The Complainant is Mr. Yunus Gönen of Beylikdüzü, Istanbul, Turkey, represented by June Intellectual Property Services Inc., Turkey.
The Respondents are Yuan Yuan of Beijing, China (the “First Respondent”), and WhoisGuard Protected, WhoisGuard, Inc, of Panama, Panama / Nguyen Cong Thinh, Y5cafe, of Lamdong, Viet Nam (the “Second Respondent”). 2. The Domain Names and Registrars
The disputed domain name is registered with NameCheap, Inc. The disputed domain names and are registered with GoD, LLC (along with NameCheap, Inc., collectively hereinafter referred to as the “Registrars”). Each of these disputed domain names will be referred to as a “Disputed Domain Name”. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2019. On March 20, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On March 21, 2019, the Registrars transmitted by emails to the Center their verification response confirming that one of the Respondents is listed as the registrant and providing the contact details, and 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 March 22, 2019, 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 March 27, 2019.
The Center received an email communication from the First Respondent on March 26, 2019, discussed further below.
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 April 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2019. On April 30, 2019, pursuant to paragraph 6 of the Rules, the Center informed the Parties that the Center would commence with the panel appointment process.
The Center appointed John Swinson as the sole panelist in this matter on May 8, 2019. 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 Yunus Gönen, an individual of Turkey. The Complainant operates an online business which provides free downloadable brand logos. The Complainant has operated the business since 2008.
The Complainant is the owner of Turkish registered trade mark number 08527 for SEEKLOGO, registered on January 31, 2018 (the “Trade Mark”). The Complainant is also the owner of a domain name from which his business is operated, and which incorporates the Trade Mark, being . The Complainant registered this domain name on August 23, 2008.
The First Respondent is Yuan Yuan of Beijing, China. The First Respondent is the named registrant of the Disputed Domain Names and .
The Second Respondent is Nguyen Cong Thinh, Y5cafe, of Viet Nam and WhoiGuard Protected, WhoisGuard, Inc. The Second Respondent is the named registrant of the Disputed Domain Name .
No formal response was received from either of the Respondents and therefore little information is known about the Respondents.
The Disputed Domain Name was registered on August 2, 2013. The Disputed Domain Name was registered on June 9, 2018. The Disputed Domain Name was registered on April 11, 2018. 5. Parties’ Contentions A. Complainant
The Disputed Domain Name is identical to the Trade Mark as it contains the Trade Mark in its entirety and no additional words have been added. The Disputed Domain Names and combine the Trade Mark in its entirety with the additional word “vector”. The addition of the word “vector” does not distinguish those Disputed Domain Names from the Trade Mark.
The Respondents have no rights or legitimate interests in any of the Disputed Domain Names because:
- the Complainant has not licensed or otherwise permitted the Respondents to use the Trade Mark;
- the Respondents are not commonly known by the Disputed Domain Names;
- the Respondents do not own any trade marks associated with the Disputed Domain Names; and
- the Respondents are not using the Disputed Domain Names for a bona fide purpose.
The Respondents registered the Disputed Domain Names to intentionally attempt to attract, for commercial gain, Internet users to their websites. The Respondents have attempted to create a likelihood of confusion with the Complainant and the Trade Mark. The Disputed Domain Names were registered and are being used in bad faith. B. Respondents
No formal response was received from the Respondents. On March 26, 2019, the Center received an email from the First Respondent. The First Respondent stated that “seek logo” is a general term, and its use in the Disputed Domain Names does not constitute infringement. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondents have not filed a formal Response.
The Respondents’ failure to file a formal Response does not automatically result in a decision in favor of the Complainants (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondents’ lack of a Response. A. Procedural Issues – Consolidation
This Complaint has been filed against two Respondents (and a privacy service), and concerns three Disputed Domain Names. Paragraph 10(e) of the Rules gives the Panel discretion to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.
In considering whether to consolidate a complaint, panels look at whether:
- the domain names or corresponding websites are subject to common control; and
- the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2).
In assessing common control, panels have considered a range of factors to determine whether such consolidation is appropriate. These include similarities in or other relevant aspects of the registrants’ identities, the nature of the marks at issue, and naming patterns in the disputed domain names.
In this case, a company named Y5cafe of Vietnam registered the Disputed Domain Name through a privacy service. An individual named Yuan Yuan registered the Disputed Domain Names and . The Complainant submits that this is a single Respondent using aliases, because:
- The Respondents use the same layout, design, and colors for each website.
- The Respondent incorporates a variation of “seeklogo” and “vector” into each Disputed Domain Name.
- The website at each Disputed Domain Name contains commonalities such as the inquiry pages, which display the same contact details and typographical errors, and the user guide, which is identical in nature, and identifies the Disputed Domain Names as being operated by the same entity and under common control.
