The Complainant is Stertil B.V. of Kootstertille, Netherlands, represented by Deriş Avukatlık Ortaklığı, Turkey.
The Respondent is Nergis of Istanbul, Turkey, represented by Koyuncuoğlu & Köksal Avukatlık Bürosu, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2013. On December 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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”).
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 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2014. The Response was filed with the Center on January 1, 2014.
The Complainant filed a Supplemental Filing on January 15, 2014. The Respondent filed an objection to the Supplemental Filing on January 17, 2014.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 20, 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.
With regard to the Complainant’s unsolicited Supplemental Filing, in terms of paragraph 10 of the Rules the Panel enjoys a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules, provided the parties are treated fairly and the proceeding is conducted expeditiously. This extends to the decision to admit unsolicited supplemental filings where appropriate and to invite a response thereto by the other party (see NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A.,WIPO Case No. D2008-1984).
Having reviewed the Complainant’s Supplemental Filing and the Respondent’s objection thereto, the Panel determined that it would admit the said Supplemental Filing. The Panel was satisfied that the Supplemental Filing was confined to matters arising from the Response which the Panel considers could not reasonably have been in the Complainant’s contemplation when it filed the Complaint. The Respondent’s objection related to the Complainant being permitted to develop arguments against those asserted in the Response such that the equilibrium between the parties might be distorted. In the Panel’s view this objection is addressed by the Panel’s decision referred to below to allow the Respondent an opportunity to reply to the Complainant’s Supplemental Filing. The Respondent has availed itself of such opportunity and the Panel has likewise admitted the terms of the Respondent’s reply.
On January 21, 2014, the Panel issued Procedural Order No. 1 allowing the Respondent to submit, on its discretion, a response strictly relating to matters arising from the Complainant’s Supplemental Filing by January 28, 2014 and extending the due date for the Decision to February 10, 2014. The Respondent filed a Supplemental Filing on January 28, 2014. 4. Factual Background
The Complainant is a Netherlands company which can trace its history back to 1947 when the Complainant’s predecessor, a company named Stertil-Koni, began manufacturing vehicle lifts. More than sixty years later, the Complainant claims considerable experience in hydraulic lifting technology, machines, machine tools, mechanical doors, dock shelters, rolling shutters and building materials. Since 1997, the Complainant has owned a variety of registered trademarks worldwide for the device and word mark STERTIL with an emphasis on figurative marks relative to its logo which consists of the word “stertil” in stylized form incorporating an additional sweeping line curving over the top of the initial letter “s” and continuing horizontally between and above the crossbars of the two letter “t”s. While the said figurative mark has been registered in a monochrome outline format, it is clear from the website materials produced by the Complainant that it typically uses the mark in color with the word “stertil” in blue excepting the dot on the letter “i” which along with the sweep is colored in red.
The Complainant filed an international trademark registration, no. 677020 in respect of the STERTIL figurative mark described above on May 27, 1997 claiming priority in respect of a Benelux registration no. 6017003 dated January 15, 1997. The said international registration was designated in various countries including Austria, China, Czech Republic and Poland. The Complainant subsequently decided to designate Turkey in respect of the said international mark in 2008 however the application was partially refused due to a prior STERTIL trademark registered in Turkey under no. 2003/27766 dated October 15, 2003. The Turkish mark was in respect of a figurative depiction of the word “stertil” identical in all material respects to the Complainant’s figurative mark with the exception of the fact that it was in color, conform to the colors used by the Complainant together with bold red underlining. The said mark was registered by Kapı Sistemleri Mümessillik Sanayi ve Ticaret Ltd. Sti. (“Kapı Sistemleri”).
