The Complainant is Edenred of Malakoff, France, represented by Dreyfus & associés, France.
The Respondent is Armada Uluslararasi Interaktif Medya of Ankara, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with Nics Telekomünikasyon Ticaret Ltd. Şti. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2014. On May 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2014, 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 May 23, 2014, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On May 27, 2014, 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 both English and Turkish, and the proceedings commenced on June 4, 2014. On the same date, the Center informed the parties that, given the provided submissions and circumstances of this case, it would: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Turkish; 3) appoint a Panel familiar with both languages mentioned above, if available. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2014.
The Center appointed Selma Ünlü as the sole panelist in this matter on June 30, 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 invented the “Ticket Restaurant” meal voucher and conducts business in prepaid corporate services. The Complainant is the first international prepaid voucher company in Turkey and active since 1992. The Complainant operates in 41 countries, with more than 6,000 employees, nearly 640,000 companies.
The Complainant has registered EDENRED originated trademarks since 2010 before the Turkish Patent Institute such as EDENRED trademark numbered 2010/41620 of September 26, 2011, E EDENRED FOR AN EASIER LIFE device trademark numbered 2010/72357 of April 26, 2012, E. EDENRED device trademark numbered 2010/71550 of January 1, 2012.
The Complainant has websites under the domain names registered on May 4, 2010 and registered on September 2, 2010.
The Respondent registered the disputed domain name on January 3, 2014, which does not resolve to an active webpage.
The Complainant sent a cease and desist letter to the Respondent via email and registered mail on February 18, 2014. The Respondent did not respond to the Complainant’s letter. 5. Parties’ Contentions A. Complainant
The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:
i. The disputed domain name is identical or confusingly similar to a trademark 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;
iii. The disputed domain name was registered and is being used in bad faith. (i) Identity or Confusing Similarity
The Complainant submits that the Respondent has registered the disputed domain name to cause confusion among Internet users between the disputed domain name and the Complainant’s websites.
The Complainant submits that the addition of the term “is yerleri” as a suffix to the EDENRED trademark does not prevent the confusing similarity between the disputed domain name and the Complainant’s mark. The Complainant states that “isyerleri” means “establishments” in Turkish and such wording may lead the consumers to be confused by the similarity between the disputed domain name and the Complainant. At this point, the Complainant refers to Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2010-1059.
Accordingly, the Complainant argues that the consumers might believe that the disputed domain name will lead them to a website operated by the Complainant or its affiliates. (ii) Rights or Legitimate Interests
The Complainant asserts that the Respondent has no relationship with or authorization from the Complainant to use the EDENRED mark in any domain name, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has not been commonly known by the disputed domain name.
The Complainant also states that the Respondent has used the EDENRED mark to create the impression that it is associated with the Complainant and cannot prove that the disputed domain name has been used for a legitimate activity. (iii) Registered and Used in Bad Faith
The Complainant alleges that the Respondent has registered the disputed domain name in bad faith because it was registered with the knowledge of the Complainant’s rights in the EDENRED marks. The Complainant states that it was inconceivable that the Respondent was unaware of the Complainant’s trademarks as they are well-known in Turkey and worldwide.
The Complainant states that the selection of the disputed domain name, which wholly incorporates the EDENRED mark, cannot be a coincidence as “Edenred” is not a descriptive or generic term. The Complainant submits that the registration of a well-known mark, like EDENRED, as a domain name by an entity that has no relationship with the mark suggests opportunistic bad faith.
The Complainant argues that even a quick EDENRED search would reveal the Complainant and its registered trademarks.
Lastly, the Complainant states that non-use of the website under the disputed domain name constitutes the lack of legitimate interests in the disputed domain name and suggests evident bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceedings
The disputed domain name’s registration agreement is in Turkish and pursuant to the Rules, paragraph 11(a), 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. However, the Complainant submitted arguments along with the Amended Complaint as to why the proceedings should proceed in English. The purpose of paragraph 11(a) of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
Given the provided submissions and circumstances of this case, the Center has notified the parties that it would proceed as follows:
1) accept the Complaint as filed in English;
2) accept a response filed in either Turkish or English;
3) appoint a panel familiar with both languages mentioned above, if available.
