The Complainant is Vakko Holding Anonim Şirketi of Istanbul, Turkey, represented by AYDIN & AYDIN Law Firm, Turkey.
The Respondent is G & R International of Ridgefield, New Jersey, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2013. On November 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 received an informal email communication from the Respondent on December 16, 2013. The Center acknowledged its receipt on December 17, 2013.
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 December 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of the panel appointment process on January 7, 2014.
The Center appointed George R. F. Souter as the sole panelist in this matter on January 15, 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 is a well-known Turkish fashion house, whose product range includes the sale of jewellery (also spelled jewelry).
Details of extensive trademark registrations of the Complainant’s VAKKO trademark in Turkey have been supplied to the Panel (by way of illustration, registration no. 105964 of October 12, 1988).
The disputed domain name was registered on December 25, 2007. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its VAKKO trademark, which is extensively protected by trademark registration in Turkey, and which is well known in Turkey.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name, in particular that the Respondent is not commonly known by the disputed domain name and the Complainant has not licensed or otherwise permitted the Respondent to use its trademark VAKKO, whose use dates back to 1934, or to apply for or use any domain name incorporating this mark.
The Complainant alleges that the disputed domain name was registered in bad faith, and is used in bad faith in connection with the website operated under the disputed domain name, which relates to the sale of jewelry. B. Respondent
The Respondent did not reply to the Complainant’s contentions, apart from a request to receive communications in Turkish. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant or be cancelled:
(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. A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a domain name. The Panel agrees with this view and considers the gTLD indicator “.com” to be irrelevant in the present case.
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that the mere addition of a non-distinctive descriptive word to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity. In the circumstances of the present case, the Panel finds that the word “jewelry” is such a non-distinctive descriptive word and, accordingly, finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy provided the respondent does not come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that the Respondent has no rights or legitimate interests in the disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. Here the disputed domain name incorporates the Complainant’s VAKKO trademark together with the term “jewelry”. The Panel regards the circumstances of the present case (noting also the use to which the disputed domain name has been put as described below), in which, in the Panel’s view, the disputed domain name was deliberately “engineered” to compete unfairly with the Complainant, as making it appropriate for the Panel to find that the disputed domain name was registered in bad faith, and the Panel so finds.
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that the use of a website operated under a disputed domain name to potentially divert customers of a complainant to competitors constitutes use in bad faith. The Complainant has drawn the Panel’s attention to the website operated under the disputed domain name, which is used to offer for sale jewellery (or jewelry) products which appear to be third party products, the language of the website being Turkish. The Panel accordingly finds, in the specific circumstances of the present case, that the disputed domain name is being used in bad faith. The Panel, therefore considers that the Complainant has satisfied the dual test of 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.
George R. F. Souter
Sole Panelist
Date: January 29, 2014
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