The Complainant is Nilfisk-Advance A/S of Broendby, Denmark, represented by Horten Law Firm, Denmark.
The Respondent is Domain Admin of Queensland, Australia / MUSTAFA OVALI of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with FBS Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2014. On September 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 23, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 24, 2014.
The Center verified that the Complaint and amendment to 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”).
On September 23, 2014, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On September 24, 2014, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
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 October 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2014.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on November 5, 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 Danish producer of cleaning equipment founded in 1906, known for its scrubber dryers, sweepers, vacuum cleaners and high pressure washers.
The Complainant has registered trademarks worldwide comprising the wording “Nilfisk”; including NILFISK with registration no. 95012 and application date December 26, 1996 before the Turkish Patent Institute. In addition, the Complainant has registered the domain name on May 5, 1997.
The disputed domain name was registered on January 5, 2013. The Panel visited the disputed domain name on November 18, 2014, and observed that the disputed domain name is inactive. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the disputed domain names be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy. Identical or Confusingly Similar
The Complainant states that it holds the exclusive right to the registered trademark NILFISK and related trademarks.
The Complainant asserts that the disputed domain name only differs from the Complainant’s registered trademark with the addition of the words “teknik” and “servis” and thus is confusingly similar to the Complainant’s trademark. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests with regard to the disputed domain name as the Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use its trademark NILFISK.
Further, the Complainant asserts that there is no legitimate use of a domain name because the use of the disputed domain name is to confuse consumers by indicating an affiliation with the Complainant in order to direct Internet traffic to the Respondent’s webpage. As evidence, the Complainant submits screenshots from the Respondent’s webpage associated with the disputed domain name, which shows that the Respondent used the Complainant’s trademark for promotion of services related to the Complainant’s products. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks. The Complainant further contends that the Respondent is wrongfully creating an impression that it is offering products and services associated or affiliated with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceedings
Under paragraph 11(a) of the Rules, 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. In the present case, the language of the Registration Agreement is Turkish.
The Complainant submitted its Complaint in English and requested the language of the proceedings to be English. The Respondent has not submitted any comments in this regard despite having been given the opportunity. The Center notified the commencement of the administrative proceeding in both English and Turkish. In the circumstances, and taking into account the Respondent’s default, the Panel concludes that, in accordance with paragraph 11(a) of the Rules, it is appropriate in this case to determine that the language of the proceedings be English, Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L,WIPO Case No. DRO2006-0001.
Therefore, the Panel has decided to accept the Complainant’s filings in English and issue a decision in English. 6.2. Substantive Elements of the Policy
As the Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from the Respondent’s default. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. 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 the Complainant has rights. The Panel is satisfied that the Complainant is the owner of several registrations comprising of NILFISK, including trademark registration before the Turkish Patent Institute.
The disputed domain name contains the Complainant’s trademark in its entirety and it is coupled with generic words “teknik servis”, which means “technical service” in English. The Panel is of the opinion that the addition of the generic words “teknik servis”, does not negate the confusing similarity with the Complainant’s trademark. On the contrary, the nature of the generic words used would tend to reinforce consumers’ erroneous conclusion that the website to which the disputed domain name resolves is somehow legitimately included in the supply and service system established by the Complainant under its NILFISK trademark, Aktiebolaget Electrolux v. Ibrahim Yurtcu,WIPO Case No. D2013-0796.
The Panel further finds that the addition of the generic Top-Level Domain (“gTLD”) “.com” 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 previous UDRP decisions 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, 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 confusingly similar with the Complainant’s NILFISK 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 a domain name, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. Once the Complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the Respondent.
The Policy, at paragraph 4(c), provides various ways in which the Respondent may demonstrate 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 the Respondent does not have any rights or legitimate interests in the disputed domain name as the Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use its trademark NILFISK. The Complainant alleges that the Respondent is not making a legitimate use of the disputed domain name and that the Respondent’s reason for registering the disputed domain name is to confuse consumers by indicating an affiliation with the Complainant in order to direct Internet traffic to the Respondent’s webpage.
The Respondent has failed to submit proof of any rights or legitimate interests in the disputed domain name and reply to the Complainant’s contentions. Therefore, the Panel finds that there is no evidence to suggest that the Respondent has any rights or legitimate interests in any trademarks or service marks which are identical, similar or related to the disputed domain name.
Further, although currently inactive, annexes of the Complaint show that the website associated with the disputed domain name was used for the promotion of services offered by the Respondent. 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 rights or legitimate interests 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(a)(ii) 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 Complainant’s trademark NILFISK was registered and used before the Respondent’s registration of the disputed domain name. Further, the Respondent’s website offers services related to the Complainant’s products and uses the Complainant’s trademarks. Therefore, the Respondent was aware of the Complainant’s trademark NILFISK at the time the disputed domain name was registered. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of registration of the disputed domain name is to be considered as an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226.
Further, the fact that the Respondent’s website used the Complainant’s trademark NILFISK in connection with offering services related to the Complainant’s goods and created an impression that the website and services are associated or affiliated with the Complainant, which is not the case, suggests that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and 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.
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. 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
aDate: November 20, 2014
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