The Complainants are Arif Cakmak and Lazermarket Markalama Kaynak Yedek Parca of Bornova, Izmir, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Birhan Ufku Guzel of Bornova, Izmir, Turkey, represented by Arm Patent, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2013. On August 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 2013, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on August 21, 2013.
The Center verified that the Complaint together with the amended 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 26, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 15, 2013. The Response was filed with the Center on September 4, 2013. The Respondent filed an amended Response on September 12, 2013.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on September 17, 2013. 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 paragraph 7 of the Rules.
On September 18, 2013, the Complainant made a supplemental filing with a request that it be considered. As a response, the Respondent filed a supplemental filing on September 23, 2013.
On September 27, 2013, at the Panel’s request, the Center transmitted by email to the Registrar a request for further registrar information and extended the time for decision until October 8, 2013. On September 29, 2013, the Registrar transmitted by email to the Center its response. 4. Factual Background
The Complainant Arif Cakmak (the “Complainant”) is a founding partner of Lazermarket Markalama Kaynak Yedek Parca (the “Second Complainant”)established on January 20, 2010, which offers laser marking machines, services and laser weld in Izmir.
LAZERMIKRON was registered before the Turkish Patent Institute to Lazermikron Markalama Kaynak Sanayi ve Ticaret Limited Şirketi (LazerMikron) on November 17, 2008, registration number 2008/66432. Thereafter, LAZERMIKRON was transferred to the Complainant on February 7, 2011 through the Trademark Transfer Agreement dated January 10, 2011 signed by Ali Caba representing LazerMikron and the Complainant as annexed to the Complaint.
The Complainant is also the owner of registered on April 27, 2011, which incorporates its trademark.
The registrant of the disputed domain name is Birhan Ufku Guzel. The disputed domain name was registered on September 9, 2006 and was transferred to the Respondent on December 11, 2009. The Panel visited the disputed domain name on September 26, 2013 and observed that the disputed domain name resolves to a webpage promoting Laseral Endüstriyel Lazer Sistemleri, a company owned by the Respondent and established on January 14, 2011.
According to the Turkish Commercial Registry Gazette records, LazerMikron was established on September 22, 2006 by four founding partners including the Complainant Arif Çakmak and Ali Caba. On June 15, 2009, the Respondent became a partner in LazerMikron and was appointed as a general manager together with Ali Caba. On July 8, 2009, the Complainant sold his shares in LazerMikron. Certain inventory of LazerMikron was sold to the Second Complainant in the beginning of the year 2011. On February 15, 2011 LazerMikron entered liquidation proceedings. 5. Parties’ Contentions A. Complainant
The Complainant states that the Second Complainant offers laser marking machines, services and laser weld in Izmir. The Complainant states that it first began working under the name “Lazermetal”, thenunder the name “Lazermikron” between 2006 and 2011; upon the dissolution of “Lazermikron”, it continued its business under “Lazermarket” (the Second Complainant).
The Complainant contends that the Respondent was a partner and general manager of LazerMikron together with the Complainant. The Complainant further contends that it decided to liquidate LazerMikron in 2011 after it bought LazerMikron together with all of its intellectual property rights including the LAZERMIKRON trademark and the disputed domain name. In support of this allegation, the Complainant submits invoices issued by LazerMikron and the Trademark Transfer Agreement dated January 10, 2011 signed by Ali Caba representing LazerMikron and the Complainant.
The Complainant claims that the Respondent left the company in 2011 during the liquidation process and established a new company in the same field as the Complainant. The Complainant further claims that the Respondent changed the registrant information of the disputed domain name using the password provided to him while he was the manager of LazerMikron.
The Complainant further states that it owns and . 1) Identical or Confusingly Similar
The Complainant states that it is the owner of the trademark LAZERMIKRON which was registered on November 17, 2008 before the Turkish Patent Institute. The Complainant contends that the Respondent changed the registrant information of the disputed domain name to the Respondent’s name in 2011, and therefore, 2011 should be considered as the registration date. The Complainant further contends that it is also the owner of registered on April 27, 2011, which is identical to the disputed domain name (notwithstanding the “.tr” extension) and requires the documentation demonstrating that the registrant has rights on the domain name, i.e. trademark rights.
