WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Erisler Gida Sanayi Ve Ticaret A.S. v. Hakan Sarihan, Bafra Eris Un Yem Gida San Tic. A.S.
Case No. D2008-0918
1. The Parties
The Complainant is Erisler Gida Sanayi Ve Ticaret A.S., Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Hakan Sarihan, Bafra Eris Un Yem Gida San Tic. A.S., Istanbul Turkey.
2. The Domain Names and Registrars
The disputed domain name <erisun.com> is registered with Pacnames Ltd. and the disputed domain name <erisun.net> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2008. On June 17, 2008, the Center transmitted by email to Pacnames Ltd and DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain names at issue. On June 19, 2008 DSTR Acquisition VII, LLC d/b/a Dotregistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 26, 2008 Pacnames Ltd 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 18, 2008.
The Center appointed Hariram Jayaram as the sole panelist in this matter on July 30, 2008. 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 in Turkey producing and exporting wheat flour. ERIS UN is one of its trade/service marks used in connection with its products and services. It has also registered the domain name <erisun.com.tr>.
The Respondent is the registrant of the disputed domain names <erisun.com> and <erisun.net> registered initially on May 30, 2008 and September 30, 2003, respectively.
5. Parties' Contentions
This Complaint is based on the following grounds:
Eris Flour Mills is one of the major companies producing and exporting wheat flour with 1500 MT/day wheat processing capacity. Eris Flour is a well-known brand widely preferred by bakeries in the western regions of Turkey. It is a symbol of quality for flour in many countries. Eris Flour is exported to more than 50 countries, mainly to Southeastern Asia, Africa, and C.I.S countries. The Complainant has registered a number of trade/service marks in Turkey at various times. They are “eris flour mills şekil”, “eriş”, “eriş un”, “erişler”, “erişyağ şekil” and “erişzade doruk”. The trademark ERIS UN was registered (well before the creation date of the Respondent's domain names <erisun.com> and <erisun.net>) with the Turkish Patent Office. It is a combination of two separate words, namely Eriş and Un. The second word ‘Un', is a Turkish equivalent of the word “flour”. The public has come to associate the name “ERIS UN” exclusively with the Complainant and it has rights in the designation “ERIS UN”. It has an international registration under the Madrid Protocol for the mark ERIS UN, bearing the registration no. 790654 with national applications/ registrations for ERIŞ in Albania and Indonesia and for ERIS UN + Device in Madagaskar, Hong Kong and Sri Lanka. Since May 8, 2001 the Complainant is the legal owner of the domain name <erisun.com.tr>.
The Respondent has made no claim that he is using the domain names in connection with a bona fide offering of goods and services. The Complainant has not licensed or otherwise permitted him to use the mark ERIS UN or to apply for or use any domain name incorporating the trade/service mark. The Complainant has prior rights in the trade/service mark, ERIS UN, which was registered prior to the registration of the disputed domain names. The Respondent would only have a right to the disputed domain names if the Complainant had specifically granted that right to the Respondent. It has the right to exercise control on how its trademark is to be used by third parties on the Internet. Based on its Turkish trademark registration as well as its common law rights, the Complainant has acquired exclusive rights to use its ERIS UN and ERIS marks in conjunction with the goods and services which it has been providing under the mark since 1974. Any use by the Respondent of the ERIS UN mark would directly violate the exclusive trademark rights now residing with the Complainant. The Respondent, by using the disputed domain names to sell items in the exact field of endeavor as that of the Complainant, i.e., flour, is intentionally seeking to exploit user confusion by diverting Internet users away from its site to the Respondent's website for the latter's own benefit. The Respondent is capitalizing on the celebrity reputation and fame of the Complainant's name. Such use does not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the disputed domain names. The Respondent is not commonly known by the domain names. The Respondent's website designates itself as <bafraeris.com>. The Respondent has attempted to deliberately cause consumers to believe that the website is that of the Complainant. The Respondent knew of the Complainant and its prior use when he registered the disputed domain names. The Respondent cannot claim that the commencement of his business under the disputed domain names was bona fide or commenced before any notice of dispute.
If a person types ‘erisun.com', he is diverted to the website “www.bafraeris.com”. The Respondent had knowledge of the Complainant when it registered the disputed domain names. The only reason for the Respondent's registration and use of the disputed domain names is to divert online consumers seeking the Complainant to his website. The Respondent has registered the <erisun.com> domain name in bad faith. The Respondent had knowledge of the Complainant using ERIS UN before. The Respondent should have adopted a domain name that was not virtually identical to the Complainant's trade/service mark. The Respondent has registered and used the disputed domain names to disrupt the business of the Complainant and intentionally attempted to attract, for commercial gain, online users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website. The Respondent has also registered the same to prevent the Complainant, the owner of the trade/service marks from reflecting them in corresponding domain names and to divert potential consumers to the Respondent's website to defame, tarnish and dilute its trade/service marks.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names are <erisun.com> and <erisun.net> and the Complainant's trademark is ERIS UN. The disputed domain names wholly incorporate the ERIS UN mark without the space between the two words ERIS and UN. The existence of .com and .net after ‘erisun' in the respective disputed domain names do not make a difference. This Panel agrees with the observations made in MPL Communications, Limited and MPL Communications, Inc v. LOVEARTH.net, NAF Case No. 97086, as follows:
“The only differences between two of contested domain names, “paul-mccartney.com”, “paul-mccartney.net”, and the Complainant's McCartney marks are that addition of a hyphen to each of the former and also inclusion of “.com” and “.net”, respectively, as a top-level domain… All of these differences are so de minimus and immaterial as to be inadequate to preclude any confusion from occurring. For all practical purposes, the domain name in question is identical to the Complainant's M[c]Cartney marks.”
This Panel finds that the disputed domain names are identical to the Complainant's trademark and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made several allegations against the Respondent to demonstrate that the latter does not have rights or legitimate interests in the disputed domain names.
The Complainant says that the Respondent is not commonly known by the disputed domain names. ERIS UN trade/service mark owned by the Complainant is widely known and was registered before the registration of the disputed domain names. The Complainant has not licensed the Respondent to use the mark. The Complainant has not permitted the Respondent to incorporate the trade/service mark in the disputed domain names. When an Internet user types the disputed domain names, he is diverted to the Respondent's website “www.bafraeris.com”. There is intention on his part to exploit Internet user confusion through such diversion. The Respondent sells flour and is therefore engaged in the same activity as that of the Complainant. The Respondent is capitalizing on the Complainant's reputation and fame.
All these allegations have gone unchallenged by the Respondent who has chosen not to submit a response. The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has also made several supported allegations against the Respondent to establish bad faith registration and use of the disputed domain names. The Complainant avers that the Respondent was aware of the existence of the Complainant's business when the Respondent registered the disputed domain names. The Respondent could have chosen other domain names but instead chose the disputed domain names incorporating the Complainant's trade/service mark. This prevents the Complainant from reflecting its trade/service marks in a corresponding domain name. The Respondent's aim in registering the disputed domain names was to disrupt the business of the Complainant and attract Internet users to the Respondent's own websites within the meaning of paragraph 4(b)(iv) of the Policy.
Once again these allegations have not been challenged by the Respondent. This Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <erisun.com> and <erisun.net> be transferred to the Complainant.
Dated: August 13, 2008