The Complainant is Leifheit AG of Nassau, Germany, represented by CMS Hasche Sigle, Germany.
The Respondent is Selim Bayoglu of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with IHS Telekom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2013. On August 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 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.
On August 9, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On August 12, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
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 in English and Turkish, and the proceedings commenced on August 22, 2013. Between August 21 and December 17, 2013, the Center received twelve email communications from the Respondent, the content of which is discussed under Section 5.B below. On August 26, 2013, the Center informed the parties of the possibility of suspending the proceeding in order to explore a possible settlement. On August 29, 2013, the Center notified the suspension of the proceeding. On December 2, 2013, the Complainant requested the reinstitution of the proceeding. In accordance with the Rules, paragraph 5(a), the new due date for Response was December 16, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment procedure on December 17, 2013.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on January 3, 2014. 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 Complainant, Leifheit AG, is a German public limited company founded in 1959 and is a supplier of household products focusing on the areas of cleaning, laundry care, kitchen and scales.
The Complainant is the owner of the registered trademark LEIFHEIT as a word and figure mark in several classes in many countries, including Turkey where the Respondent is located. A list of these trademark registrations is attached to the Complaint. The earliest protection date as listed in the Turkish government trademark registry with respect to LEIFHEIT is May 14, 2004 (application no. 2004/14032, registered on April 14, 2005).
The Complainant has also registered the trademark LEIFHEIT as domain names under several generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”), including (created on December 11, 1999). The registration of these domain names predates the registration of the disputed domain name.
The disputed domain name was registered on February 16, 2010. The Panel visited the disputed domain name on January 15, 2014, and observed that the disputed domain name is used in connection with a Turkish-language website advertising cleaning products for the Complainant’s branded goods. The website also contains photographs of the Complainant’s products and reproduces the Complainant’s graphical logo. The website includes a section titled “about us” where the Respondent identifies himself as Onur Yapı Malz. Tic. Ltd. Şti., “a retail company that specializes in construction materials, offering full house decoration services and a range of white goods franchise brands, […] such as Franke, Siemens, Ariston, Miele, Westinghouse, Amana, General Electric, Liebherr, Subzero […].” (a screenshot of the page is provided in the annexes to the Complaint together with a certified English translation).
Upon the initiation of the proceedings, parties have entered into an “Internet Domain Name Assignment” agreement, where the Respondent has agreed to the transfer of the disputed domain name to the Complainant. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 4(i) of the Policy, the Complainant requests that the disputed domain name be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy. Identical or Confusingly Similar
The Complainant asserts that the disputed domain name comprises the word “leifheit” which is identical to its registered trademark LEIFHEIT. The Complainant states that the addition of “turkey” which is a geographical element and the addition of a gTLD, “.com”, does not have an impact on the overall impression of the dominant part of the disputed domain name and does not avoid the finding of confusing similarity. The Complainant states that the complete incorporation of a complainant’s trademark creates sufficient similarity between the mark and the domain name. Rights or Legitimate Interests
The Complainant asserts that it did not grant the Respondent any rights to register or use the disputed domain name as the owner of the trademark LEIFHEIT.
The Complainant further asserts that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and that the Respondent is trying to take unfair advantage of the goodwill associated with the Complainant’s well-known trademark. The Respondent states that the disputed domain name resolves to a website where the LEIFHEIT logo is featured prominently in the headline and that the Respondent creates the impression that the website associated with the disputed domain name is the Complainant’s official website in Turkey.
Further, the Complainant submits that even if the Respondent was an authorized seller or distributor of the Complainant, the Respondent does not qualify under the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Complainant asserts that (i) the disputed domain name is not only being used to sell the trademarked goods, but also competing manufacturers such as Franke, Siemens, Ariston and Miele, (ii) the Respondent does not accurately and prominently disclose the Respondent’s relationship with the Complainant as the trademark holder.
The Complainant further asserts that the Respondent is not commonly known by the disputed domain name and that the disputed domain name is being used for a commercial purpose and therefore the use is not privileged under the doctrine of fair use. Registered and Used in Bad Faith
The Complainant contends that the trademark LEIFHEIT is internationally reputed and registered as a trademark in various countries all over the world for several classes and that the Respondent does not have the authority to use the Complainant’s trademark/company name.
Further, the Complainant contends that the Respondent’s selection of the disputed domain name and offer to sell the trademarked goods online shows the deliberate intent to create an impression of affiliation with the Complainant and thus the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s famous mark as to the source, sponsorship, affiliation or endorsement of the website or of products on the website. B. Respondent
The Respondent did not file a formal Response to the Complainant’s contentions.
The Center received several informal email communications from the Respondent stating that it does not speak English; however, the Respondent later has started corresponding in English. The Respondent further stated in several emails that it will not use the disputed domain name any longer and that it is willing to transfer the disputed domain name to the Complainant. 6. Discussion and Findings 6.1 Language of the Proceedings
Under paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement. In the present case, as confirmed by the Registrar, the language of the Registration Agreement is Turkish.
