The Complainant is SSAB Technology AB of Stockholm, Sweden, represented by Awapatent AB, Sweden.
The Respondent is emre erdem, hardox turkiye of Ankara, Turkey, represented by a Hakan Çelikal.1 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Everyones Internet, Ltd. dba SoftLayer (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2015. On April 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 21, 2015, 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 April 21, 2015 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 amended Complaint on April 22, 2015.
The Center verified that the Complaint together with the amended 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 April 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2015.
On May 12, 2015, the Center received an email communication from a Hakan ÇELİKAL claiming being the representative for the Respondent “emre erdem, hardox turkiye” and requesting an extension to file a response. On the same day, the Center acknowledged receipt of this email communication and invited the Complainant to comment on such request. On May 13, 2015, the Complainant indicated its objection to the Respondent’s extension request. On the same day, the Center informed the parties that taking into account the Respondent’s stated reasons for extension request, and considering the objection of the Complainant, the Center would grant the extension of time until May 21, 2015. On May 14, 2015, Hakan ÇELİKAL informed the Center that after analyzing the Complaint including annexes to the Complaint no response would be filed in this matter.
On May 15, 2015, a Response was filed with the Center by the privacy service employed by the Respondent.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 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 a Swedish company. It is a major manufacturer of steel and steel products and has an annual steel production capacity of 8.8 million tons. The Complainant has production plants in Sweden, Finland and the United States of America. The Complainant also has capacity to process and finish various steel products in China and a number of other countries and employs approximately 17,300 people in 50 countries. The net turnover of the Complainant in 2014 was KR (Swedish Kroner) 60 billion.
One of the Complainant’s products is described as a “wear plate” and is an especially hard form of steel, used in applications where heavy wear rates may apply, such as blades for earthmoving equipment. This product is widely used and has been very successful in the mining, infrastructure, construction and recycling sectors.
The Complainant is the owner of a number trade mark registrations for the word HARDOX in a various of countries around the world. In particular the Complainant has had a trade mark registration in Turkey, registration no. 153519, for the word HARDOX registered on the November 4, 1994.
On May 18, 2009 the Respondent registered the Disputed Domain Name.
The word “turkiye” means Turkey in Turkish.
The Disputed Domain Name is used in relation to a webpage which promotes the business of a company described as the “Nur Group” which describes itself as a “leading company in the steel sector in Turkey”. The website contains a significant quantity of material, including videos and technical data, relating to the Complainant’s Hardox product range, and other products made by the Complainant.
The word Hardox is a made up word with no separate or independent meaning apart from in relation to the Complainant or its products.
The Complainant has sent various letters of complaint to the Respondent but no reply has been received to these. 5. Parties' Contentions A. Complainant
The Complainant’s case can be summarised as follows.
a) The Disputed Domain Name is confusingly similar to the HARDOX trade mark as (i) it incorporates in its entirety Complainant’s well-known and distinctive HARDOX mark; and (ii) the combination thereof with generic terminology (the word turkiye) is insufficient to distinguish the Disputed Domain Name from the Complainant’s trade mark.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent uses the Disputed Domain Name in bad faith as the website to which the Disputed Domain Name resolves, makes use of the Complainant’s HARDOX trade mark to attract customers and offer for sale products which are not those of the Complainant. B. Respondent
As appears above an individual Hakan ÇELİKAL who claimed to represent the Respondent emre erdem, hardox turkiye informed the Center that no response would be filed by that Respondent. The Panel does not need to decide the status of this individual as it will simply treat this as a case where no Response has been filed by that Respondent.
