The Complainant is Markit Group Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Berwin Leighton Paisner, UK.
The Respondent is Rna Iletsim Dan Ve Rek Paz Ltd. Sti Leyla Firat of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with Reg2C.com Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2013. On May 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2013, 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”).
On May 24, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On May 24, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit any comments on this issue.
The Center received several email communications, with attached documents in English and Turkish, from the Respondent on May 27 and 28, 2013. The Center acknowledged receipt of such email communications on May 28, 2013.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced May 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2013. The Center received an email communication, with attachments in English and Turkish, on June 11, 2013, from the Respondent. The Center informed the parties about the commencement of panel appointment process on June 21, 2013.
The Center appointed Christopher J. Pibus, Tony Willoughby and Kaya Köklü as panelists in this matter on July 8, 2013. 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
The Complainant is an online data services provider primarily directed at the financial marketplace and financial institutions. The Complainant was founded in 2001, and at the time the Complaint was filed, operates 19 offices throughout the world, including New York, London, Tokyo, Toronto, Sydney, Amsterdam and Frankfurt. The Complainant has approximately 2,800 employees.
The Complainant has operated its business since 2001 under the name Markit, and has registered the trademarks MARKIT, MARKIT-PARTNERS and the MARKIT logo in many countries around the world. Of those numerous trademark registrations, the following registrations each cover services in Class 42:
Australian Registration No. 1217764 dated February 14, 2011 for MARKIT;
Canadian Registration No. TMA 835893 dated November 6, 2012 for MARKIT;
Chinese Registration No. 7783724 dated February 21, 2011 for MARKIT;
European Union Registration No. 6546808 dated March 1, 2011 for MARKIT;
Hong Kong (China) Registration No. 301023939 dated December 31, 2007 for MARKIT;
Japan Registration No. 5536085 dated November 16, 2012 for MARKIT;
Russian Federation Registration No. 436428 dated May 4, 2011 for MARKIT;
Singapore Registration No. T09120111 dated February 17, 2012 for MARKIT;
United States of America Registration No. 4142873 dated May 15, 2012 for MARKIT.
The Complainant also owns numerous domain names which contain the trademark MARKIT as a first and dominant element. In particular, the Complainant owns the top level domain names and .
The Complainant has won numerous awards including Innovation of the year at the International Financial Review Awards 2005; Company to Watch at the Inside Market Data Awards 2006; Best Reference Data Provider at the Insider Market Data Awards 2007; Best Overall Data Provider at the Trade Tech Awards 2008; Data Firm of the Year at the Global Investor Awards 2009; Top Track 250 in the Sunday Times, Fast Track 100 in the Sunday Times, both in 2010; Technology Development of the Year by Asia Risk in 2011; and Best Registry Provider by Environmental Finance in 2012.
The Complainant has published a magazine to subscribers since 2008, under the name MARKIT, and has approximately 17,000 subscribers in 46 countries throughout the world.
The Respondent is Rna Iletisim Dan Ve Rek Paz Leyla Firat, a Turkish company. The Respondent registered the disputed domain name on February 1, 2011..
On February 4, 2011 the domain name was registered in the name of E Park Internet Teknolojileri at an address which appears to be the same as one of the addresses for the Respondent1.
On February 12, 2011 the Respondent filed a trademark application for MAARKIT in the Turkish Patent Institute.
On February 2, 2012 the Respondent registered the domain name .
On April 18, 2013 the Complainant’s representative wrote to the Respondent reciting its trademark rights and seeking transfer of the disputed domain name and the domain name .
There then followed an exchange of correspondence between the parties in the course of which the Complainant offered to purchase the disputed domain name and the domain name and for sums rising to GBP 1,000 and the Respondent offered to sell the domain names for GBP 50,000.
On May 3, 2013 the Complainant registered the domain name , the Respondent’s registration of that name having by then expired.
The Panel has no information on the status of any negotiations in respect of the domain name which still appears to be in the name of E Park Internet Teknolojileri. 5. Parties’ Contentions A. Complainant Confusingly Similar
The Complainant submits that it owns registered trademark rights in MARKIT, as particularized above in paragraph 4.
