The Complainant is Armor, France, represented by Ipsilon, France.
The Respondent is Ozguc Bayraktar, Rs Danismanlik, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2019. On July 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 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.
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 August 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2019. The Response was filed with the Center on August 12, 2019.
The Center appointed Kaya Köklü as the sole panelist in this matter on September 3, 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 company located in Nantes, France, apparently engaged in various software and materials manufacturing.
The Complainant owns a number of trademark registrations for KIMYA, the earliest of which was registered on February 9, 2018. The Complainant particularly owns the French Trademark Registration No. 4397438 and the International Trademark Registration No. 140969 covering protection in the United States of America, Canada, Japan, European Union, Morocco, and Australia for various goods and services in classes 9, 17 and, 42.
The Respondent is an individual with an apparently Turkish background, residing in Australia. He registered the disputed domain name on November 30, 1999.
The screenshots, as provided by the Complainant, show that the disputed domain name resolves to a website with a list of more than 200 domain names, which predominantly consist of generic terms in Turkish language and are offered for sale. According to a price list published by the Respondent (cf. Annex 6 to the Complaint), the disputed domain name is offered at a price of USD 95,000,00, whereas other domain names of the Respondent with generic Turkish terms are offered for sale at prices between USD 15,000,00, and USD 350,000,00. The screenshots provided show that the Respondent offered contact opportunities for prospective buyers in Australia and Turkey (cf. Annex 5 to the Complaint). 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 identical to its KIMYA trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues as follows:
“The respondent does not own any trademark associated with the disputed domain name; the respondent is not commonly known by the disputed domain name; the respondent is not using the domain name for a legitimate purpose, but rather purely for the purpose of reselling. Indeed, the website at the disputed domain name currently displays a notice stating that the disputed domain name is for sale. We enclosed in Annex 5 an archive showing that the domain name is for sale for USD 100 000.”
Finally, the Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant argues that “registering or acquiring a domain name for the purpose of selling for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name is an indication of registration and use of the relevant domain name in bad faith.”
By referring to a domain name value assessment by a third company prepared for the Complainant, the Complainant argues that the true value of the disputed domain name is something between USD 12,000,00 and 15,000,00, and, hence, “considerably lower than the price that the owner currently required”. The Complainant concludes that “the amount for which the disputed domain name is for sale would greatly exceed the respondent’s out-of-pocket costs directly associated with the dispute domain name.” Therefore, the Complainant believes that “where there is no active website associated with the disputed domain name and no evidence that there has been and where the respondent’s offer to sell the disputed domain name for an amount in excess of its out-of-pockets costs is evidence of registration and use of the disputed domain name in bad faith in accordance with paragraph 4(b)(i) of the Policy.” B. Respondent
The Respondent requests the denial of the Complaint.
The Respondent argues that it was not even possible to have the Complainant or its trademarks in mind when registering the disputed domain name, as it was registered more than a decade before the Complainant registered its KIMYA trademarks.
He further argues that the term “kimya” is a generic Turkish word meaning “chemistry” in English and, hence, cannot be monopolized by the Complainant. 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 Complainant’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 consensus views captured therein. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in the mark KIMYA in France and some other jurisdiction as of the year 2018.
The Panel further finds that the disputed domain name is identical to the Complainant’s registered KIMYA trademark, as it incorporates the Complainant’s trademark in its entirety without any additions or amendments.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
As with all three operative Policy elements, the Complainant bears the burden of proof to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel recognizes that this burden of proof would often result in the difficult task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests 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 of evidence 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. WIPO Overview 3.0, section 2.1; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Ultimately it remains the Complainant’s burden to prove that the Respondent has used the disputed domain name to trade off the Complainant’s KIMYA trademark rights.
The Complainant’s submissions in relation to this element consist of several brief and general statements, asserting that the Respondent has no registered KIMYA trademark, is not commonly known and has merely used the disputed domain name to offer it for sale for around USD 100,000,00.
The Panel is inclined to find that this does not suffice to meet the Complainant’s burden of making out a prima facie case that the Respondent lacks rights or legitimate interests. However, even if the Complainant has done so, the Panel finds that the Respondent has rebutted the Complainant’s prima facie case.
