The Complainant is Franke Technology and Trademark Ltd of Hergiswil, Switzerland, represented by BrandIT GmbH, Switzerland.
The Respondent is Domain Admin, Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Queensland, Australia / Murat Cayiroglu, Nesiline Bilisim Teknolojileri - Murat Cayiroglu of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with FBS Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2016. On June 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2016, 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 June 7, 2016 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 amendment to the Complaint on June 7, 2016. Further to the Center’s communication (sent in English and Turkish) regarding the language of proceeding of June 7, 2016 the Complainant requested English to be the language of proceeding on June 7, 2016. The Respondent did not comment on this request by the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Turkish, and the proceeding commenced on June 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2016.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on July 11, 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 is a Swiss industrial group established in 1911 and currently manufacturing and marketing kitchen systems, sanitary systems as well as professional coffee machines.
The Complainant has been operating as FRANKE continuously since 1911 and holds many trademark registrations in Turkey including:
- International Registration No. IR 975860 for the trademark FRANKE extended to Turkey, registered on June 14, 2007 covering kitchen sanitary products and furniture in classes 6, 11, 20 and 21 as well as the services in class 37;
- International Registration No. IR 872557 for the trademark FRANKE extended to Turkey, registered on February 28, 2005 covering kitchen sanitary products and furniture in classes 6, 11 and 21.
The disputed domain name was created on February 12, 2013. According to the current WhoIs record, the Respondent is an individual domiciled in Istanbul, Turkey.
The Panel visited the disputed domain name on July 19, 2016, and observed that the disputed domain name does not resolve to the same website as evidenced in the Complaint, thus inactive. 5. Parties’ Contentions A. Complainant
1. The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark FRANKE and that the addition of the descriptive word “servisleriniz” – which means “your –FRANKE – services” in Turkish – reinforces the association between the disputed domain name and the Complainant’s trademark.
2. The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark FRANKE. The Complainant further asserts that the conditions of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 for a bona fide offering of goods and services by an authorized or non-authorized third party are not satisfied.
3. Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent is well aware of the Complainant’s well-known trademark considering that he provides repair services for FRANKE products and systems. Furthermore, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceeding, 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 Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Registrar has confirmed that the registration agreement is in Turkish in this case. The Complaint was filed in English and the Complainant has requested English to be the language of the proceeding. The Respondent did not submit any comments to the Center’s communication regarding the language of proceeding or any response to the Complaint. The Panel is familiar with both Turkish and English.
In the circumstances, and having assessed evidences submitted by the Complainant in English, the Panel decides in accordance with paragraph 11 of the Rules that the language of proceeding is English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A trademark registration provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, the Complainant holds several trademark registrations for the FRANKE trademark.
The disputed domain name integrates the Complainant’s FRANKE trademark in its entirety.
The disputed domain name differs from the registered FRANKE trademark by the additional descriptive word “servisleriniz”.
The descriptive word “servisleriniz” – which means “your services” – does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, as it is a descriptive term that directly relates to services offered by the Respondent.
Several UDRP panels have ruled that the mere addition of a descriptive element does not sufficiently differentiate a disputed domain name from a complainant’s registered trademark. Moreover it is the Panel’s view that using such a descriptive word together with a registered trademark strengthens the impression that the disputed domain name is in some way connected to the Complainant’s trademark (see, e.g., Société des Produits Nestlé S.A. v. MrT LLC,WIPO Case No. D2012-1356; Allianz SE v. Roy Lee / Traffic-D,WIPO Case No. D2012-1459; Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150; and Swarovski Aktiengesellschaft v. ,WIPO Case No. D2013-0335).
As regards the generic Top-Level Domain (“gTLD”) “.com”, it is typically disregarded under the confusing similarity test under the Policy.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. C. Rights or Legitimate Interests
The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case.
Although the Respondent did not file a Response, a respondent’s default does not automatically result in a decision in favor of the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6 and the cases cited therein.
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.
As there are no exceptional circumstances for the failure of the Respondent to submit a Response, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441.
A number of UDRP decisions have addressed the question of when a reseller’s use of a mark constitutes a bona fide offering of goods and services. The consensus view was articulated in Oki Data Americas, Inc. v. ASD, Inc., supra. See WIPO Overview 2.0 at paragraph 2.3. In that case, the authorized reseller’s domain name incorporated the complainant’s OKIDATA trademark in full. The panel in Oki Data concluded that for a respondent to demonstrate that a resale offering was bona fide, the following conditions must be met:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the corresponding website to sell only the trademarked goods, otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods;
- the site itself must accurately disclose the respondent’s relationship with the trademark owner, i.e., respondent may not falsely suggest that it is the trademark owner, or that the website is the official site, if that is not the case; and
- the respondent must not try to “corner the market” in all relevant domain names, or deprive the trademark owner of reflecting its own mark in a domain name.
In this case, it appears from the website, the Respondent has been operating its business to offer repair services exclusively for the Complainant’s products under the disputed domain name for three years without any complaint.
That being said, the Respondent is using the stylized version or the logo of the FRANKE trademark on the website. Moreover, the website includes a photo of an automobile with the use of the FRANKE logo. All of these circumstances give the impression that it is affiliated with the Complainant or it is authorized dealer of the Complainant.
On the other hand, the disclaimer at the footer of the webpage connected to the disputed domain which states that the “trademark is the property of the related company” and that the Respondent “provides private repair services”, does not accurately disclose the relationship between the Respondent and the Complainant and on the contrary does suggest that there is a business relation and/or affiliation with the Complainant. In other words, while there is a disclaimer on the website under the disputed domain name, it is far from meeting the Oki Data standard of “accurately and prominently” disclosing the Respondent’s relationship (or lack thereof) with the Complainant. WIPO Overview 2.0, paragraph 2.3.
For these reasons, the Panel concludes that the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services.
Moreover, as previously noted the disputed domain name is currently inactive.
In the Panel’s view the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complaint succeeds in relation to the second element of the Policy. D. 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 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.
Considering the Panel’s finding under the second element, the Panel finds that the registration and use of the disputed domain name falls under the circumstances described under paragraph 4(b)(iv) of the Policy, namely, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by seeking to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Moreover, the Complainant sent a cease-and-desist letter dated December 3, 2015 to the Respondent. No reply has been received. The Panel finds the Respondent’s conduct in failing to reply to the Respondent’s cease-and-desist letter to be further evidence of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163).
Lastly, the Panel observed that the Respondent used a privacy shield. While the Respondent’s use of a privacy service will not in itself constitute bad faith under the Policy, the Panel may still take it into account and draw adverse inferences. The use of the privacy shield in this case together with other elements gives rise to the suspicion that the privacy shield was used to mask the identity of the true registrant and to obstruct proceedings commenced under the Policy.
In conclusion, the Respondent’s unjustified use of a privacy shield, the Respondent’s failure to respond to the cease and desist letter, the Respondent’s failure to provide any response, documentary or evidence all lead to the conclusion that the Respondent registered and used the disputed domain name in bad faith.
The fact that the disputed domain name does not resolve to an active website does not change the Panel’s findings.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant. 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.
Emre Kerim Yardimci
Sole Panelist
Date: July 27, 2016
Full & Egal Universal Law Academy