In assessing the Complainant’s request for consolidation, the Panel considers the following points to be relevant:
- The Disputed Domain Name was registered in 2013, approximately 5 years earlier than and .
- The Disputed Domain Name was registered using a privacy service (and the true registrant (the Second Respondent) was identified during the Registrar verification process in connection with that Disputed Domain Name. The Disputed Domain Names and were not registered using a privacy service, and the WhoIs information for both of these Disputed Domain Names is identical (including registrant name, address, and contact details).
- The First Respondent has an address in China. The Second Respondent has an address in Viet Nam.
- The look and feel of the website at is almost identical to the Complainant’s website (at “”). The look and feel of the websites at and are almost identical to each other. However, the website at (and the Complainant’s website) is similar, but not identical, to the websites at and . This is somewhat contrary to the Complainant’s assertions.
- The terms of use on the websites at and are identical. The terms of use on the website at are very similar, but not identical, to the other terms of use. Despite the Complainant’s assertions, the Complainant has provided no evidence (and the Panel can find no evidence) that the websites at each of the Disputed Domain Names contains the same contact details or identifies the Disputed Domain Names as being under common control.
On balance, the Panel considers that the Complainant has not provided sufficient evidence to establish that Nguyen Cong Thinh of Y5cafe in Viet Nam and Yuan Yuan of China are the same individual, or are connected to one another such that the Disputed Domain Names would be under common control. As stated by the panel in Mou Limited v. Zeng Xiang / Debra Nelis / Privacy Protection Service Inc. d/b/a PrivacyP,WIPO Case No. D2016-0759, “[i]dentity or near identity of websites does not, without more, prove that the websites belong to or are controlled by the same entity”.
A number of the Complainant’s submissions in support of consolidation are, based on the Panel’s review of the websites at the Disputed Domain Names, somewhat incorrect (at least at the time of this decision). Further, as stated above, there is nothing in the WhoIs details for the Disputed Domain Names which link the Disputed Domain Names. Two of the Disputed Domain Names were registered with one Registrar within several months of each other, and the other was registered with another Registrar, using a privacy service, five years earlier.
As such, the Panel denies the Complainant’s request for consolidation of the Complaint against multiple Respondents. The Panel determines that this administrative proceeding will continue against only the First Respondent, Yuan of China, and the Disputed Domain Names and . In the remainder of this decision, references to the Respondent will be references to the First Respondent, and references to the Disputed Domain Names will be references to and .
There is nothing to prevent the Complainant from filing a new complaint against Nguyen Cong Thinh of Y5cafe in Vietnam in relation to . B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Mark.
Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.7 of the WIPO Overview 3.0).
In this case, the Disputed Domain Names and are confusingly similar to the Trade Mark as they combine the Trade Mark in its entirety with the word “vector”. The addition of the word “vector” does not distinguish the Disputed Domain Names from the Trade Mark.
The Complainant succeeds on the first element. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers that the Complainant has made out a prima facie case. This finding is based on the following:
- The Complainant has not authorized or otherwise given the Respondent permission to use the Disputed Domain Names.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Names, nor has registered or common law trade mark rights in relation to the Disputed Domain Names.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. The Respondent appears to have copied the style of the Complainant’s website. The Disputed Domain Names contain advertising links, from which the Respondent presumably derives profit. In the circumstances, this is not a legitimate noncommercial or fair use.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
To succeed in a complaint under the Policy, it is well established that under the third element of the Policy, a complainant must prove on the preponderance of the evidence is that the domain name in issue was registered in bad faith, i.e., was registered with the complainant and/or its trade mark in mind.
In this case, the Complainant has operated its business since 2008 and has had registered rights in the Trade Mark since January 31, 2017. The Disputed Domain Name was registered on April 11, 2018. The Disputed Domain Name was registered on June 9, 2018. The Disputed Domain Names were both registered over a year after the registration of the Trade Mark and approximately 10 years after the Complainant commenced operations of its business. Given the similarity of the content at the Complainant’s website and the websites at the Disputed Domain Names, the Panel finds that the Disputed Domain Names were registered in bad faith.
Given the use that the Respondent is making of the Disputed Domain Names (i.e., copying the Complainant’s website design and business), the Panel finds that the Respondent registered and is using the Disputed Domain Names in an intentional attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of his website, location, or of a product or service on his website or location. The Respondent is using the Trade Mark in the Disputed Domain Names to trade off the Complainant’s reputation, and to misleadingly divert Internet users to his own website.
This is evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
In light of the above, and in the absence of a response and any evidence rebutting bad faith registration and use, the Complainant succeeds 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 Names and be transferred to the Complainant.
John Swinson
Sole Panelist
Date: May 23, 2019
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