The Respondent is a private individual who is recorded as the partner and manager of Kapı Sistemleri. The disputed domain name was created on March 29, 2002. The Complainant wrote to the Respondent on March 15, 2011 indicating that the Respondent had registered the “Stertil” name in Turkey and proposing a meeting to find a solution. On March 24, 2011, the Respondent replied on behalf of Kapı Sistemleri stating that the said company sold industrial doors, loading equipment, fire doors and special doors. The Respondent added that the said company was selling sectional and special hoist-up doors under the “Stertil” brand. At some point prior to July 28, 2011, the Parties had a meeting in Turkey. On the latter date, the Complainant wrote to the Respondent referring to the said meeting and noting that it had been agreed that both the Turkish trademark and the disputed domain name would be sold to the Complainant for the sum of 5,000 EUR. On July 29, 2011, the Respondent wrote to the Complainant indicating that he had discussed the Complainant’s offer with the Respondent’s partner and making a counter-offer of EUR 100,000 in respect of the disputed domain name. He added that a Russian group had an intention to pay this amount and that “we have an agreement stage”. No further negotiations were entered into by the Parties.
On August 18 and 29, 2012, the Complainant sent a cease and desist letter to Kapı Sistemleri requesting the assignment of the Turkish trademark and the transfer of the disputed domain name. In response, Kapı Sistemleri agreed to assign the said trademark to the Complainant. A corresponding Deed of Assignment dated December 24, 2012 was entered into by Complainant and Kapı Sistemleri. Kapı Sistemleri did not agree to the transfer of the disputed domain name on the grounds that it was not registered in that company’s name and that the Complainant had no right to request a transfer from it. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to a trade mark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant claims rights in its STERTIL registered trademark which predate the creation date of the disputed domain name. The Complainant adds that the STERTIL trademark is used in the name of all of its group companies.
The Complainant submits that it has not granted the Respondent the right to use or register the STERTIL trademark in the disputed domain name. The Complainant refers to its lengthy use of the STERTIL name in commerce and to the fact that it has applied the registered mark STERTIL to its goods and services for more than 15 years. The Complainant states that the word STERTIL has a high level of originality and distinctiveness, having no meaning in any language.
The Complainant contends that the Respondent is not affiliated with the Complainant, has never been authorized to use and register the Complainant’s trademark or to seek the registration of any domain name that incorporates the Complainant’s trademark. The Complainant states that it has not licensed or otherwise permitted the Respondent to use the Complainant’s trademark or to apply for use of any domain name incorporating this. The Complainant submits that the Respondent is not known by the name of the disputed domain name and that the Respondent’s products or services have no relation to the disputed domain name. The Complainant asserts that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant adds that it is obvious due to the Complainant’s reputation that the Respondent must have been aware of the Complainant’s prior rights particularly with regard to the identical goods and services which the Respondent provided at the time of creation of the disputed domain name.
The Complainant states that the Respondent’s main purpose with regard to the disputed domain name is to gain commercial benefit from the notoriety of the Complainant’s trademark and adds that the Respondent does not appear to have any specific good faith reason to register the disputed domain name, which is identical to the Complainant’s trademark. The Complainant submits that the fact that the Respondent’s company has assigned the Turkish trademark to the Complainant is an indication that the Respondent accepts that it has no legitimate rights in the STERTIL name.
The Complainant notes that there has been no active use of the disputed domain name since its creation however contends that such “passive holding” of a domain name does not prevent panels from finding bad faith registration and use. The Complainant states that it cannot conceive of any good faith use of the disputed domain name by the Respondent and that the circumstances demonstrate a typical cybersquatting case.
The Complainant contends that the correspondence between the Parties regarding a sale of the disputed domain name constitutes circumstances indicating that the disputed domain name was registered primarily for the purpose of selling it to the Complainant or to a competitor thereof. The Complainant adds that its STERTIL trademark is registered in a wide jurisdiction particularly in Europe and in countries where the Turkish population is high.
The Complainant contends that the Respondent knew about the Complainant’s commercial activities when the disputed domain name was registered because the Respondent’s company, Kapı Sistemleri, is in a similar field of activity. The Complainant refers to a company register extract regarding Kapı Sistemleri referring inter alia to “sales, purchase, import and export of all kinds of mechanical, electronic doors and door systems”. The Complainant notes that the said company was established two days before the creation date of the disputed domain name. The Complainant also provides extracts of Kapı Sistemleri’s website showing reference to different varieties of dock shelters, which are also provided by the Complainant.