The Complainant contends that the disputed domain name constitutes similarity with its trademark LAZERMIKRON. 2) Rights or Legitimate Interests
The Complainant submits that it has never granted the Respondent a license or permission to use the mark LAZERMIKRON and that the disputed domain name was first registered with the registrar on September 9, 2006 by the Complainant.
The Complainant asserts that the Respondent does not have any rights or legitimate interests in the disputed domain name as the Respondent has no registered trademarks or service marks for LazerMikron and there is no common knowledge that the Respondent is known by the disputed domain name.
The Complainant submits that the Respondent has no legitimate non-commercial or fair use of the disputed domain name. 3) Registered and Used in Bad Faith
The Complainant contends the Respondent knew at the time of registration that he could not make any actual use of the disputed domain name without infringing on the Complainant’s trademark rights and he registered the disputed domain name because it would be recognized as the Complainant’s trademark. The Complainant avers that by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website “www.”.
The Complainant claims that the Respondent has also attempted to register “Lazermikron” as a trademark and Turkısh country code top domain name before the Turkish Patent Institute and , but these applications have been rejected after opposition by the Complainant. B. Respondent
The Respondent states that it provides services in the laser marking and laser welding sector and is the owner of three companies operating in the same sector: LazerMikron, Mikron Endüstriyel Lazer Sistemleri Sn. ve Tic. Ltd. Şti. and Laseral Endüstriyel Lazer Sistemleri San. ve Tic. Ltd. Şti.
The Respondent further states that the Complainant Arif Çakmak was a partner at LazerMikron between 2006 and 2009, however left the company in 2009 and now is the owner of the Second Complainant, which is a rival company operating in the same sector as the Respondent. 1) Identical or Confusingly Similar
The Respondent claims that it registered the disputed domain name with the formation of the company and has been actively using it since its registration.
The Respondent avers that it decided to liquidate Lazer Mikron in 2011 and has sold certain inventories to the Complainant; however, the sale transaction did not include intellectual property of LazerMikron. The Respondent claims that the second partner of LazerMikron issued a power of attorney in favor of the Complainant, and the Complainant used this power of attorney to transfer LAZERMIKRON from LazerMikron to itself in bad faith.
The Respondent further claims that its trademark application filed in 2008 for LAZERMIKRON under class 7 for laser marking machines was rejected by the Turkish Patent Institute based on the fact that “lazermikron” is a generic word and the Complainant’s trademark is registered under class 40, which is not related to machinery and laser marking machines. 2) Rights or Legitimate Interests
The Respondent states that the Complainant’s trademark registration certificate shows that an application was made in 2008, and the trademark was transferred to the Complainant in 2011, whereas the disputed domain name was registered in 2006 and has been used since by the Respondent.
The Respondent claims that it has not broadcasted in its webpage any goods and services in class 40 and has only used the disputed domain name in connection with the promotion of laser marking machines; therefore the Respondent owns a negative right for the use of the disputed domain name.
The Respondent further claims that it registered the disputed domain name in 2006, two years prior to the trademark application for LAZERMIKRON, and has been using the website in good faith ever since. The Respondent states that the disputed domain name has become a domain name which the Respondent is recognized for. 3) Registered and Used in Bad Faith
The Respondent contends that the disputed domain name was registered by the Respondent in 2006, and since then, the Respondent has paid all renewal fees with respect to the disputed domain name. The Respondent further contends that LAZERMIKRON did not belong to the Complainant at the time the disputed domain name was registered.
The Respondent states that it has been operating LazerMikron for the past five years and has been recognized with this commercial title. The Respondent further states that the Complainant is not the previous registrant of the disputed domain name and that there is no document evidencing that the Complainant used or made payments for the disputed domain name.
The Respondent claims that the Complainant registered LAZERMIKRON in its name in bad faith and now is attempting to take the disputed domain name in an unfair manner in order to gain commercial benefits from the recognition of the disputed domain name. 4) Reverse Domain Name Hijacking
The Respondent claims that the Complainants have initiated this domain name dispute resolution proceedings in bad faith. C. Complainants’ Supplemental Filing
The Complainant stated in its supplemental filing that the Respondent has attempted to mislead the Panel with allegations which must also be considered as bad faith indications. The Complainant states that 1) the Respondent is not one of the founding partners of LazerMikron; 2) the Complainant is the founder of LazerMikron and the Second Complainant, which bought LazerMikron in 2011 together with all intangible assets, intellectual property rights, domain names and has the requisite power of attorney and agreements to take all legal actions as evidence in the annexes; 3) Trademark Assignment Agreement and its execution before the Turkish Patent Institute disproves the Respondent’s fraudulent representations.
