this matter on April 24, 2012. 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.
The language of the proceedings is English. 4. Factual Background
The Complainant asserts it is the official exclusive distributor of Toshiba brand photocopy and fax machines in Turkey since 1974, the year when it start using the ELEKTROMAK trademark to conduct its business. The Complainant holds trademark registrations for ELEKTROMAK, such as the Turkish trademark registration No. 2008 28487 covering goods and services in classes 9, 35, and 37.
The Complainant submits that it has been the holder of the disputed domain name between 2004 and 2011 and failed to renew the registration of the same due to activities conducted by a former employee. Currently, the Complainant operates under a couple of websites, including “www..tr”.
The disputed domain name was created on June 1, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case as follows:
(i) The disputed domain name is identical to its trademark ELEKTROMAK:
The disputed domain name is identical to the Complainant’s trademarks registered since 2001 and domain name acquired due to its loss of control over the disputed domain name.
In its response to the Complainant’s cease and desist letter sent prior to commencing these proceedings, the Respondent asserted that the word “elektromak” is a dictionary word meaning “electromagnetic”.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Respondent registered the disputed domain name for the purpose of further selling it, according to the banner posted on the main page of the website to which the disputed domain name resolves. Further, the website displays pay-per-click (PPC) advertising pages that contain links to product categories related to the Complainant’s business. Thus, the Respondent is capitalizing on the Complainant’s trademark value.
(iii) The disputed domain name was registered and is being used in bad faith:
The Respondent registered the disputed domain name in order to further sell it to the Complainant for a value in excess of out-of-pocket costs: according to the email correspondence sent to the Complainant, the Respondent has asked the amount of USD 13,500 for the transfer of the disputed domain name.
The Respondent has parked the disputed domain name at Domain Name Sales, a well-known domain name selling organization.
The Respondent has refused to cooperate with the Complainant despite being put on notice on its trademark rights and refused the Complainant’s offer to reimburse the out-of-pocket costs.
The Respondent’s response to the Complainant’s cease and desist letter provided as Annex IV to the Complaint suggests that the Respondent is familiar with the fact that the Complainant is a Turkish entity.
The Respondent should have checked whether the disputed domain name registration infringes or violates someone else’s rights.
The Complainant has been the holder of the disputed domain name between 2004 and 2011 and failed to renew the registration of the same because it was “hijacked” by a former employee. The Respondent has registered the disputed domain name immediately after its expiry even the Complainant had a backlog request outstanding, thus implying that the Respondent was well aware of the Complainant’s reputation and was closely monitoring the expiry of the disputed domain name for purpose of cyber-squatting.
The Respondent is using the disputed domain name to attract Internet users for its commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not have rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.
The Respondent’s failure to respond does not automatically result in a decision in the favor of the Complainant, and the latter must establish each of the three elements provided by paragraph 4(a) of the Policy, above listed.
Consequently, the Panel shall further analyze the eventual concurrence of these circumstances in the present case. A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this element, namely: that it has rights in a trademark, and, if so, that the domain name is identical or confusingly similar to its mark.
The Complainant has rights in the ELEKTROMAK trademark since 2001. First of the Complainant’s trademarks provided as evidence in the Complaint is the trademark registration No. 2008 28487 and it is a word mark with device element; the second is the trademark registration No. 2001 07869 which has several word elements, including the word “elektromak”. For the purpose of such analysis, the Panel shall resume to observe the first trademark above mentioned.
Paragraph 1.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) refers to the impact of design element of a trademark in assessing identity or confusing similarity with a domain name. Accordingly, “as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark”. Further, it is stated that such design element in a trademark may be relevant to a decision from case to case, especially if the design element is prominent or the word element is disclaimed. In the present case, we have the trademark registration No. 2008 28487 which is formed of the word element “elektromak” in capitalized standard letters and a red circle device element, the dominant part remaining the word element.
Therefore, within the lines of the general opinion of the previous panels, this Panel also agrees that the device element is not relevant for the present analysis and that the Complainant has established its trademark rights in ELEKTROMAK trademark for the purpose of the UDRP proceedings. See also Porto Chico Stores, Inc. v. Otavio Zambon,WIPO Case No. D2000-1270.
The disputed domain name contains the Complainant’s trademark in its entirety.
Further, it is well established that indicators for the generic Top-Level Domain (gTLD) suffixes such as “.com”, “.info”, “.net”, and “.org” are irrelevant to the consideration of confusing similarity between a trademark and a domain name.
For all the above, the Panel finds that the disputed domain name is virtually identical to the Complainant’s ELEKTROMAK trademark.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is identical to its trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its ELEKTROMAK trademark. Therefore, in line with the UDRP precedents, the burden of production on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name.
