The Complainants are Rockefeller & Co. LLC and 1979 Family Trust Licensor, LLC, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Emre Ihlamur, Turkey, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2021. On March 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2021, 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 Registrar also indicated that the language of the Registration Agreement was Turkish. The Center sent an email communication in English and Turkish, to the Parties on March 22, 2021, inviting the Complainants to provide sufficient evidence of an agreement between the Parties for English to be the language of the proceeding, a Complaint translated into Turkish, or a request for English to be the language of the proceeding. The Complainants filed a request for English to be the language of the proceeding on the same day. The Respondent sent an informal email in English on March 23, 2021. 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 April 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2021. The due date for Response was extended to April 25, 2021, pursuant to the Rules, paragraph 5(b). A third person not party to the present administrative proceeding filed submissions in Turkish with the Center on April 21 and 25, 2021. On May 7, 2021, the Complainants submitted a supplemental filing and on May 20, 2021, shortly before the Panel rendered its decision, the third person indicated above submitted a supplemental filing. The Center appointed Kaya Köklü as the sole panelist in this matter on May 10, 2021. 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 Complaint is filed by two associated entities with registered seats in the United States of America. They are inter alia active in the field of wealth planning, investment management, investment advice, trust services and family office services, whereas the second Complainant is the licensee of the first Complainant. The Panel accepts both Complainants in this administrative proceeding and, for the ease of reference, will jointly refer to them as “the Complainant” in the following, whenever appropriate. The Complainant is the owner of the ROCKEFELLER trademark, covering protection inter alia for services in classes 3, 36, and 43. The ROCKEFELLER trademark is registered on behalf of the Complainant in many jurisdictions worldwide, including in Turkey. According to the case record, ROCKEFELLER service trademark (No. 2012 94575) was registered in Turkey in 2012 (Annex G to the Complaint). The disputed domain name was registered on August 24, 2020. The Respondent is an individual from Turkey. The screenshots, as provided by the Complainant, show that the disputed domain name resolved to a website in Turkish and English language. On said website, a third company with “Rockefeller” in its name offered various kinds of capital and financial management services (Annex N to the Complaint). According to the case record, there is a court injunction order, granted by the United States District Court Southern District of New York on September 14, 2020, which prohibits the majority shareholder of said company to use the ROCKEFELLER trademark inter alia as a surname, corporate name, and/or domain name (Annex N to the Complaint). At the time of the decision, the disputed domain name is no longer actively used. 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 ROCKEFELLER trademark. Furthermore, the Complainant believes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant argues that based on the court order of the United States District Court Southern District of New York, the Respondent is not able to rely on any personal or company name rights. 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 ROCKEFELLER trademark, when registering and using the disputed domain name. B. Respondent The Respondent did not respond to the Complainant’s contentious. In his short email communication of March 23, 2021, the Respondent just indicated in the English language that “this domain is not mine” and asserted that a third person “requested to buy this domain”. On April 25, 2021, this third person submitted comments in the Turkish language together with various documents to the Center alleging that he is a shareholder of the company, which operates the website linked to the disputed domain name and whose co-founder is another natural person with “Rockefeller” as a surname. He argues that the company with “Rockefeller” in its name has been officially established and registered according to the laws of New Jersey in the United States of America. He believes that using a domain name, which is identical to his company name that has been duly registered in commercial registers, cannot constitute a breach of the ROCKEFELLER trademark. 6. Discussion and Findings 6.1. Language of the Proceeding The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of the administrative proceeding shall be English. Although the language of the registration agreement is Turkish, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceeding in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection to the Center’s communication about the language of the proceeding, even though communicated in Turkish and in English. In this regard, the Panel notes that the Respondent sent his email communication of March 23, 2021 in English language, which indicates that the Respondent is well able to read, write, and communicate in English. Consequently, the Panel is convinced that the Respondent will not be prejudiced by a Decision being rendered in English. 