The Complainant contends that conflicts on the validity of power of attorney provided to the Complainant, the Trademark Transfer Agreement and assignment of LAZERMIKRON are matter which must be challenged before courts in accordance with Turkish law.
The Complainant further contends that all partners of LazerMikron, including the Respondent agreed to the sale of LazerMikron to the Second Complainant, and as a result, LazerMikron entered liquidation proceedings. The Complainant avers that the Trademark Transfer Agreement not only transfers LAZERMIKRON but also related rights such as domain names.
The Complainant rejects reverse domain name hijacking allegations and states that it has rights in LAZERMIKRON which eliminates bad faith allegations that must be proven by the Respondent. D. Respondent's Supplemental Filing
The Respondent states that the Complainant was one of LazerMikron’s shareholders in 2006 who sold his shares in 2009 and has not had had any legal bond with the company since. The Respondent further states that it has been the legal owner of LazerMikron since 2009.
The Respondent asserts that the Complainant is intending to misdirect the Panel in bad faith by changing the wordings of their Response.
The Respondent further asserts that the WhoIs screenshots provided by the Complainant as a proof of prior registration in their own name cannot be confirmed and the fact that the Complainant accuses the Respondent of theft without any proof indicates bad faith.
The Respondent claims that it decided to liquidate LazerMikron and sold certain inventories to the Complainant. The Respondent further claims that a power of attorney was issued in favor of the Complainant in order to expedite the liquidation proceedings, which was then used by the Complainant to register LAZERMIKRON in his own name.
The Respondent states that it uses the disputed domain name in its invoices and other material, it has become known by it, and it has made the necessary payments for the maintenance of the disputed domain name. The Respondent repeats its reverse domain name hijacking claims and requests the denial of the Complaint. 6. Discussion and Findings
The Complainant and the Respondent have filed supplemental filings. The Panel has sole discretion to decide whether or not to consider supplemental filings under the Rules, paragraph 10(d). Both Parties sent their supplemental filings and have had their fair opportunity to present their case. The Panel has, therefore, decided to accept the supplemental filings of the parties and to take them into consideration when rendering its Decision.
The Panel now turns to the merits of the case. Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be transferred to the Complainant:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) 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 simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. The Panel is satisfied that the Complainant is the owner of the trademark LAZERMIKRON as evidenced in the annexes to the Complaint.
While not dispositive under the first element, the Panel notes the Complainant has registered the domain name incorporating its trademark LAZERMIKRON on April 27, 2011.
Registration for LAZERMIKRON postdates the registration of the disputed domain name; however, the question of priority of the Complainant’s trademark rights is not an issue to be dealt with under paragraph 4(a)(i) of the Policy; Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827; Reckitt Benckiser Plc v. Eunsook Wi,WIPO Case No. D2009-0239.
In relation to the disputed domain name , the Panel finds the addition of the “.com” extension is 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). It has been stated in several decisions by other 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 (Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. Moniker Privacy Services / Kemal Demircioglu,WIPO Case No. D2010-1941; Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works,WIPO Case No. D2005-0941). The Panel recognizes the Complainant’s rights and concludes that the disputed domain name is identical and confusingly similar with the Complainant’s LAZERMIKRON 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 a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name (Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once the Complainant establishes a prima facie case, the burden of production shifts to the Respondent to rebut the Complainant’s claim. The Policy at paragraph 4(c) provides various ways in which the Respondent may demonstrate its rights or legitimate interests in the disputed 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 has never granted the Respondent a license or permission to use the mark LAZERMIKRON and that the disputed domain name was first registered with the registrar on September 9, 2006 by the Complainant. Moreover, Complainant asserts that the Respondent does not have any rights or legitimate interests in the disputed domain name as the Respondent has no registered trademarks or service marks for “Lazermikron” and there is no common knowledge that the Respondent is known by the disputed domain name. Furthermore, the Complainant submits that the Respondent has no legitimate non-commercial or fair use of the disputed domain name.
Thus, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent to counter the same.