In its Supplemental Filing, the Complainant contends as follows: the Complainant notes that its STERTIL trademark was registered in Turkey under national registration no. 2008/72020. The Complainant produces product brochures in the Dutch language demonstrating the use of the STERTIL name and trademark on various goods in the 1980s and 1990s. The Complainant also produces a brochure which is distributed by its authorized distributor in Turkey and which includes a list of references of Turkish companies who have purchased and used the Complainant’s products since 2000 including in the years 2000 to 2002. The Complainant also produces copies of shipment orders which it issued in 2001 to the Turkish market.
The Complainant notes contrary to the Respondent’s submission that it did request the transfer of the disputed domain name along with the assignment of the Turkish trademark from Kapı Sistemleri per its cease and desist letter. B. Respondent
The Respondent contends that the Respondent’s registration of the disputed domain name precedes the Complainant’s trademark registrations. In support of this contention, the Respondent notes the date of creation of the disputed domain name (March 29, 2002), the date of the Complainant’s Benelux trademark registration (January 15, 1997) and the Respondent’s company’s Turkish trademark registration date (October 15, 2003).
The Respondent describes its involvement in Kapı Sistemleri as “the company in which the Respondent has certain shares”.
The Respondent argues that it is unlikely that the Complainant’s trademark could have become known worldwide in the five years between 1997 and 2002. The Respondent recites the goods and services provided by the Complainant and Kapı Sistemleri and argues that the Respondent could not have been expected to have been aware of the Complainant and its trademarks and that it is impossible for the Respondent to have had the intention to create confusion among consumers since Kapı Sistemleri does not operate in the same sector and does not compete with the Complainant.
The Respondent submits that the disputed domain name was registered to use for the legitimate interests of Kapı Sistemleri. The Respondent contends that the Complainant’s claim is barred by laches for failure to raise it until more than five years had passed since the creation of the disputed domain name. The Respondent acknowledges that the doctrine of laches is not a defense normally recognized under the Policy but argues that the extreme length of time that the Complainant waited to file the Complaint is evidence that the Complainant did not believe its claims were truly warranted. The Respondent submits that although laches does not provide a separate defense under the Policy, it may sometimes be relevant in considering whether the requirements of the Policy have been satisfied. The Respondent adds that the Complainant must demonstrate why it did not request the transfer of the disputed domain name during the process of assignment of the trademark to the Complainant.
The Respondent disputes the fact that the word “Stertil” has a high level of originality. The Respondent submits that the word has a similar sound to the word “steril” [sic] and was chosen by the Respondent with the intention of manufacturing a product related to sterilization processes by establishing a new company. The Respondent states that Kapı Sistemleri transferred the Turkish trademark “by paying every fee which has to be paid”. The Respondent notes that it has kept the disputed domain name since its plans on manufacturing the said product “are still on [its] agenda.”
The Respondent argues that the Complainant has no right to hinder the Respondent from using the word “Stertil” considering that the Respondent’s ownership of the disputed domain name and Kapı Sistemleri’s ownership of the Turkish trademark were dated long before the Complainant’s trademark application in Turkey. The Respondent states that it has no intention to create confusion with the STERTIL trademark and on the contrary registered the disputed domain name in connection with Kapı Sistemleri’s trademark. The Respondent submits that it had no obligation to be aware of the Complainant according to the principle of territoriality. The Respondent states that Kapı Sistemleri does not operate in the same field as the Complainant and adds that the Complainant is not a known company in Turkey.
The Respondent states that it is making a legitimate noncommercial or fair use of the disputed domain name and has no intention to harm the Complainant’s interests, which is demonstrated by its not registering the domain name with the Netherlands country code extension. The Respondent asserts that its web searches demonstrate that an Internet user seeking the Complainant will not be likely to land at the Respondent’s website.