6.2. Consideration of Supplemental Filings The Panel notes that the Center received a supplemental filing from the Complainant on May 7, 2021. The Panel follows the reasoning of the panel in Viz Communications, Inc. v. Redsun dba www.animerica.com and David Penava,WIPO Case No. D2000-0905, that it is appropriate to consider the circumstances of each case before deciding whether or not to admit additional or late-filed submissions. In this case, the email communication by the Complainant of May 7, 2021 contains nothing relevant that has not already been put forward in the initial Complaint. Furthermore, the supplemental filing of the Complainant mainly refers not to the email communication sent by the Respondent on March 23, 2021, but to the email communication received by the Center on April 25, 2021 from a third person, which is not party to the present administrative proceeding. As in view of the Panel, the submission by the third party on April 25, 2021 and his supplemental filing of May 20, 2021, has no relevance or impact on the Panel’s final decision (to be explained below), the Complainant’s supplemental filing as a reaction to this submission will also have no impact on the Panel’s final decision. Consequently, the Panel refuses to take the Complainant’s or third party’s supplemental filings into account. 6.3. Substantive Issues 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”). Further, it is stated 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 ROCKEFELLER by virtue of a large number of trademark registrations worldwide, including in Turkey, where the Respondent is located. The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, as it fully incorporates the mark ROCKEFELLER. 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 does generally not prevent a finding of confusing similarity. Consequently, the addition of the words “gormus”, “capital”, and “management”, does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s ROCKEFELLER trademark. Accordingly, the Panel finds that the Complainant has satisfied the requirement 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. In its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s ROCKEFELLER trademark in a confusingly similar way within the disputed domain name. Particularly, the Respondent cannot rely on any trademark license or alike. Further, the Respondent failed to file evidence or convincing arguments to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c). In this regard, the Panel points out that it does not consider it sufficient that the Respondent merely refers to alleged third party rights without sufficiently disclosing his own relationship to said third party. In fact, the Respondent failed to provide any documentation or even explanation on a possible chain of rights that would entitle him to claim rights of a third party that is not party to the present administrative proceeding. In view of the Panel, this also leads to the consequence that the submission by the third person sent to the Center on April 25, 2021 is not to be considered as this third person it not a party to the present administrative proceeding. Nevertheless, and just for the sake of completeness, the Panel notes that even if the third party submissions of April 25, 2021 or May 20, 2021 were to be considered, it is obvious to the Panel that the third person, who filed the submissions to the Center, is the minority shareholder of the company, which apparently operated the website linked to the disputed domain name, and that the majority co-founder of that company apparently acts in breach of the court order, granted by the United States District Court Southern District of New York on September 14, 2020 (Annex N to the Complaint). The Panel concludes that against this background, the third party could not invoke rights or legitimate interests anyway. In addition, the nature of the disputed domain name carries a risk of implied affiliation or endorsement. Accordingly, the Panel concludes 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 convinced that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain name on August 24, 2020. At the date of registration of the disputed domain name, the Complainant’s ROCKEFELLER trademark was already registered, widely used, and well-known for many years, including in Turkey, where the Respondent is located. Even if the Respondent’s allegation that he registered the disputed domain name only on request of a third party is true, the Respondent did not provide any convincing explanation, why this third party did not register the disputed domain name in its own name. The Panel cannot conceive of any other plausible reason than to prevent an efficient enforcement of the Complainant’s trademark rights against that third party and its majority shareholder, who is already subject to the above mentioned injunction order of the United States District Court Southern District of New York. The Panel is convinced that supporting this intention and behavior cannot constitute good faith registration and use by the Respondent himself. Additionally, the Panel notes that the disputed domain name previously resolved to a website that offered various kinds of capital and financial management services in competition with the Complainant. In the circumstances of the present case, including incorporation of the Complainant’s widely known trademark in the disputed domain name, the use of the disputed domain name to offer competing services further supports a finding of bad faith. The fact that the disputed domain name does not currently resolve to an active website does not change the Panel’s findings in this respect. Consequently, the Panel is finds that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has 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 Kaya Köklü
Sole Panelist
Date: May 24, 2021
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