The Complainant is Isonem Yapi Kimyasallari ve Boya San. Tic. Ltd. Sti of Izmir, Turkey, internally represented.
The Respondent is Prosel Bilgisayar Prosel Bilgisayar / Prosel Bilgisayar Ltd. Sti. of Izmir, Turkey, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2017. On May 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 2017, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 8, 2017
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 May 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2017. The Response was filed with the Center on May 29, 2017.
On May 30, 2017, The Center received the Supplemental Filing from the Complainant. The Center acknowledged its receipt and informed the Parties that it would be forwarded to the Panel, once appointed, who would have the discretion to accept it or reject it. As the Panel decided to consider the supplemental filing submitted by the Complainant, it issued, on July 11, 2017, a Panel Order providing the possibility to the Respondent to submit a response to the Complainant’s Supplemental Filing. The Respondent submitted its reply on July 11, 2017.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on June 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 Turkish company, active in the production and supply of construction chemicals, paintings and coatings.
The Complainant owns following trademark registrations among others:
- ISONEM Registration no. 2002 00596, registered on January 16, 2002 covering goods and services in classes 1, 17 and 35.
- ISONEM Registration no. 2007 23312, registered on April 30, 2007 covering goods in class 2 and 19.
The disputed domain name was registered by the Respondent on October 30, 2002. The Respondent is a company offering services for the management of Internet domain names, hosting and server services.
At the time of registration of the disputed domain name, there was a contractual relationship between the Complainant and the Respondent for the hosting, and server services as well as technical services for computers.
The Panel notes that the disputed domain name was redirected to the Complainant’s website “www..tr”.
The Complainant tried to contact the Respondent several times by telephone and email and lastly sent a cease-and-desist letter sent through Notary Public on May 5, 2017 before submitting the Complaint. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical to the Complainant’s registered trademark ISONEM as well as its country code Top-Level Domain (“ccTLD”) domain name .
The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Respondent had provided IT services for the Complainant since 2002 and that the disputed domain name is registered by the Respondent on behalf of the Complainant.
The Complainant observes that in the view of the business relationship with the Respondent acting as domain name hosting services, the Respondent’s refusal to transfer the disputed domain name to the Complainant shows that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent states that it is a leading IT company which administers and provides domain hosting and server services and that it still provides hosting and server services to the Complainant and that it has been the registrant of the disputed domain name for over 10 years.
The Respondent further contends that the Complainant’s trademark was registered on April 30, 2007 namely five years after the registration of the disputed domain name and that the disputed domain name had been registered before the Complainant was established.
The Respondent further claims that none of the Complainant’s claims are true, it states that the Complainant still owes “respondent 3 months of server usage”. 6. Discussion and Findings A. Supplemental Filing by the Parties
Further to the Response submitted on May 29, 2017, the Complainant submitted a supplemental filing on May 30, 2017. UDRP panels are generally not inclined to allow unsolicited supplemental filings by the parties unless the party making the supplemental submission can show some exceptional circumstances or the panel in its own discretion finds there is some additional information and pertinent facts.
Although the Panel is of the opinion that the Complainant was able to submit the facts mentioned in the supplemental filing together with the Complaint, considering the facts submitted by the supplemental filing were very crucial to the case and that the Complainant is internally represented and that the supplemental filing was submitted immediately after the Response, the Panel decided to take into consideration the supplemental filing submitted by the Complainant. At the same time, the Panel granted the Respondent the possibility to submit a response to the Complainant’s Supplemental Filing. The Respondent submitted its reply on July 11, 2017. B. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the ISONEM mark in accordance with its registration and use as a trademark.
The disputed domain name incorporates the Complainant’s trademark ISONEM in its entirety. The addition of the gTLD “.com” does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
Consequently, the Panel finds that the disputed domain name is identical to the Complainant’s trademark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
The Complainant has asserted that the Respondent was its IT provider with whom they have worked with several years. Within the framework of this business relationship, the Complainant states that the Respondent should have registered the disputed domain name in the name and on behalf of the Complainant and that the Respondent was not authorized to use the Complainant’s ISONEM trademark or register the disputed domain name on its behalf. The Panel notes that the disputed domain name was redirected to the Complainant’s website “www..tr”.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production then shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name.
The Respondent, in its Response, states that it is an IT company which administers domain name and hosting services and that they have been working with the Complainant over a decade and that the Complainant’s claims are not true or relevant.
The Panel is not satisfied with the explanation of the Respondent as to how it has rights or legitimate interests in the disputed domain name. Accordingly, there is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “ISONEM”.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
At the time of registration of the disputed domain name in 2002, it is undisputed that the Respondent, being in business relationship with the Complainant was well aware of the Complainant’s trademark. More importantly, the Respondent registered the disputed domain name upon instruction of the Complainant. However the Complainant suggests that the Respondent was expected to register the disputed domain name in the name of the Complainant. In that circumstance, the Respondent’s refusal to follow its previous client’s instruction constitutes bad faith registration. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094).
The Panel took into consideration the Respondent’s second response. However, the registration date of the trademark ISONEM is not relevant for this case as is it undisputed that the Respondent, at the time of the registration of the disputed domain name, was well aware of the Complainant’s trademark.
The question of whether there can be bad faith registration and use of a Domain Name that predates any registered trade mark is addressed in section 3.8.2 of the WIPO Overview 3.0. That section includes the following statements:
“[I]n certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”
There are several UDRP decisions in this respect (See Marden Group B.V. v. T,WIPO Case No. D2011-1061; INTERTEX, Inc. v. Shant Moughalian, Contess, Inc.,WIPO Case No. D2017-0480)
In BML Group Limited. v. Rikard Beach, Proxy My Whois AB,WIPO Case No. D2015-1897 the panel made the following observations:
“The Panel accepts that in the present case there had been trade mark use of the term "betsafe" prior to the time that the Domain Name was registered and that the Domain Name was registered with knowledge of that use and with the intention of taking advantage of the reputation that had or would attach to that term by reason of that use. Therefore, the fact that at that time the Complainant had not applied for or obtained a registered trade mark for that term, does not prevent a finding of bad faith registration and use.”
Further this Panel is of the opinion that the registration of the disputed domain name by the Respondent in its own name without authorization of the Complainant while they were in a business relationship merely constitutes a bad faith registration and is contrary to the requirement of paragraph 2 of the UDRP, which states: “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
Regarding the bad faith use, the Panel notes that the disputed domain name was redirecting to the Complainant’s website “www..tr” and is currently inactive. This Panel is satisfied that the Complainant has established that the Respondent is sitting on the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name. This is sufficient under the present circumstances to demonstrate that the Respondent is using the disputed domain name in bad faith.
Accordingly, the Panel is persuaded that the disputed domain name was registered and is being used in bad faith in the absence of any plausible explanation from the Respondent.
Therefore, in the view of the cumulative circumstances, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii). 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 18, 2017
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