The Complainant submitted its Complaint in English and requested English to be the language of the proceedings. The Respondent did not request Turkish to be the language of the proceedings; however, the Respondent submitted several informal email communications in English. There is no agreement between the parties with respect to the language of the proceedings.
Pursuant to paragraph 11(a) of the Rules, in the absence of an agreement between the parties with respect to the language of the proceedings, the Panel is granted power to determine the language of the proceedings having regard to the circumstances of the case.
Both Parties have been given a fair opportunity to present their case and the Respondent has been notified in both Turkish and English. Although the Respondent stated that it does not know English, it did not object to the Complainant’s request that English be the language of the proceedings and later communicated with the Center in English which suggests that it is able to understand English. Therefore, the Panel is of the opinion that the Respondent does not have difficulty in understanding the Complainant’s contentions.
Accordingly, the Panel accepts the Complaint in English and decides to render the Decision in English.
6.2. Substantive Elements of the Policy
The Panel turns to the merits of the case. Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark LEIFHEIT as evidenced in the annexes to the Complaint.
In relation to the disputed domain name, it is clear that the disputed domain name fully incorporates the Complainant’s trademark and the only difference between the disputed domain name and the Complainant’s trademark is the addition of the geographical term “turkiye” (“Turkey” in Turkish) and the “.com” extension. It has been stated in several decisions by UDRP panels that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works,WIPO Case No. D2005-0941.
Moreover, the use of a trademark in its entirety with the addition of a geographical term does not negate the confusing similarity with the trademark. Playboy Enterprises International Inc. v. Joao Melancia,WIPO Case No. D2006-1106; Six Continents Hotels, Inc. v. CredoN / Domain Name for Sale,WIPO Case No. D2005-0755.
The Panel further finds that the addition of the “.com” extension is typically irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant’s trademark, PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189.
The Panel recognizes the Complainant’s rights and concludes that the disputed domain name is confusingly similar with the Complainant’s LEIFHEIT trademark.
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. Consequently, the Panel finds for the Complainant on the first element of the Policy. B. Rights or Legitimate Interests
In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in a domain name, Belupo d.d. v. WACHEM d.o.o. ,WIPO Case No. D2004-0110. Once the complainant makes a prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. The Policy at paragraph 4(c) provides various ways in which the respondent may demonstrate rights or legitimate interests in a domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that it did not grant the Respondent any rights to register or use the disputed domain name as the owner of the trademark LEIFHEIT; the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and that the Respondent is trying to take unfair advantage of the goodwill associated with the Complainant's well-known trademark. The Complainant alleges that the fact that the disputed domain name resolves to a website where the LEIFHEIT logo is featured prominently in the headline shows that the Respondent is creating the impression that the website associated with the disputed domain name is the Complainant’s official website in Turkey. The Complainant further asserts that the Respondent is not commonly known by the disputed domain name and that the disputed domain name is being used for a commercial purpose and therefore the use is not privileged under the doctrine of fair use.
The Panel finds that there is no evidence to suggest that the Respondent has any rights in any trademarks or service marks which are identical, similar or related to the disputed domain name. The Panel accepts that the Respondent is not commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights.
The Panel visited the disputed domain name on January 15, 2014, and observed that the disputed domain name is used in connection with a Turkish-language website advertising cleaning products for the Complainant’s branded goods using pictures of the Complainant’s products and graphical logo. When evaluated together with the trademarks, logos and copyrighted material used, the Panel is of the opinion that the Respondent clearly suggests a business relationship with the Complainant. As the website associated with the disputed domain name does not accurately disclose the Respondent’s relationship with the trademark owner and furthermore contains a statement that the Respondent also sells competing products such as Franke, Siemens, Ariston and Miele, the Panel is of the opinion that the Respondent does not qualify under the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 for making use of the disputed domain name in connection with a bona fide offering of goods or services.
The website associated with the disputed domain name is a commercial website used for the promotion of products offered by the Respondent. Therefore, the Panel infers that there is no intention of legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers.
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent neither submitted a formal Response, nor objected to the Complainant’s contentions in its informal email communications. To the contrary, the Respondent has agreed to the transfer of the disputed domain name. In light of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The requirements of paragraph 4(a)(ii) of the Policy are fulfilled and, consequently, the Panel finds in favor of the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a 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 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 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.
The Complainant’s trademark LEIFHEIT was registered and used before the Respondent’s registration of the disputed domain name. Further, the Respondent’s website associated with the disputed domain name contains the LEIFHEIT trademark and logo and offers the Complainant’s trademarked products for sale. Therefore, the Respondent was likely aware of the Complainant’s trademark LEIFHEIT at the time the disputed domain name was registered. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of registration of the disputed domain name may be considered as an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226.
Further, the fact that the website at the disputed domain name uses the Complainant’s trademark LEIFHEIT in connection with offering services related to the Complainant’s goods suggests that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
After examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Panel finds in favor of the Complainant on the third element 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.
Gökhan Gökçe
Sole Panelist
Date: January 20, 2014
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