The Complainant is Pronet Güvenlik Hizmetleri Anonim Şirketi of Istanbul, Turkey, represented by Salih Bulut, Turkey.
The Respondent is hasan murat kayan of Istanbul, 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 November 21, 2013. On November 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 22, 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2013. The Response was filed with the Center on December 18, 2013.
On December 5, 2013, the Complainant submitted an amended Annex 5 to the Complaint. The Center acknowledged receipt of the document and indicated that it would be included in the case file for the Panel’s consideration.
The Center appointed Kaya Köklü as the sole panelist in this matter on January 6, 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.
On January 13, 2014, the Complainant filed a supplementary submission to the Center. In response to the Complainant’s additional filing, the Respondent filed a supplementary submission on January 15, 2014. The Center acknowledged receipt of the supplemental filings from the both parties, and forwarded to the Panel for its consideration.
In accordance with the Rules, paragraph 11(a), and since the parties have not agreed otherwise, the Panel finds that the language of the administrative proceedings is the language of the Registration Agreement (i.e. English). 4. Factual Background
The Complainant is a private security company, which was founded in 1995 in Turkey. It provides security services for various kinds of assets like houses, banks, museams and stores. According to the uncontested information provided in the case file, the Complainant provides its services with a team of more than 2,300 professionals and has a market share in Turkey of more than 50% in respect to turnover and number of clients.
The Complainant is the registered owner of various PRONET GÜVENTLIK word and figurative trademarks in Turkey, covering protection in particular for all kinds of security services. Its first trademark application for PRONET GÜVENLIK dates back to the year 2005.
The Complainant additionally owns and operates a website linked to the domain name since 1998.
The disputed domain name was created on October 28, 2006.
According to the current record, the Respondent is of Turkish origin and located in Istanbul, Turkey. It is undisputed that the Respondent was an employee of the Complainant between the years 1998 and 2003.
Based on the information provided by the parties, the disputed domain name has never been in active use since its registration in 2006. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant’s PRONET and PRONET GÜVENLIK trademarks as it fully incorporates the Complainant’s firm name and trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its PRONET and PRONET GÜVENLIK trademarks. The Complainant further alleges that the Respondent has never used and does not intend to use the PRONET or PRONET GÜVENLIK trademarks in connection with a bona fide offering of goods and services. It is also alleged that the Respondent has not been commonly known by the disputed domain name.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith, in particular as the Respondent must have been well aware of the Complainant and its trademarks, as the Respondent was a former employee of the Complainant before applying for the registration of the disputed domain name. B. Respondent
The Respondent requests the Complaint to be denied.
First, the Respondent argues that the Complainant’s trademark rights are valid only in Turkey and consequently “have no international validity”.
Furthermore, the Respondent argues that it “bought the [disputed] domain [name] only for personal using” and that the disputed domain name has “nothing to do with the registered brand” of the Complainant.
Additionally, the Respondent argues that the Complainant have had the chance to register the disputed domain name itself after establishing the company and starting its business as a security service provider.
Finally, it is asserted that the Complainant’s representatives have never tried to contact the Respondent to discuss any problems or views regarding the disputed domain name.
All in all, the Respondent believes that the Complainant acts in bad faith itself. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to the trademark 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may as appropriate accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
Finally, it is noted that the Panel has taken note of the WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the PRONET GÜVENLIK trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding the sign PRONET GÜVENLIK. As evidenced in the Complaint, the Complainant is the owner of several word and figurative PRONET and PRONET GÜVENLIK trademarks registered in Turkey. The first trademark application for the mark PRONET GÜVENLIK dates back to the year 2005.
Second, the Panel finds that the disputed domain name is identical to the Complainant’s trademark PRONET GÜVENLIK. The disputed domain name is an identical adoption of the registered trademark PRONET GÜVENLIK, and does not incorporate any amendments or additions.
The Panel points out that the addition of a TLD like “.com” has no distinguishing effect and, as being a prerequisite of a domain name registration, may not to be considered within the assessment of identity or confusing similarity between the disputed domain name and the trademark in question.
The Panel concludes that the disputed domain name is likely to confuse the Internet users in their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements in paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement by providing uncontested prima facie evidence that the Respondent has no trademark, valid license or any similar right to use the Complainant’s PRONET GÜVENLIK trademark in the disputed domain name.
The Panel further finds that the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In the Panel’s view, the Respondent’s defense arguments contain only general statements and have no impact on the legal assessment of the present case. Neither the allegation that the Complainant has never tried to contact the Respondent, nor the alleged failure of the Complainant to register the disputed domain name itself is relevant from a legal point of view. Trademark owners have no general obligation to contact a domain name holder prior to the initiation of legal proceedings. Additionally, trademark owners do also have no general obligation to register any or all domain names containing their trademarks.
As the disputed domain name is parked only and has apparently never been in active use so far, the Panel concludes that the Respondent is neither commonly known by the term “Pronet Güvenlik”, nor is the Respondent using the disputed domain name in a bona fide manner.
Based on the findings above, the Panel believes that in the present case the Complainant has made a prima facie case and the evidence available in the case file does not provide a basis for the Panel to find any rights or legitimate interests of the Respondent.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
First, it is undisputed that the Respondent was aware of the PRONET GÜVENLIK trademark when he registered the disputed domain name in October 2006. Between the years 1998 and 2003, the Respondent was an employee of the Complainant and, hence, certainly familiar with the company name and the trademarks of the Complainant.
The Panel is further not convinced by the Respondent’s allegation that he registered the disputed domain name for personal purposes only. The Respondent did not indicate what kind of personal purpose is meant. In the present case, the Panel can at least not image any personal purpose by the Respondent that would justify an interference with the Complainant’s trademark rights.
The Panel shares the view of the Complainant that the Respondent’s main purpose is to create a likelihood of confusion among customers and/or to tarnish the Complainant’s PRONET GÜVENLIK trademark, likely for commercial gain or any other illegitimate benefit.
For this purpose, the Respondent has not incorporated any amendments or additions to the disputed domain name compared to the trademark PRONET GÜVENLIK.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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.
Kaya Köklü
Sole Panelist
Date: January 19, 2014
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