The Respondent contends that there is no evidence demonstrating the Respondent’s bad faith in registering the disputed domain name. The Respondent asserts that the registration is not in bad faith because the Respondent could not have contemplated the Complainant’s then non-existent right. The Respondent explains that it registered the disputed domain name in connection with the preparations for the registry application of Kapı Sistemleri’s “Stertil” trademark. The Respondent notes that the assignment of such trademark to the Complainant does not indicate that the Respondent accepts it has no legitimate rights in the “Stertil” name.
The Respondent argues that the Complainant cannot demonstrate passive holding for the eleven years following creation of the disputed domain name. The Respondent notes there is no legal obligation requiring the Respondent to use the website actively for the entire time the disputed domain name is under its possession. The Respondent notes that the existence of passive holding does not require panels to find bad faith but that all the circumstances of the case should be considered.
The Respondent states that competition between the Parties is limited and that there is no obvious imitation by the Respondent of the Complainant’s website, no diversion of customers and no evidence that such diversion would be likely on the Internet. With regard to the alleged offer of sale of the disputed domain name, the Respondent states that the first offer to purchase the disputed domain name was made by the Complainant. The Respondent submits that its purpose in mentioning the dialog with a Russian group was to inform the Complainant of the issue and contends that neither this nor the counter-offer may be considered as evidence of bad faith.
The Respondent opposes and denies the Complainant’s assertion that the Respondent ought to have known of the Complainant’s STERTIL mark because it is registered in a wide jurisdiction including countries with a high Turkish population and adds that if this statement were true then all European trademarks would be deemed known by people in Turkey due to receipt of information from relatives in Europe.
The Respondent notes the Complainant’s contention regarding the fact that Kapı Sistemleri and the Complainant both sell dock shelters but states that this fact does not demonstrate that all of their respective commercial activities are identical.
In its Supplemental Filing, the Respondent contends as follows: the Respondent notes that it does not object to the long-standing existence of the Complainant but states that the Complainant has failed to demonstrate that its trademark is known in Turkey and that insufficient evidence has been produced. In particular, the Respondent submits that distribution of the Complainant’s products in Turkey would be a natural course of events but that the materials submitted in evidence do not demonstrate that the STERTIL trademark is known to Turkish consumers. The Respondent states that the date of registration of the Complainant’s Turkish trademark no. 677020 is February 2, 2010 and that the Complainant is unlikely to have become known in Turkey in the intervening three year period.
The Respondent notes that the Complainant’s distributor’s materials are of a marketing nature and that the accuracy of the information provided therein can be questioned. The Respondent notes that the reference list of companies therein is not dedicated to companies who bought the Complainant’s products as the Complainant’s distributor represents five different companies from Europe. The Respondent asks that the brochures be disregarded as “they lack value of a decent proof”. The Respondent objects to the identification of Kapı Sistemleri “with [its] personality” and notes it “is not the owner but one of the shareholders of the company” and that it “owns shares of other companies in Turkey as well”.
The Respondent notes that the disputed domain name has the extension “.com” which it states has no limitation for purchase. The Respondent adds that the cease and desist letter referred to by the Complainant was addressed to Kapı Sistemleri and not to the Respondent. The Respondent asserts that the said letter consequently has no relevance and does not bind the Respondent. The Respondent requests that the Panel does not take the said letter into consideration. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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. A. Identical or Confusingly Similar
The Panel notes that the registered trademark on which the Complainant relies is figurative in nature. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) deals with the question of figurative trademarks at paragraph 1.11 under the heading “Are disclaimed or design elements of a trademark considered in assessing identity or confusing similarity?” The consensus view is given as follows:
“[…] as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trademark overall. Some panels have found it to be a matter of impression in the circumstances of each case. Where the entire textual component of a complainant's relevant trademark has been disclaimed, or the only protectable component of such mark is comprised of design elements which generally cannot be represented in the alpha-numeric string of a domain name, then (absent a showing of acquired distinctiveness through use of the relevant mark) the complainant may lack any relevant rights under the UDRP on the basis of such mark, rendering moot any assessment of the disputed domain name's identity or confusing similarity with it.”