In this regard, the Panel confirms that “kimya” is a generic Turkish term meaning “chemistry” in English. The Respondent is apparently in the business of monetizing domain names consisting of generic terms in Turkish language (cf. Annexes 5 and 6 to the Complaint). A number of previous panels have found that as long as this kind of business is not infringing the complainant’s rights in a mark, the Policy allows registration and use of domain names for this purpose. See, e.g., Dumankaya Yapi Malzemeleri SAN. VE TIC. A.S v. Domain Administrator, Name Administration Inc. (BVI),WIPO Case No. D2015-1757; R.V. Kuhns & Associates, Inc. v. Gregory Ricks / Whois Privacy Corp. / Domain Administrator,WIPO Case No. D2014-2041.
Based on the documents provided in the case file, the Respondent’s use of the disputed domain name has been apparently non-infringing since it was registered in 1999 (which predates the Complainant’s registration of the KIMYA trademark by around 19 years). The website linked to the disputed domain name does not reference the Complainant or its competitors. It is not even alleged by the Complainant that the Respondent attempts to trade off the Complainant’s name or trademark. There is not even an indication in the case file that the disputed domain name was registered with any knowledge of the Complainant or its business.
Consequently, the Complainant fails in establishing the second element of the Policy. C. Registered and Used in Bad Faith
In light of the above finding, the Panel is not required to also consider the third element of the Policy. However, the Panel will briefly address the key aspects of this element for completeness.
In light of the following, the Panel is not convinced that the Respondent registered and subsequently used the disputed domain name in bad faith.
The Complainant’s general assumption that the offered sales price by the Respondent for the disputed domain name is significantly higher than its alleged value is in view of the Panel per se not sufficient evidence and not by itself a valid argument for bad faith registration and use. As indicated above, the business of monetizing domain names consisting of generic terms can be legitimate and is as such not a convincing indication of bad faith. This obviously still applies if the requested sales price appears too high from the point of view of the prospective buyer, here the Complainant.
Also, as previously mentioned, the Complainant’s earliest KIMYA trademark registration dates back to February 9, 2018. This is around 19 years after the Respondent registered the disputed domain name in 1999. The Complainant has not even asserted that is was already established and famous in 1999, neither in Turkey or Australia or elsewhere, in order to show that the Respondent might have had knowledge of the Complainant at the time it registered the disputed domain name. Consequently, the Panel rather believes the Respondent’s assertion that it had no knowledge of the Complainant when registering the disputed domain name.
Consequently, as the burden of proof concerning bad faith registration and use remains with the Complainant, the Panel finds that the Complainant has also not satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy. D. Reverse Domain Name Hijacking
Reverse domain name hijacking is defined in paragraph 1 of the Rules as using the Policy in bad faith to attempt to deprive the domain name holder of a domain name.
As highlighted, amongst others, in Ville de Paris v. Salient Properties LLC,WIPO Case No. D2009-1279 (citing Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing,WIPO Case No. D2005-0309) reverse domain name hijacking have been upheld in circumstances “where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy” (see also Goldline International, Inc v. Gold Line,WIPO Case No. D2000-1151).
In the present case, it is uncontested that the registration date of the disputed domain name precedes the dates of the Complainants’ relevant trademark registrations for around 19 years. The Complainant was aware of this fact before submitting its Complaint. The Complainant made no attempt to prove or even assert the existence of trademark rights prior to the registration of the disputed domain name. There is not even an indication in the case file that the Complainant was already established when the Respondent registered the disputed domain name in 1999.
Also, in the provided domain name value report provided by the Complainant (cf. Annex 7 to the Complaint), it is explicitly stated under no. 2 “Meaning of the term” that the disputed domain name is a generic word in the Turkish language. The report even points out that the owner might probably have “registered this domain name due to its generic meaning and for monetization purpose”. Hence, the Panel is convinced that the Complainant was or at least must have been aware of the generic meaning of “kimya” in the Turkish language when filing the Complaint.
Although the Complainant was probably aware of all these facts, it argued bad faith registration and use merely by referring to the Respondent’s public offer to sell the disputed domain name at a price that, in view of the Complainant, appears too high. It is the Panel’s opinion that, by doing so, the Complainant disregards the free market principle that a seller can basically decide for himself at what price he wants to sell. The Panel is convinced that at least a reasonable investigation prior to the filing of the Complaint would have revealed the weakness in the Complainant’s case since there was no basis in the Complaint for alleging that the disputed domain name was registered in violation of the Complainant’s rights.
In light of the above findings the Panel finds that the Complainant has attempted Reverse Domain Name Hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
Kaya Köklü
Sole Panelist
Date: September 17, 2019
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