The Complainant is Teleperformance of Paris, France, represented by Inlex IP Expertise, France.
The Respondent is Kagan Brown of Utah, the United States of America, self-represented. 2. The Domain Names and Registrar
The disputed domain names , ,
are registered with Moniker Online Services, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2015. On February 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 9, 2015, 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 February 15, 2015, the Center received an informal email communication from the Respondent. On February 20, 2015, the Center received the Complainant's request for continuation of proceeding. On February 24, 2015, the Center received the Complainant's confirmation regarding the Registrar's address.
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 February 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2015. On March 9, 2015, the Center received the Complainant's supplemental filing. On March 11, 2015, the Center received the Respondent's comments regarding the supplemental filing. On March 15, 2015, the formal Response was filed with the Center.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on March 26, 2015. 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 engaged in a number of lines of business, including communications services and, specifically, the operation of telephone call centers. The Complainant also provides services to obtain visas for the United Kingdom of Great Britain and Northern Ireland through its group companies. The Complainant is the owner of the registered trademarks TELEPERFORMANCE in many countries. A list of these trademark registrations was attached to the Complaint.
The disputed domain names were registered on February 14, 2014.
The Panel visited the disputed domain names on April 17, 2015, and observed that the disputed domain names are used in connection with Turkish-language websites offering services for preparation and granting visas for the UK. The websites include the following disclaimer: "designed to provide public information on the UK visa applications, this web site does not belong to Teleperformance Ltd". 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.
The Complainant asserts that it was founded in 1978 and is a worldwide leading provider of outstanding customer experience in the field of call center activities. It operates 98,000 computerized work stations across 270 contact centers in 62 countries, conducting programs in more than 66 different languages and dialects on behalf of major international companies operating in various industries. The Complainant operates also in visas delivering through one of the companies of the group.
The Complainant asserts that UDRP panels have previously recognized that the company and its name Teleperformance are well known. The Complainant asserts that the adjunction of the suffix "izmir", "vize" and "ingilterevizesi" is not sufficient to exclude the confusingly similarity with the rights of the Complainant since the terms are not distinctive.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. There is no business relationship between the Complainant and the Respondent. The Complainant asserts that the Respondent has no trademarks rights on the sign TELEPERFORMANCE.
The Complainant asserts that the disputed domain names were registered and are being used in bad faith because Respondent could not have ignored the existence of the Complainant's company and its websites in registering the disputed domain names, keeping in mind the notoriety of the Complainant and the prior recognition that its company name and trademark are well known.
The Complainant asserts that its trademark TELEPERFORMANCE is arbitrary and distinctive to designate its activities. The Complainant asserts that its IP attorney sent a communication by e-mail to the Respondent, informing the Respondent that the disputed domain names constitute a counterfeit of Complainant's rights and a cybersquatting infringement.
The Complainant asserts that the Respondent is clearly taking advantage of TELEPERFORMANCE's reputation and private rights to make undue profit, to the detriment of the Complainant. The Complainant asserts that this fraudulent use of the name Teleperformance associated with the registration of the disputed domain names, has been made without any bona fide and is highly fraudulent. B. Respondent
The Respondent filed a Response to the allegations in the Complaint and requests the Panel to deny the remedy requested, namely transfer of the disputed domain names to the Complainant.
The Respondent claims to be a webmaster assisting companies. The Respondent claims to assist Denver Ltd company which appears to be a Turkish company offering "visa consulting and translation services" for Turkish citizens in their visa application for the UK, US and Europe.
The Respondent asserts that the mark TELEPERFORMANCE is associated with the operation of UK visa applications with a special contract signed between the UK Government and the Complainant, and that the Complainant does not provide UK immigration law practice through their visa application centers. Therefore the Respondent asserts that the Complainant does not provide the same services as the Respondent. The Respondent's consumers must get their service from the UK visa application centers operated by the Complainant. Therefore the Respondent's services are not only different from what the Complainant can provide to the same consumers but also preliminary. Moreover, the websites at the disputed domain names warn their visitors with a disclaimer to prevent any confusion.
Furthermore, the Respondent claims a fair and nominative use of "Teleperformance". The Respondent asserts that "Teleperformance" is nominally used to describe the advisory services of Denver Ltd, that such a use of the Complainant's trademark would not imply sponsorship or endorsement with the Complainant's services because they are used only to describe Denver Ltd.'s services. The Respondent also claims that the disputed domain names contain only the trademarked words, and not the distinctive font or symbols associated with the Complainant's trademark.
The Respondent claims that a careful consumer exercising ordinary caution will easily understand the disputed domain names are not the domain names of the Complainant and that the services offered by the Respondent on its websites are not the same services as the Complainant's services.
The Respondent asserts that the Complainant's affiliates started doing business in Turkey in April 2014 whereas the disputed domain names were registered in February 2014. The Respondent asserts that the Complainant's logos, distinctive fonts or lettering, style or color scheme are not used in the websites at the disputed domain names.
