The Complainant is Hayat Kimya Sanayi Anonim Şirketi of Istanbul, Turkey, represented by Dericioğlu & Yaşar Law Office, Turkey.
The Respondent is Mohsen Akbari of Toronto, Ontario, Canada. 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 December 23, 2016. On December 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2016, 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 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, and the proceedings commenced on January 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 7, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 9, 2017. 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 company based in Turkey that manufactures and sells baby diapers, among other products. It is part of Hayat Holding which initiated its activities in 1937. It is the owner of several trademark registrations amongst which is the following:
- Turkish Trademark Registration No. 180117 for MOLFIX, filed on January 29, 1997 and registered on January 6, 1998 and successively renewed.
The Turkish Patent Institute on December 25, 2007 recognized MOLFIX as a well-known trademark – Reg. No T / 01583 (Annex 4 to the Complaint).
The disputed domain name was registered on March 15, 2015, and is currently used in connection with an active webpage selling the Complainant's products and depicting the Complainant's trademark. 5. Parties' Contentions A. Complainant
The Complainant asserts that it is part of the Turkey-based Hayat Holding, one of the world's largest manufacturers of baby diapers, with factories in Algeria, Bosnia and Herzegovina, Egypt, the Islamic Republic of Iran and Turkey and employing more than 5,200 people and exporting its products to 101 countries.
Its MOLFIX trademark, used in relation to baby diapers since 1998, has been recognized by the Turkish Patent Institute as a well-known trademark (Annex 4 to the Complaint).
In the Complainant's point of view the disputed domain name is confusingly similar to its MOLFIX trademark merely adding the word "shop" a dictionary term related to its business and products, thus creating an overall impression of association with the Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services and is therefore not making a legitimate noncommercial or fair use of the disputed domain name;
(ii) the Respondent is not the owner of a registered trademark nor has any personal right on the term "Molfix";
(iii) the Respondent has not been commonly known by the disputed domain name; and
(iv) the Respondent has not been authorized by the Complainant to use the MOLFIX trademark as part of a domain name.
As to the registration of the disputed domain name, the Complainant contends that it was done clearly in bad faith given that its MOLFIX trademark is well known and the use made by the Respondent of the disputed domain name, namely purporting to sell the Complainant's baby diapers in the Islamic Republic of Iran, where the Complainant has a manufacturing facility, shows a clear attempt to take advantage of its fame and mislead Internet users. 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 requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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 Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar
The Complainant has established rights in the MOLFIX trademark duly registered in various countries and recognized a well-known trademark in Turkey.
The Panel finds that the disputed domain name merely reproduces the Complainant's MOLFIX mark with the addition of the dictionary term "shop" largely used on the Internet in connection with online ecommerce webpages, not adding any distinctiveness and thus being confusingly similar therewith.
The first element of the Policy has therefore been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent's rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making 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.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant to first make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that no authorization was given for the use of its MOLFIX trademark in the disputed domain name.
Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the WhoIs details of the Respondent for the disputed domain name, corroborate the absence of a right or legitimate interest.
The Respondent has been using images of the Complainant's baby diapers and reproducing the Complainant's trademark and logo in connection with a website that purports to offer for sale the Complainant's products. Previous UDRP panels have recognized that, under certain conditions, the use of a domain name that reflects a trademark for the resale of the trademark holder's goods can give rise to rights or legitimate interests. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. These conditions include, inter alia, that the website under the domain name "[is used to sell] only the trademarked goods" and that it "accurately and prominently [discloses] the registrant's relationship with the trademark holder." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.3. The website under the disputed domain name has no such disclaimer.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the Complainant's products, trademark and logotype in connection with the products commonly manufactured by the Complainant on the Respondent's website.
The Respondent's use of the disputed domain name not only clearly indicates full knowledge of the Complainant's trademark but also an attempt of misleadingly diverting consumers for its own commercial gain.
For the reasons above, the Respondents' conduct has to be considered, in this Panel's view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: February 14, 2017
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