A response was however filed on behalf of the privacy service employed by the Respondent. This Response asserted that this service was not a separate legal entity, but merely the name of the privacy protection service offered by the Registrar of the Disputed Domain Name, and that as a result there was no jurisdiction over a non-existent entity. The Response went on to indicate the Registrar acted only as an intermediary, and privacy shield provider, and had no knowledge of whatever actions the Respondent had taken with regard to the Disputed Domain Name. The privacy service requested the Panel to make clear in its decision that this service and/or the Registrar had not engaged in any behaviour that was abusive within the meaning of the Policy. It also indicate that it took no position on whether or not an order for transfer was appropriate but indicated it would comply with any order that was made. 6. Discussion and Findings Preliminary Matters
The Panel notes this is a case where the Respondent has employed a privacy or proxy registration service. The Policy and Rules do not contemplate the use of privacy or proxy registration services per se, nor provide express guidance on the issue. The Rules define the respondent as the holder of a domain name registration against which a complaint is initiated. The Rules also give the panel power to conduct proceedings in such manner as it considers appropriate in accordance with the Policy and the Rules.
The approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9, in such cases is as follows “[m]ost panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant”. Typically in this Panel’s experience in most cases the privacy or proxy service concerned takes no part in the proceedings and does not file a Response. In such circumstances it seems to the Panel appropriate to proceed in the manner indicated in the foregoing extract from WIPO Overview 2.0.
In the present case however the privacy service concerned has filed a Response and has expressly requested that the Panel deal in its decision with its claimed lack of responsibility. The Panel notes that nowhere in the Complaint are any allegations specifically directed at the privacy service, and the Panel also notes that the privacy service made a prompt disclosure of the underlying registrant details when requested to do so. In these circumstances the Panel adopts in this case the approach also stated in paragraph 4.9 of WIPO Overview 2.0 immediately following the above quoted extract, as follows “[s]ome panels, usually in cases where there has been a clear and timely disclosure, have elected to disregard the privacy or proxy service entirely and focus solely on the registrar-confirmed registrant”. Accordingly the Panel concludes that the privacy service employed by the Respondent was not responsible for the actions of the Respondent emre erdem, hardox turkiye, who, on the evidence before the Panel was responsible for the acts the subject of this Complaint.
In the light of this finding the Panel does not need to consider the further submissions made by the privacy service as to lack of legal personality and jurisdiction.
As indicated in section 5.B. above the Panel will treat this case as one in which no response has been filed by the Respondent. The Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel again adopts the approach set out in the paragraph 4.9 of WIPO Overview 2.0, namely, “once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). Substantive Matters
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical to 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 the Disputed Domain Name;
(ii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of numerous trade marks in respect of the word HARDOX. The Panel holds that the Disputed Domain Name is confusingly similar to the above trade mark. The Disputed Domain Name, as registered by the Respondent, incorporates the HARDOX trade mark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
The only difference in the present case is the addition of the generic word “turkiye” which is simply a geographic identifier, being the Turkish form of the name for Turkey. It is established that the addition of a generic term to a domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
Accordingly, the Panel concludes that this addition does not suffice to negate the similarity between the Disputed Domain Name and the Complainant’s HARDOX trade mark and the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in a domain name:
“(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 organisation) 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.”
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the HARDOX trade mark. The Complainant has prior rights in the HARDOX trade mark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the HARDOX trade mark, and the evidence as to the extent of the reputation the Complainant enjoys in the HARDOX trade mark, and the confusingly similar nature of the Disputed Domain Name to the HARDOX trade mark, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant or its products. The website operated by the Respondent at the Disputed Domain Name is clearly promoting a business which supplies steel related products to the Turkish market and the Panel has no doubt the Respondent was by use of the Disputed Domain Name seeking to suggest it had a connection with the Complainant in the course of trade, by suggesting that it was the Complainant’s Turkish business, or an authorised distributor of the Complainant’s products in Turkey. It is neither. As such its behaviour clearly amounts to that specified in paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith, namely “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”.
Further, the Panel notes the Respondent (i.e. emre erdem, hardox turkiye) has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all 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.
Nick J. Gardner
Sole Panelist
Date: June 9, 2015
1 The Complaint was filed originally against a privacy service. For reasons discussed infra, this privacy service is not named as a respondent in these proceedings.
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