The Respondent failed to submit any response in the present procedure. The silence of the Respondent may support a finding, based on other relevant circumstances, that it has no rights or legitimate interests in respect of the disputed domain name. See also Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011.
Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been commonly known by this disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was held seven years by the Complainant and, at its expiry, it was immediately registered by the Respondent although the Complainant has engaged specific services trying to get back the possession of the disputed domain name. Further, on the website corresponding to the disputed domain name there is a banner mentioning that the disputed domain name is for sale. These facts may lead to the assumption that the Respondent is engaged in the business of registering and reselling domain names. Such business is not illegitimate if, among other conditions listed by the panel in the Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964, the respondent regularly engages in the business of registering and reselling domain names, the respondent makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others, the domain name in question is a “dictionary word”, and there is no evidence that the respondent had actual knowledge of the complainant’s mark.
Due to its failure to participate in these proceedings, the actual business of the Respondent remains unknown to the Panel as well as its effort to avoid registering and using domain names identical or confusingly similar to third party’s registered trademarks.
Further, even if the Panel would accept the Respondent’s assertion mentioned in the Complaint in the sense that the word “elektromak” is a Turkish generic word, in order to give rights or legitimate interests in the corresponding domain name, the disputed domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning. See also Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin,WIPO Case No. D2002-0635; Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304.
In the present case, at the time of filing the Complaint, the Respondent was using the disputed domain name in connection to a website offering sponsored links to various goods, containing, inter alia, products of the Complainant’s competitors and not in connection with the claimed dictionary meaning.
At the same time, the PPC website would not normally fall within the bona fide use principles where such websites seek to take unfair advantage of the value of a trademark (see also Gerber Products Company v. LaPorte Holdings, WIPO Case No. D2005-1277; Shon Harris v. c/o Whois Identity Shield,WIPO Case No. D2007-0997).
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and use of the disputed domain name.
When assessing the bad faith in the registration requirement, the following should be considered (1) whether the Respondent knew of the Complainant and its trademark, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark (see Avon Products, Inc. v. Mary Ultes,WIPO Case No. D2009-0471).
The Complainant’s ELEKTROMAK trademark was registered in 2001 and has been used since 1974. Moreover, the disputed domain name was held and operated by the Complainant between 2004 and 2011, before the Respondent registered it.
From the parties’ correspondence prior to commencing these proceedings and provided as Annex IV to the Complaint, the Respondent seems to be aware of the Complainant and its nationality as it claims that the word “elekromak” means “electromagnetic” in Turkish.
Moreover, from the records on this case, the Respondent is apparently involved in the business of registering and reselling domain names, which makes it a professional in such field and therefore it should be aware of the corresponding regulations, including the responsibility of each domain name registrant to determine whether the domain name registration infringes or violates someone else’s rights.
Further, the Respondent is using the disputed domain name for a web portal containing links to various goods, including inter alia goods of the Complainant’s competitors. Such landing pages are the classic method to generate financial gain via the PPC or click-through device. The way in which many of these services operate is to provide the domain name registrant with part of the “click through” revenues that are generated when an Internet user clicks on a hyperlink on the website operating from that domain name.
Paragraph 4(b)(iv) provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line 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 [the respondent’s] website or location” is evidence of bad faith.
Given the fact that the disputed domain name completely incorporates the Complainant’s trademark, the disputed domain name was previously held and used by the Complainant for seven years, and the website displays links to goods related to the Complainant’s products, indeed in this Panel’s view, an Internet user accessing the website corresponding to the disputed domain name may be confused and believe that it is a website held, controlled by the Complainant, or somehow affiliated or related to it. In this way, the Respondent is obtaining commercial gain by diverting Internet users searching for the Complainant and, in the same time, is disrupting the business of the Complainant by diverting its potential consumers to websites containing products of the Complainant’s competitors.
The Complainant also cites the situation provided in paragraph 4(b)(i) of the Policy when the respondent has registered the domain name primarily for the purpose of selling the domain name to the complainant who is the owner of the trademark for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. Due to the Respondent’s apparent knowledge on the Complainant and its nationality, and the Complainant’s use of the disputed domain name for seven years before it was registered by the Respondent together with the Respondent’s request for an excessive amount for reselling the disputed domain name to the Complainant, it seems very likely that this situation listed by paragraph 4(b)(i) of the Policy is applicable in the present case.
The Respondent chose not to participate in these proceedings, its reaction to the Complainant’s letters sent prior to commencing these proceedings and provided as Annex IV to the Complaint does not assist it, the Respondent has not contested any of the allegations made by the Complainant, and it did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark and therefore reinforces this approach. See also Kabushiki Kaisha Toshiba v. Shan Computers,WIPO Case No. D2000-0325.
For all these reasons, the Panel finds that the third element of the Policy is established on the record in these proceedings, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Marilena Comanescu
Sole Panelist
Dated: May 4, 2012
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