The Complainant is KOC Holding A.S. of Istanbul, Turkey, represented by June Intellectual Property Services Inc., Turkey.
The Respondent is VistaPrint Technologies Ltd of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 26, 2015. On October 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 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. The Complainant submitted an amendment to the Complaint on October 30, 2015.
The Center verified that the Complaint together with the 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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2015.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on November 27, 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 the registered owner of numerous trademark registrations for and/or including the term "KOÇ", in particular Turkish registration number 2004 15189 KOÇ, protected since May 25, 2004 for goods and services in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45 and Community trademark number 003428513 KOÇ (figurative), registered on January 21, 2009 for goods and services in classes 1, 4, 6, 7, 8, 9, 11, 12, 16, 17, 19, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44. The Complainant further owns the trademark KOÇ GRUBU, registered on May 25, 2015 (which in English language means "KOÇ GROUP").
The disputed domain name was registered by the Respondent on September 2, 2015. It results from the Complainant's documented allegations that no true content is displayed on the website to which the disputed domain name resolves but just the reference "Coming Soon! www. is under construction and hasn't been published yet". 5. Parties' Contentions A. Complainant
The Complainant alleges that it is Turkey's largest industrial and services group in terms of revenues, exports, share in Istanbul Stock Exchange and number of employees. It ranks as one of the 50 largest publicly traded companies in Europe and among the largest 200 companies in the world. It is a leader in local and international markets in energy, automotive, consumer durables and finance. The Complainant was founded in 1926 and has been using the trademark KOC since at least 1938 in connection with a wide variety of goods and services. It registered the mark before the Turkish Patent Institute since 2002 several times in all classes and made it well-known in the market. It has been using the name "KOC" not only as a trademark but also as company name during all its commercial activities as well. Additionally the Complainant holds domain name registrations for , which were registered long before the disputed domain name (i.e. was registered on February 09, 1996).
The Complainant contends that the disputed domain name is confusingly similar to its trademarks KOC since it wholly incorporates said trademark combining it with the merely descriptive terms "HOLDING" and "group" which, apart from being indistinctive, openly refer to the Complainant that is a holding company, even having the word "holding" in its commercial title and in the business world "group" is generally used for group companies - many companies being joined together under one umbrella company. The disputed domain name is also almost identical with the Complainant's KOÇ GRUBU mark (which in English means "KOÇ group").
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent uses the disputed domain name in connection with a bona fide offering of goods or services. The Complainant has prior rights in that trade/service mark, which precede the Respondent's registration of the domain name. The Complainant has not licensed or otherwise permitted the Respondent to use the mark KOC or to apply for or use any domain name incorporating that mark. Moreover, the Respondent is not commonly known by the term "KOC". Since the KOC mark is claimed to be famous not only in Turkey but worldwide, it is not likely that the Respondent has not known one of the most recognized and advertised trademarks in Turkey. The reason why the original holder of the disputed domain name could have wanted to register this domain name was either the original holder wanted to confuse Internet users for its own profit, or to sell it back to the Complainant, or even both. Furthermore, a legitimate noncommercial or fair use of the disputed domain name is not evident.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In particular, the Complainant holds that the Respondent has made no use of its disputed domain name and there is no evidence whatsoever of any good faith use of or intention to use the disputed domain name. Taking into account all these considerations together, it is not possible to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate, such as being infringement of the Complainant's mark. Furthermore, according to the Complainant a further indication of bad faith is the malicious connection between the disputed domain name and the message sent from an email address under the extension pretending to be the Complainant's human resources department. It is clear that even though the disputed domain name is not in use, it was probably registered to carry out further unlawful activities. It is most likely that the disputed domain name was registered to provide such an email address in order to mislead third parties as to the origin of such an email. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Paragraph 4(a) of the Policy requires the complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(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.
The Panel is satisfied that the Registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademarks for and/or including the term "KOÇ". Reference is made in particular to Turkish registration number 2004 15189, protected since May 25, 2004 and Community trademark number 003428513, registered on January 21, 2009. These trademarks predate the creation date of the disputed domain name which is September 2, 2015.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates the complainant's trademark in its entirety (e.g., Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320). This is the case in the present proceeding where the Complainant's registered trademark can be considered fully included in the disputed domain name. In fact there is a minor variation between the KOÇ trademark, which uses the letter "ç", and the disputed domain name, which uses the letter "c" instead. The Panel shares the view of previous UDRP panels that have found that "KOC" is the obvious equivalent to the Complainant's trade name and mark KOÇ in a domain name (e.g. Koc Holding A.S. v. VistaPrint Technologies Ltd.,WIPO Case No. D2015-0886; Koç Holding A.S. v. KEEP B.T.,WIPO Case No. D2009-0938).
In addition, the disputed domain name combines the Complainant's registered trademark KOÇ as its distinctive element with the generic terms "holding" and "group", which are totally applicable as descriptive terms of the Complainant and its activity itself. The elements "holding" and "group" are therefore calculated to increase the confusing similarity between the trademark and the disputed domain name. The addition of these descriptive terms to the distinctive trademark is insufficient in itself and it does not serve to distinguish the disputed domain name from the trademark, but rather, reinforce the association of the Complainant's trademark with the disputed domain name (see e.g. Deutsche Lufthansa AG v. Kudakwashe Musunga / PrivacyP, WIPO Case No. D2009-1754; Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320).
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name. In the Panel's view, based on the unrebutted allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
No true content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy (see e.g. Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320). In addition, the Panel finds it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant's reputation by registering a domain name fully containing the Complainant's trade name with the intent to attract Internet users for commercial gain (e.g. VistaPrint Technologies Ltd.,WIPO Case No. D2015-0886; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847).
Finally, the Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith.
The Complainant has been established many years ago and has a reputation and its trademarks have existed for a long time and are widely known. Therefore, it is the view of this Panel that the Respondent knew or should have known that the disputed domain name included the Complainant's KOÇ trademarks when it registered the disputed domain name. Registration of this disputed domain name in awareness of the reputed KOÇ mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see e.g. The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812 and The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320).
The disputed domain name does not resolve to an active website. In this regard, the Panel notes that passive holding does not preclude a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
With regard to the Complainant's further allegations supported by evidence as to the malicious connection between the disputed domain name and an alleged email message sent by an email address under the "" extension to third parties who reported it to the Complainant, this Panel finds that this might constitute further evidence of bad faith but that there is no need to come to a final conclusion on this point.
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: December 11, 2015
Full & Egal Universal Law Academy