Complainant is Koc Holding A.S. of Istanbul, Turkey, represented by June Intellectual Property Services Inc., Turkey.
Respondent is Domain eRegistration of London, United Kingdom of Great Britain and Northern Ireland / Domain ID Shield Service of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 15, 2015. On May 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 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 Complainant on May 20, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed the first amendment to the Complaint on May 22, 2015. Complainant filed the second amendment to the Complaint on May 26, 2015.
The Center verified that the Complaint together with the first and second amendments 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 17, 2015. Due to an administrative oversight, the Center provided the Respondent on this date with five additional days in which to indicate any intent to participate in these proceedings. No reply was received, and on June 23, 2015 the Center notified the parties that it would proceed to Panel Appointment.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on July 1, 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
According to the contentions and documentation submitted, Complainant was founded in 1926, is Turkey's largest industrial and services group and is a leader in local and international markets in energy, automotive, consumer durables and finance.
The KOÇ trademark was first registered in Turkey in 2002 under Trademark Registration No. 99021873 and Complainant owns a number of other trademark registrations for the KOÇ trademark, including the Community Trademark Registration No. 003428513 registered on October 29, 2003. Complainant is also the holder of trademark application No. 2014/54220, filed with the Turkish Patent Institute on June 27, 2014, for the trademark KOÇ GRUBU, which in English means "KOÇ GROUP".
According to the contentions submitted, Complainant has used the KOÇ trademark in connection with a wide variety of goods and services. Complainant owns the domain name and, since February 9, 1996, the domain name .
The disputed domain name was registered with the Registrar on September 13, 2014. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant's trademark because it incorporates the KOÇ trademark in its entirety, and is almost identical to Complainant's KOÇ GRUBU trademark, which means "KOÇ GROUP" and is the subject of the trademark application No. 2014/54220. Complainant also argues that the addition of the term "groups" to the KOÇ trademark does not sufficiently distinguish the disputed domain name from Complainant's trademark as, in the business world, the word "group" is generally used for group companies which are joined together under an umbrella company, and in fact it reinforces the association of the disputed domain name with Complainant's trademark. Based on previous UDRP decisions, Complainant additionally argues that incorporating a third-party's trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark.
Complainant further contends that Respondent does not have rights or legitimate interests in the disputed domain name because: (i) Complainant has not licensed or otherwise permitted Respondent to use the KOÇ trademark or to apply for or use any domain name incorporating that trademark; (ii) Respondent has no relationship with Complainant for use of its trademark; (iii) Complainant has prior rights in the KOÇ trademark which precede Respondent's registration of the disputed domain name; (iv) Respondent is clearly aware of Complainant's extensive goodwill and reputation in its KOÇ trademarks and their derivatives, including the KOÇ GRUBU trademarks; (v) Respondent is only a domain ID shield which conceals the true identity of the original holder; (vi) Respondent has made no claim that he is using the disputed domain name in connection with a bona fide offering of goods and services; (vii) those associated with the disputed domain name have been using the disputed domain name to initiate illegal activities by using Mr. Ali Yıldırım Koç's (who is the chief executive of Complainant's companies) name and reputation to send email messages impersonating him; and (viii) Respondent has acquired no trademark or service mark rights and, there is no common knowledge (as an individual, business, or other organization) that he is known by the disputed domain name.
Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith because: (i) the disputed domain name was registered primarily for the purpose of initiating illegal activities, such as fraud, by using an email address associated with the disputed domain name; (ii) those associated with the disputed domain name have been using the disputed domain name to initiate illegal activities by using Mr. Ali Yıldırım Koç's (who is the chief executive of Complainant's companies) name and reputation to send email messages impersonating him; (iii) registration and use of a domain name incorporating a famous mark is necessarily in bad faith where a respondent knew at the time of the registration that he could not make any actual use of the disputed domain name without infringing on the trademark owner's rights; (iv) these actions clearly show the attempt to attract Internet users familiar with Complainant, its services and reputation and create confusion as to the existence of an affiliation or other connection with Complainant; (v) Respondent does not actively use the disputed domain name as Respondent has placed no content on the site at "www." that relates to a business or has been created by Respondent; (vi) there is no evidence whatsoever of any good faith use of or intention to use the disputed domain name ; and (vii) Respondent's passive holding of the disputed domain name satisfies the requirement of paragraph 4(a) of the Policy that the disputed domain name is being used in bad faith by Respondent. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Respondent's standing
When the Complaint was filed, the registrant of the disputed domain names was recorded as Domain ID Shield Service, which is a privacy/proxy service to enable "real" registrants of domain names to conceal their identities. However, in its response, the Registrar advised that the registrant of the disputed domain name is Domain eRegistration.
Both the privacy/proxy service and the actual registrant have been served with copies of the Complaint and neither has responded. The Panel will not distinguish between the two. The practice of having more than one respondent to a proceeding under the Policy where one is a privacy/proxy service and the other is the beneficial party which was later disclosed by the registrar is well-recognized in UDRP cases. See Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,WIPO Case No. D2005-0642. B. Effect of the Default
The consensus view is that respondent's default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.2. However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. See Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith,WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements. C. Identical or Confusingly Similar
The disputed domain name incorporates the KOÇ trademark in its entirety. It is now very well-established in UDRP decisions that a minor variation, such as adding short letters, or even generic or descriptive words to a registered trademark, is usually insufficient to confer requisite and sufficient distinctiveness to that name to avoid user confusion. See, e.g., Hoffmann–La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240; MySpace, Inc. v. Edwin De Jesus, EDJ Associates Inc., WIPO Case No. D2007-1878; BlackRock, Inc. v. , WIPO Case No. D2007-1627; F. Hoffmann-La Roche AG v. Transliner Consultants,WIPO Case No. D2007-1359; National Football League v. Peter Blucher d/b/a BluTech Tickets,WIPO Case No. D2007-1064; T, Inc. v. Rons Porta Johns,WIPO Case No. D2007-0952; Associated Bank Corp. v. Texas International Property Associates,WIPO Case No. D2007-0334; Gerber Childrenswear Inc. v. David Webb,WIPO Case No. D2007-0317; The Cheesecake Factory Inc. and The Cheesecake Factory Assets Co., LLC v. Say Cheesecake,WIPO Case No. D2005-0766; Napster, Inc. v. Vinscani,WIPO Case No. D2005-0531; Caesars Entertainment Inc. v. Nova Internet Inc.,WIPO Case No. D2005-0411; Lockheed Martin Corporation v. The Skunkworx Custom Cycle,WIPO Case No. D2004-0824; Lockheed Martin Corp. v. Deborah Teramani,WIPO Case No. D2004-0836 and National Collegiate Athletic Assoc. v. Dusty Brown,WIPO Case No. D2004-0491.
There is a minor variation between the KOÇ trademark, which uses the "ç" letter, and the disputed domain name , which uses the "c" letter. As decided in other UDRP cases, "the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone". See LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC.WIPO Case No. D2009-0924. On a direct comparison, the Panel finds that the disputed domain name is confusingly similar to Complainant's KOÇ trademark in spite of such minor variation. As held in Koç Holding A.S. v. KEEP B.T., WIPO Case No. D2009-0938, "KOC is the obvious equivalent to the Complainant's trade name and mark KOÇ".
Also, in the instant case, the combination of the word "koç" with the generic word "groups" does not affect the overall impression of the dominant part of the disputed domain name. The Panel agrees that it reinforces the misleading association of the disputed domain name with the KOÇ trademark and, as a consequence, with Complainant.