The Respondent contends that it registered the disputed domain name in 2006, two years prior to the trademark application for LAZERMIKRON and has been using the website in good faith ever since. According to the information provided by the Registrar, the disputed domain name was not registered by the Respondent in 2006 but was transferred to the Respondent on December 11, 2009. Therefore, the Respondent’s claims with respect to registering and using the disputed domain name since 2006 are false.
LazerMikron is currently under dissolution proceedings and certain assets of the company have been transferred to the Complainant. Together with these assets, LazerMikron has also sold its rights in LAZERMIKRON to the Complainant. Currently, the disputed domain name resolves in a webpage promoting Laseral Endüstriyel Lazer Sistemleri, a competing company owned by the Respondent established in January 14, 2011. The Panel is of the opinion that there are no legal grounds for the Respondent, as the shareholder of LazerMikron, to first sell LAZERMIKRON and then start using the disputed domain name which is identical to the transferred trademark in connection with a competing business.
The Respondent further contends that the disputed domain name has become a domain name which the Respondent is recognized for. The Respondent states that it uses the disputed domain name in its invoices and other material, it has become known by it, and it has made the necessary payments for the maintenance of the disputed domain name. The Panel evaluates that using the disputed domain name in invoices and other material are not sufficient to prove that there is common knowledge that the Respondent is known by the disputed domain name.
As discussed, there is no evidence that the Respondent has made any effort or has any intention to use the disputed domain name for any purpose or legitimate activity consistent with having rights or legitimate interests under the Policy. 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) of the Policy 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 a right or legitimate interest in the disputed domain name. The Respondent has not provided evidence of its rights or legitimate interests in the disputed domain name. The Panel, therefore, concludes that the Respondent has not satisfied paragraph 4(c) of the Policy and 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 online 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 initial registration of the disputed domain name predates the registration of the trademark LAZERMIKRON. However, it is established in prior UDRP decisions that there are many exceptions to the general statement, that bad faith is not likely to be found when a Complainant relies on a trademark that did not exist at the time a disputed domain name is registered when seeking to make use of the Policy (General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845). Further, the disputed domain name was not initially registered by the Respondent, and the registration of LAZERMIKRON predates the transfer date of the disputed domain name to the Respondent in 2009.
The disputed domain name was registered in 2006, and the trademark LAZERMIKRON was initially registered in 2008 by LazerMikron. Therefore, both the registered trademark and the disputed domain name predate the Respondent’s presence in LazerMikron. The Complainant has submitted a Trademark Transfer Agreement, which was executed before the Turkish Notary Public for the transfer of LAZERMIKRON. This has been accepted as a valid agreement by the Turkish Patent Institute, and the Institute has transferred the trademark LAZERMIKRON to the Complainant in its records. Furthermore, the Complainant has registered before , which has strict proof requirements for registration. The fact that the Turkish Patent Institute and have made these registrations is sufficient proof for the Panel, and any claims of the Respondent regarding the validity of this agreement and the trademark transfer must be brought to the relevant courts.
The Panel is satisfied that LAZERMIKRON was transferred to the Complainant from company LazerMikron with a valid trademark transfer agreement and infers bad faith from the fact that the Respondent transferred the disputed domain name to itself. Further, the false or misleading statements made by the Respondent with respect to registering and using the disputed domain name since 2006 also strengthen the Complainant’s bad faith claims (Advanced Internet Technologies, Inc. v. AIT, Inc.,WIPO Case No. D2000-0597 (“combined with the apparently false or misleading statements made by Mr. Lee in his response lead to the conclusion that Respondent is engaged in a scheme to disrupt Complainant’s business by preventing Complainant from using its name and mark as a domain name”)).
Furthermore, the disputed domain name resolves to a website promoting the Respondent’s other company Laseral Endüstriyel Lazer Sistemleri, offering competing products and services. The fact that the Respondent uses the disputed domain name, identical to the Complainant’s trademark, to promote its own competing business suggests that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services,WIPO Case No. D2000-0177 (“the evidence filed indicates that the Domain Name has been used to host a website offering competing products to those offered by the Complainant. In the absence of any contradiction, this suggests that the Respondent registered the Domain Name with the primary intention of disrupting the business of a competitor, as contemplated by para[graph] 4(b)(iii) of the Policy”).
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. D. Reverse Domain Name Hijacking
The Panel has found in favor of the Complainant on all three elements of the Policy; therefore, the Respondent’s request for a finding of reverse domain name hijacking is also denied. 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: October 9, 2013
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