The Panel respectfully adopts the consensus view. In the present case, the stylized and design elements are capable of being disregarded from the Complainant’s mark, leaving the dominant textual component “stertil”. There is no disclaimer of any textual component. Accordingly, disregarding the generic top level domain “.com” in the disputed domain name, the Panel finds that the Complainant’s trademark is identical to the disputed domain name.
Much has been made by the Parties of the fact that the Complainant’s international mark was not designated in respect of Turkey until 2010. This is not relevant to the issue to be considered by the Panel in terms of paragraph 4(a)(i) of the Policy. The Policy does not make any specific reference to the date on which the holder of the trademark acquired rights. However, if the mark or marks relied upon by the Complainant do not predate the date of creation of the disputed domain name the Complainant may have difficulty in proving registration and use in bad faith in terms of paragraph 4(a)(iii) of the Policy (see paragraph 1.4 of the WIPO Overview 2.0).
In these circumstances, the Panel finds that the first element under the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has made out such a prima facie case by reference to its submissions (1) that it has not licensed or otherwise permitted the Respondent to use or register its STERTIL trademark in the disputed domain name; (2) that the Respondent is not affiliated with the Complainant and has never been authorized to use and register the Complainant’s trademark or to seek the registration of any domain name incorporating the Complainant’s trademark; (3) that the Respondent is not known by the name of the disputed domain name; and (4) that the Respondent’s products or services have no relation to the disputed domain name. Accordingly the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests in respect of the disputed domain name.
The Respondent’s case concerning paragraph 4(c)(i) of the Policy is that STERTIL sounds like “steril” [sic] and that it therefore chose the name STERTIL in connection with a proposed product relative to sterilization processes which “is still on its agenda”. It is not clear to the Panel whether the Respondent intended this product to be produced by Kapı Sistemleri, however it is evident from the Respondent’s submissions that it registered the disputed domain name in connection with the preparations for the registry application of Kapı Sistemleri’s STERTIL trademark. When the use classes of that trademark are considered, it may be seen that they have no relation whatsoever to sterilization processes, given that they are concerned with metals, building materials such as cement and bricks, and items made of wood. In any event, however implausible the connection with Kapı Sistemleri’s trademark might be, the Respondent has produced no evidence whatsoever of preparations to use the disputed domain name for the purpose described. In the Panel’s mind, the key feature of paragraph 4(c)(i) of the Policy is that preparations must be “demonstrable”. This means that a respondent wishing to make a case out in terms of this paragraph must be able to make a demonstration in the form of evidence of actual preparations to use a domain name rather than, as here, relying on a mere assertion.
In addition to its case under paragraph 4(c)(i) of the Policy, the Respondent also makes a case under paragraph 4(c)(iii). In this connection, the Respondent merely asserts that it is making a legitimate noncommercial or fair use of the disputed domain name. This assertion is unconvincing when set against the Respondent’s clear and unequivocal alternative submissions either that it planned to develop a product relative to sterilization or that it registered the disputed domain name in connection with the preparations for the registry application of Kapı Sistemleri’s STERTIL trademark. In other words, on either account, the Respondent has always intended to make a commercial use of the disputed domain name.
In light of the above analysis, the Panel is not persuaded that the Respondent has made out a case that it has rights and legitimate interests in the disputed domain name in terms of either paragraphs 4(c)(i) or 4(c)(iii) of the Policy. The Panel is fortified in this view when the circumstances surrounding the creation of the disputed domain name are brought into consideration, including the registration of the Turkish trademark by Kapı Sistemleri, a company of which the Respondent is admittedly a shareholder. The Respondent is also the managing director of the company, according to the extract from the Istanbul Chamber of Commerce Data Bank produced by the Complainant.
The Turkish trademark applied for by Kapı Sistemleri in 2003 contains a figurative representation of the STERTIL mark that is identical in almost all respects (excepting the red underline) to the Complainant’s trademark. The employment of the same stylized typeface, the same design elements in the same places and the same colors as the representation used earlier by the Complainant (including for example the representation on the Complainant’s invoices dating from 2001) leaves the Panel with the strong impression that the Respondent’s company was deliberately targeting the Complainant’s mark. It would be entirely implausible to suggest that Kapı Sistemleri came up with an identical design independently and it is notable that the Respondent does not attempt any explanation in this regard other than to distance itself from the actings of its company. That the said company has now assigned this trademark to the Complainant comes as no surprise to the Panel.