Complainant further argues that the disputed domain name is almost identical to Complainant's KOÇ GRUBU trademark which is pending registration, and, relying on previous UDRP decisions, states that unregistered trademark rights may be asserted by a complainant to satisfy the first condition of the UDRP. The Panel finds that it is not necessary to determine whether Complainant's application for registration of the "KOÇ GRUBU" trademark does establish rights in such trademark in favor of Complainant because the Panel has found that the use of the word "groups" in the disputed domain name reinforces the misleading association of the disputed domain name with the KOÇ trademark and, as a consequence, with the Complainant.
Finally, the addition of generic Top-Level domain ("gTLD") suffix ".org" is non-distinctive because it is required for the registration of the domain name. See RX America, LLC v. Mattew Smith,WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies,WIPO Case No. D2006-0582.
Therefore, the Panel finds that the disputed domain name is clearly confusingly similar to the KOÇ trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. D. Rights or Legitimate Interests
The Panel accepts Complainant's contentions that Respondent has no relationship with Complainant for use of its trademark and has never been licensed or otherwise authorized by Complainant to register the disputed domain name. There is no indication in the record that Respondent has been commonly known by the disputed domain name.
The Panel finds that in this case Respondent is not making use of any generic value of the disputed domain name. Instead, all circumstances point strongly to Respondent having chosen the disputed domain name because of its value as a close approximation of Complainant's trademark. In fact, the Panel sees no plausible explanation for Respondent's adoption and use of the term "kocgroups" in the disputed domain name other than the fact that such term creates a strong association with the KOÇ trademark and with Complainant.
The Panel finds that Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met. E. Registered and Used in Bad Faith (i) Registration in bad faith
The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name may be an indication of bad faith in itself, even without considering other elements. See Pepsico, Inc. v. Zhavoronkov,WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435.
Considering the size of Complainant's business and the fame of the KOÇ trade name and trademark, it is unlikely that Respondent was unaware of the KOÇ trademark at the time of registering the disputed domain name. In fact, as indicated before, the Panel sees no plausible explanation for Respondent's adoption of the term "kocgroups" in the disputed domain name other than to create a likelihood of confusion with Complainant's trademark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847.
Therefore, the Panel finds that Respondent must have been aware of Complainant's KOÇ trademark at the time of registration of the disputed domain name and, accordingly, draws an inference of bad faith. See Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226. (ii) Use in bad faith
Complainant argues that people associated with the disputed domain name have been using the disputed domain name to initiate illegal activities by using Mr. Ali Yıldırım Koç's name and reputation to send email messages impersonating him, and that these actions clearly show the attempt to attract Internet users familiar with Complainant, its services and reputation and create confusion as to the existence of an affiliation or other connection with Complainant. The Panel agrees that these circumstances constitute evidence of the use of the disputed domain name in bad faith.
Complainant further contends that Respondent does not actively use the disputed domain name and that Respondent's passive holding of the disputed domain name satisfies the requirement of paragraph 4(a) of the Policy that the disputed domain name is being used in bad faith by Respondent. When the Panel visited the disputed domain name on July 10, 2015 it resolved to an inactive website.
The consensus view in URDP panel decisions has been that "[t]he lack of active use of the domain name does not as such prevent a finding of bad faith", and that a panel must examine such circumstances as "complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name". See WIPO Overview 2.0, paragraph 3.2; Telstra Corporation Limited v. Nuclear Marshmallos,WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022; J. García Carrión, S.A. v. Mª José Catalán Frias,WIPO Case No. D2000-0239; Bayer Aktiengesellschaft v. H. Monssen, WIPO Case No. D2003-0275; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483; MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412.
The Panel is of the opinion that, under appropriate circumstances, passive holding can be considered bad faith use. In the instant case the facts referred to above are present: Complainant owns well-known trademarks, there was no Response to the Complaint, Respondent used a proxy service to conceal its identity and there is no indication in the record of a possible good faith use of the disputed domain name.
In short, the manner in which Respondent has used and is using the disputed domain name demonstrates that the disputed domain name has been used in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 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 Complainant.
Manoel J. Pereira dos Santos
Sole Panelist
Date: July 13, 2015
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