The Complainant is Voith GmbH of Heidenheim, Germany, represented by Bettinger Scheffelt Kobiako von Gamm, Germany.
The Respondent is Haluk DINC of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2015. On November 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 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. Further to the Center’s deficiency notification, the Complainant submitted its amended Complaint on December 7, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2015.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on January 18, 2016. 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, which is headquartered in Germany, is a family-run multinational corporation in the mechanical engineering sector with worldwide operations. Among its many products, the Complainant manufactures automatic transmissions for busses and other vehicles.
The Complainant is the owner of the registered trademark VOITH in many countries, including Turkey dating back to 1972. A list of these trademark registrations was attached to the Complaint.
The Respondent registered the disputed domain name on November 14, 2013. The Complainant has submitted evidence that the disputed domain name resolved to a website promoting the Respondent’s repair services for the Complainant’s transmissions. The Panel visited the disputed domain name on February 5, 2016, and observed that the disputed domain name is currently inactive. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 4(b) (i) of the Policy, the Complainant requests that the disputed domain name 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 asserts that the disputed domain name is confusingly similar to its VOITH trademarks. The Complainant asserts that the similarity is not mitigated by the addition of the word “sanziman”, the Turkish word of “transmission”.
Rights or Legitimate Interests
The Complainant asserts that the Respondent does not have any rights or legitimate interests regarding the disputed domain name. The Complainant has not given the Respondent any license to register its trademark as a domain name. Further, the Complainant asserts that the Respondent is not making a legitimate use of the disputed domain name.
Registered and Used in Bad Faith
The Complainant asserts that the Respondent registered the disputed domain name in bad faith and with knowledge of the Complainant’s rights. 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. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As the Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all reasonable 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.
According to paragraph 4(a) of the Policy, the following three elements must be proven by the Complainant, 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. 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 the trademark VOITH as evidenced in the annexes to the Complaint.
The Panel is of the opinion that the addition of the Turkish word “sanziman” (which means “transmission”) does not negate the confusing similarity between the Complainant’s trademark and the disputed domain name. “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 name resolve is 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 name is confusingly similar with the Complainant’s VOITH 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 has been established in numerous UDRP decisions that it is often impossible 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 VOITH. 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 promotion of competing products and services.
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.
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 any evidence of its rights or legitimate interests in the disputed domain name. The Panel, therefore, 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 VOITH was registered and used before the Respondent’s registration of the disputed domain name. Further, the Complainant’s trademark is well-known for automatic transmissions. It is no coincidence that the Respondent chose a domain name comprised of the Complainant’s mark and a term descriptive of the mark’s associated product. Therefore, the Panel concludes that the Respondent was aware of the Complainant’s trademark VOITH 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 trademarks at the time of registration of the disputed domain name is to be considered as an indication of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226.
Further, according to the annexes submitted by the Complainant, the Respondent used the disputed domain name in connection with its automatic transmission repair business, “Zdf Otomatik Sanziman Onarim Merkezi”, promoting products and services in competition with the Complainant. The Complainant 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.
Furthermore, the Panel finds that the Respondent’s failure to respond to the Complaint reinforces the inference of bad faith registration and bad faith use. The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn,WIPO Case No. D2001-0915.
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
Date: February 8, 2016
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