As implausible as the suggestion is that the Turkish mark was arrived at independently, it is equally implausible to suggest, as the Respondent does, that the creation of the disputed domain name was a wholly independent matter. When the Chamber registration date of Kapı Sistemleri (March 27, 2002) is compared to the creation date of the disputed domain name (March 29, 2002) the proximity in time between the two events leaves the Panel in little doubt that they are intimately connected. In these circumstances, the Panel considers it more probable than not that the disputed domain name was registered as part of a scheme to take advantage of the Complainant’s rights in its STERTIL trademark. Such a purpose cannot confer any rights or legitimate interests upon the Respondent.
In these circumstances, the Panel finds that the Respondent has no rights and legitimate interests in the disputed domain name and accordingly that the second element under the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
It is generally accepted by UDRP panels that in order for a complainant to succeed under paragraph 4(a)(iii) of the Policy there must be some evidence that the respondent is targeting the complainant in some way, whether it be with intent to damage the complainant, to extract money from the complainant or to derive some unfair benefit on the back of the goodwill of the complainant. It is very unlikely that a respondent ignorant of the existence of the complainant and its trade marks can be said to have registered the domain name in question in bad faith (Kalahari, A Division Of Nasboek Ltd. (Sa) -V- Host Start Internet Services, Inc.,WIPO Case No. D2001-0992).
The primary focus of the Panel’s analysis in this section must therefore be on whether or not the Respondent may be presumed to have had knowledge of the Complainant’s rights at the date of creation of the disputed domain name. The Panel has already found, as outlined in the preceding section, that the suggestion that the Respondent’s company’s Turkish trademark was arrived at independently of knowledge of the Complainant’s trademark is wholly implausible. Given this fact, the Panel does not require to rely to quite the same extent as the Parties anticipate on the question of how well-known the Complainant was in the Turkish marketplace at the time the disputed domain name was created. Nevertheless, the Panel does find the following to be of supportive evidential value on that question. First, the Complainant has produced invoicing materials showing that it was supplying its products to the Turkish market prior to 2002; secondly, the Complainant has supplied a brochure of the Complainant’s distributor, which, while of only limited value does add some support to the invoices; and finally the Complainant has provided website printouts showing that the Respondent’s company supplied a product similar to one in the Complainant’s range.
For its part, seeking to downplay the evidential value of these elements, the Respondent produced a web search for the term “stertil” by way of illustrating that an Internet user seeking the Complainant would not be likely to land at the Respondent’s site. The Panel is not entirely sure what the Respondent intended to illustrate by this search other than the fact that the disputed domain name does not appear in the results. This is hardly surprising given that it is passively held and would not necessarily be indexed by search engines. What the search does show, however, is that searching for “stertil” even on the Turkish version of the Google search engine produces only references to the Complainant, its group companies and its Turkish distributor.
In all of these circumstances, the Panel finds that the Respondent is more likely than not to have had knowledge of the existence of the Complainant at about the time when the disputed domain name was created. The Panel notes that the Respondent seeks to rely on the separate legal status of Kapı Sistemleri to distance the registration of the disputed domain name, which was taken in the Respondent’s personal name, from the company’s activities. However, the Panel has already found that the proximity in time between the creation of the Respondent’s company and the creation date of the disputed domain name is such that it is more probable than not that these events were linked.