The Complainant contends that the disputed domain name is identical to the Complainant’s MARKIT trademark except for the addition of a second letter “a” and “.com” designation. The Complainant submits that the insertion of the additional letter “a” is a deliberate misspelling of the Complainant’s trademark, and that misspelling does not distinguish the disputed domain name from the Complainant’s registered trademark. Accordingly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered MARKIT trademark. Rights and Legitimate interests
The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the name Maarkit or the Complainant’s trademark MARKIT. Furthermore, the Complainant contends that the word “Maarkit” has no known meaning in the Turkish language.
The Complainant submits that it has filed an opposition proceeding against the Respondent’s Turkish trademark application no. 2011/11227 on October 12, 2011 and that those proceedings are still pending. The Complainant further submits that the Respondent has not filed any evidence, which would demonstrate that the Respondent has any rights to the MAARKIT trademark in view of the Complainant’s earlier trademark rights in the mark MARKIT.
The Complainant also contends that the Respondent was never authorized or licensed by the Complainant, and that the Respondent has not used the disputed domain name in a bona fide offering of goods and services. The Complainant submits that the Respondent has registered the disputed domain name to attract, confuse and profit from Internet users seeking the Complainant. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) Respondent was aware of the Complainant’s registered trademark rights in MARKIT when it registered the confusingly similar domain name; (ii) Respondent is engaged in typosquatting, namely registering and is using a domain name that is a misspelling of the Complainant’s registered trademark, in an attempt to divert unsuspecting Internet users looking for the Complainant to the Respondent’s website for purposes of monetary gain; (iii) Respondent registered and is using a confusingly similar domain name to disrupt and interfere with the Complainant’s business; and (iv) Respondent registered the confusingly similar domain name in an attempt to obtain money from the Complainant in exchange for the transfer of the domain name in an amount in excess of the Respondent’s out-of-pocket expenses. B. Respondent
The Respondent filed only a skeletal response stating that the Complainant’s claims about the disputed domain name are baseless, that the Respondent did not accept the Complainant’s offer to purchase the disputed domain name, and that the Respondent has provided its own offer of sale to the Complainant.
The Respondent further stated that in light of the “lawsuit” filed by the Complainant “we have suspended and halted the social networking site project to be launched on the domain addresses “www.” and “www..”
The Respondent submitted with its response a copy of a print-out of the trademark application for MAARKIT in the Turkish Patent Institute. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
As a preliminary point, the Panel finds that the proceeding will be conducted in the English language. The Center transmitted to the Complainant and the Respondent the language of the proceedings document and requested the parties to provide their submissions. The Complainant filed its submissions on May 24, 2013, requesting that the proceeding be conducted in the English language. The Complainant submitted that the Complainant and Respondent had corresponded in the English language prior to the filing of the Complaint, and that the Respondent was able to communicate and correspond in the English language and would not be prejudiced if the proceeding was conducted in the English language. The Complainant further submitted that it would be prejudiced if the proceeding were conducted in the Turkish language. The Respondent did not file any submissions regarding the language of the proceeding. Accordingly, the Panel accepts the Complainant’s submissions and the proceeding will be conducted in English in accordance with paragraph 11 of the Rules.
