The Complainant is Motul of Aubervilliers, France, represented by Ordipat, France.
The Respondent is Murat Arslan, Mar Motors of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2019. On March 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2019, 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 and contact information for the disputed domain name.
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 March 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2019.
On April 24, 2019, the Respondent sent an email communication to the Center in response to the Notification of the Respondent Default, stating “We have noticed and corrected our error due to the email you sent us. We stopped work of our friend who made this mistake. Currently there is no problem on our website. I can assure will not happen again. Thanks.”
The Center appointed Kaya Köklü as the sole panelist in this matter on May 1, 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 a French company active in the field of oil and lubricants production for the automotive market and industrial usage. It has a longstanding company history of more than 160 years.
The Complainant owns a large number of registered MOTUL trademarks throughout the world, such asthe International Trademark Registration No. 267359, registered on March 21, 1963, covering protection inter alia for all kinds of petroleum and oil products and services. The International Trademark registration provides territorial protection also for Turkey, where the Respondent is apparently located (cf. Annex 6A to the Complaint).
The Complainant also owns and operates various domain names comprising its trademark MOTUL since many years, such as and . The Complainant also operates a website in Turkish language for its Turkish speaking customers available at .
The disputed domain name was registered on November 28, 2013.
The Respondent is a company located in Istanbul, Turkey. It apparently offers rental services for motorcycles in Turkey.
As evidenced in Annex 3 to the Complaint, users visiting the disputed domain name were redirected to , a website offering motorcycle rentals inter alia in Turkish and English language. At the time of the decision, the disputed domain name does no longer resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its MOTUL trademark, as the dispute domain name fully comprises its trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is an official or authorized link between the Complainant and the Respondent.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly argues that the Respondent must have been well aware of the Complainant’s MOTUL trademark, when registering and taking control over the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
In its informal email communication of April 24, 2019, the Respondent merely confirmed that upon service of the Complaint, it has stopped the use of the disputed domain name. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint’s contentions. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the views stated therein. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in the mark MOTUL by virtue of various trademark registrations worldwide.
The disputed domain name is in view of the Panel confusingly similar to the Complainant’s registered MOTUL trademark as it fully incorporates the Complainant’s trademark in its entirety. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. The mere addition of the dictionary Turkish word “yağ“, which means “oil” in the English language, in view of the Panel, does not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s MOTUL trademark.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark MOTUL. There is in particular no indication in the current record that the Respondent is commonly known by the disputed domain name. In the absence of a formal Response, the Respondent has particularly failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.
As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel notes the reputation and wide recognition of the Complainant’s MOTUL trademark in the automotive and particularly in the motor sports sector. The Panel is accordingly convinced that the Respondent, which provides rental services for motorcycles, must have had the Complainant’s trademark in mind when registering the disputed domain name.
In the Panel’s view, it even appears that the Respondent has registered and used the disputed domain name for the purpose of creating an association with the Complainant. By registering and using the disputed domain name, the Respondent apparently targets the diversion of Internet traffic to the Respondent’s site. Noting that the Respondent lacks any rights or legitimate interests in the disputed domain name, the use of the disputed domain name incorporating the Complainant’s MOTUL trademark in combination with the term “yağ” (meaning “oil” in the English language) and redirecting Internet users to its own motorcycle rental page for apparently commercial gain, is sufficient evidence of bad faith under paragraph 4(b)(iv) of the Policy. See in this regard WIPO Overview 3.0, section 3.1.4. The Panel finds this a valid indication for bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The fact that the disputed domain name is currently inactive does not prevent a finding of bad faith registration and use.
All in all, the Panel concludes that the disputed domain name was registered and is used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) 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.
Kaya Köklü
Sole Panelist
Date: May 17, 2019
Full & Egal Universal Law Academy