The Complainant is Yeni Mağazacılık Anonim Şirketi, Turkey, represented by S&G Legal Consultancy, Turkey.
The Respondent is 纪贺美 (He Mei Ji), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response 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 May 15, 2021 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 amended Complaint in English on May 19, 2021. On May 15, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 17, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amended 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 in English and Chinese of the Complaint, and the proceedings commenced on May 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on July 9, 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 Complainant is one of the leading supermarket chains in Turkey and has over 10,000 stores in that country. The Complainant was registered with the Istanbul Chamber of Commerce in 2008 for the conduct of retail trade in grocery stores and markets. The Complainant holds Turkish trademark registration number 2008 67187 for A101, registered on November 19, 2008 and specifying goods and services in multiple classes. That trademark registration remains current. The Complainant has also registered the domain name The Respondent is an individual resident in China. The disputed domain name was registered on September 23, 2020. It does not resolve to any active website; rather, it is passively held. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s A101 trademark. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant, nor has it been otherwise authorized to use the Complainant’s A101 trademark in a domain name or otherwise. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. It is not commonly known by the disputed domain name. It is not making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name in full knowledge of the Complainant’s rights in the A101 trademark. The Respondent’s passive holding of the disputed domain name does not prevent a finding of bad faith. The disputed domain name causes a risk of implied affiliation with the Complainant’s A101 trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name consists of Latin letters and contains the English word “market” and that it would be a significant expense for the Complainant to have the Complaint and the annexes attached to it translated into the Chinese language, which would also cause the proceedings to be delayed. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint was filed in English. Despite the Center having sent an email regarding the language of the proceeding and a notification of the Complaint in both Chinese and English, the Respondent did not comment on the issue of language or express any interest in participating otherwise in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response filed in Chinese, but none was filed. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the A101 trademark. The disputed domain name wholly incorporates the A101 trademark as its initial element. The disputed domain name adds the word “market”. Given that the trademark remains recognizable within the disputed domain name, the Panel does not consider that the addition of the word “market” prevents a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The disputed domain name includes a generic Top-Level Domain (“gTLD”) suffix (“.com”), which is a technical requirement of domain name registration. A gTLD is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As regards the first and third circumstances set out above, the disputed domain name is passively held. The disputed domain name combines the Complainant’s A101 trademark with the word “market”. The Complainant submits that the Respondent is not a licensee of the Complainant, nor has it been otherwise authorized to use the Complainant’s A101 trademark in a domain name or otherwise. Accordingly, the Panel does not consider that the disputed domain name is being used in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the Policy. As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “纪贺美 (He Mei Ji)”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because she did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive. With respect to registration, the disputed domain name was registered in 2020, years after the registration of the Complainant’s A101 trademark. The Complainant has acquired a considerable reputation in its A101 mark through extensive use of that mark in Turkey and online. A101 is an invented mark with no meaning, as far as the Panel is aware, other than as a reference to the Complainant and its supermarkets. The disputed domain name wholly incorporates the A101 trademark as its initial element and combines it with the word “market” which indicates an awareness of the nature of the Complainant’s supermarket business. The Respondent provides no alternative explanation as to why she chose to register the Complainant’s trademark in the disputed domain name. Accordingly, the Panel considers it likely that the Respondent knew of the Complainant’s mark and had it in mind when she registered the disputed domain name. With respect to use, the Respondent currently makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the Complainant has acquired a considerable reputation in its A101 mark through extensive use of that mark in Turkey and online. The disputed domain name wholly incorporates the A101 trademark combined with the word “market”, which can only really be understood as a reference to the Complainant’s supermarket business when the Respondent actually has no connection to the Complainant. The Respondent provides no explanation of any potential use of the disputed domain name. In all these circumstances, the Panel considers it more likely than not that the Respondent is using the disputed domain name in bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 Matthew Kennedy
Sole Panelist
Date: July 22, 2021
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