Two more circumstances point in the direction of a concerted plan between the Respondent and its company to target the rights of the Complainant. The first is that the Respondent’s own submissions state that the disputed domain name was registered for use “for the legitimate interests of Kapı Sistemleri”, in other words, not for any separate personal interests of the Respondent. The second is that the Respondent is much more intimately connected with Kapı Sistemleri than it would have the Panel believe. In March 2011 it was the Respondent who took it upon himself to reply on behalf of Kapı Sistemleri to the Complainant’s cease and desist letters. In that correspondence, the Respondent used a Kapı Sistemleri email address and placed a Kapı Sistemleri designation below the signature line. The Respondent also demonstrated an ability to discuss Kapı Sistemleri’s business and the circumstances of its registration of the Turkish trademark. In July 2011, the Respondent then used the same corporate email address to engage in sale negotiations regarding the disputed domain name.
The suggestion that the Respondent is merely a shareholder of Kapı Sistemleri and is distanced by the fact that it owns shares in other Turkish companies is therefore not borne out by the evidence. On the contrary, the evidence supports the notion that the Respondent is closely involved in and indeed directs that company’s activities. Even the Respondent’s own pleadings in the present matter indicate some confusion on this topic. While in some places the Respondent is stated to be a mere shareholder of Kapı Sistemleri, elsewhere it is said to have “registered and acquired [the disputed domain name] in March 29, 2002 related with the company's trademark STERTIL registered in 2003.”
In addition to the question of the Respondent’s knowledge of the Complainant’s rights, the Parties focus on the fact that the disputed domain name has been passively held during the period of its registration. The Complainant’s case is that such passive holding demonstrates use in bad faith while the Respondent argues the contrary. The Panel considers that the Respondent is correct in its submission that the existence of passive holding does not necessarily require a panel to find registration and use in bad faith and that all the circumstances of the case should be considered. On this topic, the Panel also notes the terms of paragraph 3.2 of the WIPO Overview 2.0 which states inter alia, “Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
When such circumstances are factored into the question of passive holding in the present case, the Panel considers that the inactivity of the disputed domain name since 2002 does not absolve the Respondent of a finding of bad faith use. The inescapable and central fact is that the Respondent’s company actively adopted a near identical trademark to that of the Complainant for commercial advantage. In the Panel’s view, the disputed domain name was registered contemporaneously with that activity and is still being used as part of that strategy. The fact that the disputed domain name does not point to an active website does not alter that conclusion.
In terms of the communications between the Parties, the Panel does not find it proved on the balance of probabilities that a sale to the Complainant or one of its competitors was the Respondent’s primary intention regarding the disputed domain name as anticipated in paragraph 4(b)(i) of the Policy. What is more probable, in the Panel’s mind, is that the Respondent intended to gain some form of commercial advantage by withholding the disputed domain name from the Complainant. This may also have involved the Complainant benefitting from confusion between the disputed domain name and Kapı Sistemleri’s Turkish trademark on the one hand and the Complainant’s name and mark on the other.
The Panel considers that the circumstances of this case do not fit directly and exclusively into any of the examples provided by paragraph 4(b) of the Policy. In any event, those circumstances are clearly expressed to be non-exclusive and the Panel has no hesitation in finding that the facts of this case demonstrate deliberate and intentional targeting of the Complainant's trademark rights which is capable of constituting bad faith registration and use of the disputed domain name on the part of the Respondent.
The Respondent suggests that the doctrine of laches may be relevant in considering whether the requirements of the Policy have been satisfied. As this Panel recently noted in Aktiebolaget Trav och Galopp v. Martin Vindheim / VisitEurope, WIPO Case No. D2013-1469, such defense does not generally apply under the Policy. Delay does not of itself prevent a complainant from succeeding in its complaint, provided the complainant is able to establish a case on the merits under the requisite three elements (see paragraph 4.10 of the WIPO Overview 2.0). In the present case, while it is clear that much time has passed, the Complainant has nevertheless been able to provide considerable detail regarding the circumstances in which the disputed domain name was created including such important background information as the creation of Kapı Sistemleri, contemporaneous to the registration of the disputed domain name, along with the registration of the Turkish trademark shortly thereafter. Such detail has allowed the Complainant to establish a case on the merits.
In all of the above circumstances, the Panel finds on the balance of probabilities that the disputed domain name has been registered and is being used in bad faith and accordingly that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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.
Andrew D. S. Lothian
Sole Panelist
Date: February 10, 2014
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