The Respondent asserts that the disputed domain names have not been registered and used in bad faith. 6. Discussion and Findings
With respect to the Complainant's and the Respondent's supplemental filings through informal emails, the Panel has sole discretion to decide whether or not to consider supplemental filings under the Rules, paragraph 10(d). Due to the absence of exceptional circumstances in this case, the Panel has, therefore, decided not to accept the supplemental filing of the parties.
The Panel turns to the merits of the case, paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be transferred to the Complainant:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
Pursuant 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. A. Identical or Confusingly Similar
The Policy simply requires the Complainant to demonstrate that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark TELEPERFORMANCE as evidenced in the annexes to the Complaint.
The Panel is of the opinion that the addition of the Turkish words "vize" and "ingilterevizesi" (which mean "visa" and "British visa") and geographical indicators such as "izmir", which is a city in Turkey, or its neighborhoods, does not negate the confusing similarity between the Complainant's trademarks and the disputed domain names. "On the contrary, the nature of the generic terms used would tend to reinforce consumers' erroneous conclusion that the websites to which the disputed domain names resolve are somehow legitimately included in the supply and service system established by the Complainant", Aktiebolaget Electrolux v. Ibrahim Yurtcu, WIPO Case No. D2013-0796.
The Panel further finds that the addition of gTLDs such as ".com" may be disregarded when determining whether the disputed domain names are 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 decisions by other UDRP panels that the incorporation of a trademark in its entirety into a domain name may often 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 trademark rights and concludes that the disputed domain names are confusingly similar with the Complainant's TELEPERFORMANCE trademarks.
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), the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names. 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 the disputed domain names, 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.
Pursuant to paragraph 4(c) of the Policy, the Respondent may exhibit that it has rights or legitimate interests in the domain name by showing one or more of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent's 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the disputed domain name, the Complainant will have failed to discharge its onus and the Complaint will be dismissed.
The Complainant submits there is no business relationship between the Complainant and the Respondent and that the Respondent has no trademark registrations or applications for TELEPERFORMANCE according to a search on the US, WIPO, and OHIM trademark databases.
This Panel finds that the Complainant has established a prima facie case that the Respondent lacks a right or legitimate interest in the disputed domain names.
While the Panel notes that the Respondent claims to offer services which are not similar to the Complainant, this Panel finds that both services are in the area of obtaining visas for the UK and are therefore strongly connected, and the Panel finds that the Respondent has not submitted convincing evidence of why he had to register domain names containing the Complainant's trademark to provide his services.
The Respondent further asserts that his use of the Complainant's trademark TELEPERFORMANCE may be permitted as a nominative or descriptive fair use for visa services. However, the Respondent's services can be readily identified without using the Complainant's trademark as domain names, and such use of the Complainant's trademark would likely create a false impression of sponsorship or endorsement by the Complainant.. The Panel finds that the Respondent has not provided evidence of its rights or legitimate interests in the disputed domain names. The Panel, therefore, concludes that the Respondent has not satisfied paragraph 4(c) of the Policy and concludes that the Respondent has no rights or legitimate interests in the disputed domain names.
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 names have been registered and are 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 on-line 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 TELEPERFORMANCE was registered and used before the Respondent's registration of the disputed domain names and the reputation of the Complainant's trademarks TELEPERFORMANCE is clearly established for visa obtaining services. Further, the disputed domain names contain the TELEPERFORMANCE trademark in its entirety. In any event, the Respondent himself admits that he was aware of the Complainant's trademark TELEPERFORMANCE at the time the disputed domain names were registered. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that here actual knowledge of the Complainant's trademarks at the time of registration of the disputed domain names is to be considered as an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226. Therefore, in these circumstances, the Panel finds that the disputed domain names were registered in bad faith.
With regard to use in bad faith, the fact that the disputed domain names include the Complainant's trademark TELEPERFORMANCE and that the websites are offering services related to the Complainant's services suggests that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites and other online location, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites (paragraph 4(b)(iv) of the Policy).
Furthermore, on the websites at the disputed domain names, there is a disclaimer noting that "designed to provide public information on the UK visa applications, this web site does not belong to Teleperformance Ltd". However, the Panel is in the opinion that the likelihood of such confusion is not removed by the disclaimer that appeared on the Respondent's website. As noted in paragraph 3.5 of the WIPO Overview of WIPO Panel Views Selected UDRP Questions, Second Edition, the consensus view of panelists is that: "The existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. […] A disclaimer can also show that the respondent had prior knowledge of the complainant's trademark." The Panel also notes that while the Turkish version of the website includes the disclaimer, the English version does not. Furthermore, the Panel finds that the disclaimer is not sufficiently clear and prominent in this case.
After examining all circumstances surrounding the registration and use of the disputed domain names, the Panel finds that the Respondent registered and is using the disputed domain names 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 names, , and be transferred to the Complainant.
Gökhan Gökçe
Sole Panelist
Date: April 28, 2015
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