The Complainant is DSM Grup Danişmanlık İletişim ve Satış Ticaret Anonim Sirketi of Istanbul, Turkey, represented by Tellioğlu Kaşlioğlu Law Office, Turkey.
The Respondent is Womedi BV of Rotterdam, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with SIDN through Internet Service Europe B.V. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2018. On September 7, 2018, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On September 10, 2018, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 13, 2018. In accordance with the Regulations, article 7.1, the due date for Response was October 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2018.
The Center appointed Alfred Meijboom as the panelist in this matter on October 18, 2018. The Panel finds that it was properly constituted. The panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
The Complainant is one of the biggest e-trading companies in Turkey and the owner of 49 Turkish trademarks containing the element “Trendyol” which were registered as of October 2009, as well as trademarks which are valid in the Netherlands, including
- International trademark registration TRENDYOL.COM with number 1392848, registered on September 17, 2017, valid in the European Union; and
- International trademark registration TRENDYOL with number 1408341, registered on September 14, 2017, valid in the European Union.
The Respondent registered the disputed domain name on March 5, 2012; currently the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the Respondent violates the Complainant’s trademarks by having registering the disputed domain name which contains the term “Trendyol” in its entirety. Further, the Complainant has not authorized the Respondent to use the Complainant’s trademarks and the term “Trendyol” is not a common word or generic name so that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the registration and use of the disputed domain name by the Respondent was also in bad faith because “Trendyol” was already a well-known trademark in Turkey and among the global Turkish community when the Respondent registered the disputed domain name. Considering also the WhoIs data which allegedly shows that the administrative contact of the Respondent is Turkish, the Respondent must have been aware of the Complainant’s trademarks at the time of registration of the disputed domain name. Moreover, the Complainant asserts that the existence of a website under the disputed domain name dilutes the Complainant’s trademarks and harms its commercial standing and market recognition. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As the Respondent has not filed a response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the panelist considers it to be without basis in law or in fact.
The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to the Respondent.
Based on article 2.1 of the Regulations, a request to transfer the disputed domain name must meet three cumulative conditions:
a. the disputed domain name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which the Complainant has rights; or
II. a personal name registered in the General Municipal Register (‘gemeentelijke basisadministratie’) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and
b. the respondent has no rights to or legitimate interests in the disputed domain name; and
c. the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
It is established case law under the Regulations that the country code Top-Level Domain “.nl” may be disregarded in assessing the similarity between the trademark(s) on the one hand and the disputed domain name(s) on the other hand (see, e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
According to article 2.1 sub a of the Regulations the Complainant can only rely on a trademark protected under Dutch law in which the Complainant has rights. Therefore the Complainant cannot rely on its Turkish trademark registrations which are not protected under Dutch law, but only on the International trademark registrations identified in paragraph 4 above.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s relevant trademarks as the disputed domain name comprises the term “Trendyol” in its entirety.
Consequently, the Panel finds that the Complainant has satisfied the requirement of article 2.1(a) of the Regulations. B. Rights or Legitimate Interests
Article 2.1(b) of the Regulations requires the Complainant to establish that the Respondent has no rights to or legitimate interests in the disputed domain name. This condition is met if the Complainant makes out a prima facie case that the Respondent has no such rights or legitimate interests and if the Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008‑0002).
The Panel is satisfied that the Complainant has made such a prima facie case, asserting, undisputed by the Respondent, that the Complainant never authorized the Respondent to use or register a domain name which includes the Complainant’s “Trendyol”trademarks.
Although the registration date of the disputed domain name predates the registration dates of the Complainant’s respective trademarks, relevant to standing under the Regulations, the Respondent has not disputed the Complainant’s contention that the Respondent, at the time of registration of the disputed domain name, must have been aware of the Complainant’s Turkish trademarks for “Tendyol”, its use of such trademarks for the Complainant’s e-commerce platform and the fact that the Complainant’s trademark “Trendyol” was well known in Turkey and among the global Turkish community to which the Respondent’s administrative contact undisputedly belongs. The trademarks’ renown were confirmed by the panel in DSM Grup Danışmanlık İletişim ve Satış Ticaret Anonim Şirketi v. Bülentrecep Esen,WIPO Case No. DAE2018-0002, which was decided in proceedings under the Uniform Domain Name Dispute Resolution Policy that served as a basis for the Regulations. As the Panel needs to apply the criteria of Article 2.1 of the Regulations on the basis of the independent case law under the Regulations, the Panel finds it appropriate to take into account circumstances to assess the question of rights or legitimate interests in the present case.
Consequently, the Panel finds that the Complainant has satisfied the requirement of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith
The Respondent’s undisputed awareness of the Complainant’s use of the Turkish trademark “Trendyol” at the time it registered the disputed domain name and the Respondent’s seemingly passive holding of the disputed domain name, prevent the Complainant to register the disputed domain name, with the existing risk that the Respondent’s activities would disrupt the Complainant’s business and use of its trademarks “Trendyol” in the Netherlands as meant in article 3.2 of the Regulations. In all circumstances, the Panel finds that the Respondent has registered and uses the disputed domain name in bad faith.
Consequently, the requirement of article 2.1(c) of the Regulations has also been met. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name be transferred to the Complainant.
Alfred Meijboom
Panelist
Date: October 22, 2018
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