The second preliminary point, is with respect to the identity of the Respondent. The Complaint identifies the Respondent as Rna Iletisim Dan Ve Rek Paz Ltd Sti Leyla Firat. The Registrar notified the Center on May 2, 2013, that the Respondent was RNA Iletisim Dan. Reklam Paz. San. Tic. Ltd. Sti. The Center requested confirmation of the identity of the Respondent in view of the differences in the name. The Registrar did not respond to those requests. A response was filed on behalf of the Respondent on June 11, 2013. The fact that this response was filed tends to confirm that the Respondent has been correctly identified. The Panel directs the Registrar to treat Rna Iletisim Dan Ve Rek Paz Ltd Sti Leyla Firat and RNA Iletisim Dan. Reklam Paz. San. Tic. Ltd. Sti. as the same party for purposes of this Decision. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have registered trademark rights in the mark MARKIT by virtue of its numerous trademark registrations around the world, namely:
Australian Registration No. 1217764 dated February 14, 2011 for MARKIT;
Canadian Registration No. TMA 835893 dated November 6, 2012 for MARKIT;
Chinese Registration No. 7783724 dated February 21, 2011 for MARKIT;
European Union Registration No. 6546808 dated March 1, 2011 for MARKIT;
Hong Kong (China) Registration No. 301023939 dated December 31, 2007 for MARKIT;
Japan Registration No. 5536085 dated November 16, 2012 for MARKIT;
Russian Federation Registration No. 436428 dated May 4, 2011 for MARKIT;
Singapore Registration No. T09120111 dated February 17, 2012 for MARKIT;
United States of America Registration No. 4142873 dated May 15, 2012 for MARKIT.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark MARKIT. The addition of the second letter “a” in the word “maarkit” does not serve to distinguish the disputed domain name from the Complainant’s registered trademark MARKIT.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel notes that the Respondent filed only a minimal response in this proceeding. The Response contains a bald statement of denial of the Complainant’s claims and an accompanying note indicates (without any supporting documentation) that the Respondent had plans to use the disputed domain name and domain name for a social networking project. The Respondent also submits a print-out of a trademark application from the Turkish Patent Institute of the Respondent’s trademark MAARKIT. The Respondent failed to advise in the submissions that this application has been the subject of opposition proceedings since October, 2011. The only other fact raised in the Response is that the Respondent rejected the Complainant’s offer to purchase the disputed domain name and made its own offer of sale. The Respondent did not dispute any of the facts submitted by the Complainant, although the Respondent had an opportunity to do so. Accordingly, the Panel finds that the facts submitted by the Complainant with respect to its trademark rights in the MARKIT trademark, the reputation of the trademark MARKIT around the world with respect to financial online information, and the facts of the correspondence between the Complainant and the Respondent regarding the offers to purchase of the disputed domain name remain uncontested.
The Panel finds that the Respondent is not commonly known by the name “Maarkit” or the Complainant’s registered trademark MARKIT, and was clearly never authorized or licensed by the Complainant to use the registered trademark MARKIT. The Panel accepts that “Maarkit” is not a recognized word in the Turkish language or otherwise.
Furthermore, the Panel is prepared to find that the Respondent is not using the disputed domain name in a bona fide manner. The Panel finds that the Respondent must have been aware of the Complainant’s registered rights in the MARKIT trademark, and that the Respondent has deliberately misspelled the Complainant’s registered trademark in an attempt to divert Internet users seeking the Complainant’s website to the Respondent’s website for the purposes of monetary gain. This is classic “typosquatting” and does not constitute a bona fide offering of goods and services under the Policy.
If the Respondent had had any genuine plans for a bona fide use of the disputed domain name, it could readily have produced something demonstrable to support the claim. The Panel infers from its failure to do so that it had no such plans.
Accordingly, the Panel finds that the Complainant has satisfied the required under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is prepared to find, on the evidence filed, that the Respondent must have been aware of the Complainant’s registered trademark rights in the mark MARKIT when it registered the disputed domain name on February 1, 2011. The Panel concludes that the Respondent acted in bad faith by attempting to trade on the goodwill and reputation of the Complainant’s trademark by engaging in typosquatting.
The Panel particularly notes that in 2012 the Respondent also registered the domain name (subsequently acquired by the Complainant – see section 4 above) which is also an obvious misspelling of the Complainant’s trademark. Targeted typosquatting of this nature is compelling evidence of bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has therefore satisfied the required criteria under paragraph 4(a)(iii) of the Policy. 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.
Christopher J. Pibus
Presiding Panelist
Tony Willoughby
Panelist
Kaya Köklü
Panelist
Date: August 1, 2013
1 This information was derived from a WhoIs search conducted by the Panel and prompted by the Respondent’s response.
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