The Center also notified the parties that the power to decide the language of the proceedings lay with the panel to be appointed. The Center thereafter proceeded to issue its case-related communications to the parties both in English and Turkish.
The Complainant has submitted its Complaint and supporting evidence in English and, therefore, if the Complainant were required to submit all documents in Turkish, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11(a) of the Rules, that English shall be the language of administrative proceedings in this case.
At this point, the Panel refers to Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park,WIPO Case No. D2003-0989, Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679, Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, and is of the opinion that both parties have been given a fair opportunity to present their case and there can be no unfairness to the Respondent given the fact that the Center proceeded to issue its case-related communications to the parties both in English and Turkish. The Panel finds that in the circumstances of this case, paragraph 11(a) of the Rules is best served by allowing the proceedings to be conducted in English. 6.2 Substantive Elements of the Policy
According 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.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(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.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all of these requirements are fulfilled. A. Identical or Confusingly Similar
The first element under the paragraph 4(a)(i) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights.
First of all, previous UDRP panels have found that generally the generic Top-Level Domain (“gTLD”) does not have any distinguishing significance under the Policy and does not typically remove the likelihood of confusion between a trademark and a domain name incorporating said trademark. See, Orbis Holdings Limited v. Lu A Feng (First Respondent) and Orbis Search (Second Respondent),WIPO Case No. D2007-0515. Therefore, the Panel is of the opinion that the gTLD suffix “.com” has no significance under this element.
The Panel considers that the Complainant has clearly established its rights in the EDENRED trademarks as evidenced by the trademark registrations submitted with the Complaint. The Complainant has had a trademark registration for the “edenred” term in Turkey since 2010, well before the registration date of the disputed domain name.
In relation to the incorporation in the disputed domain name of the generic or descriptive indicator “is yerleri” which means “establishments” in Turkish, the Panel finds that the inclusion of such term together with a trademark does not contribute to distinguishing the disputed domain name from the Complainant’s trademark.
Numerous prior decisions under the Policy have held that the mere addition of a descriptive term to a mark does not negate the confusing similarity between the mark and the domain name. See e.g. Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437 where the panel stated that “the addition of the characters “-korea” does not prevent the domain name from being confusingly similar to the Complainant’s trademark. Internet users would be confused into thinking that the domain name was associated with the Respondent, and in particular with the business of the Respondent in Korea.”
Therefore, the Panel finds that due to the high distinctiveness of the EDENRED trademark of the Complainant, the addition of the merely generic or descriptive indicator “is yerleri” in the disputed domain name does not avoid a finding of confusing similarity in this case.
Hence, the Panel is of the opinion that the requirement of paragraph 4(a)(i) of the Policy is met by the Complainant. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] 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 burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above circumstances, demonstrate its rights or legitimate interests in the disputed domain name.
In the light of the evidence submitted, e.g., trademark registration certificates, domain name registrations, etc., it is clear to the Panel that the Complainant has earlier rights in the EDENRED trademark. Therefore, the Panel finds on the current record that the Complainant has proved rights in the EDENRED trademark and also established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of the Policy. The Complainant has not granted the Respondent any right or license to use the EDENRED trademark and the Respondent is not an authorized provider for EDENRED services.
Consequently, in the absence of a response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the EDENRED mark in the disputed domain name.
Hence, the Panel finds that the Complainant has made out its prima facie case, and the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy. Moreover, the Panel has not found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, therefore the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name’s registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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.
By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the trademark EDENRED, as well as its extensive and intensive usage, the Respondent, who appears to be located in Turkey where the Complainant has a recognition, was aware of the Complainant and its EDENRED trademark at the time of registration of the disputed domain name. See e.g., Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087. Referring to Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith registration.
Moreover, the Panel notes that:
(i) the Respondent did not submit any response and is in default;
(ii) the Complainant’s trademark has a strong reputation and is well-known worldwide, including in Turkey; and
(iii) the disputed domain name leads to an inactive website.
In light fo the submitted evidence, the Panel is convinced that the Respondent has passively held the disputed domain name and is engaging in no activity. “Passive holding” has been accepted as a sufficient bad faith indicator in a number of UDRP cases. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003
Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under 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 cancelled.
Selma Ünlü
Sole Panelist
Date: July 14, 2014
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