The Complainant is Kale Kilit Ve Kalip Sanayi A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is ERCI ZONA of Izmir, Turkey.
The disputed domain names <kalelock.com>, <kalelock.net>, <kalelock.org> are registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2010. On March 26, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On March 26, 2010, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 1, 2010. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2010. The Respondent sent informal email communications to the Center on April 19, April 21, April 29, and April 30, 2010. However, no formal compliant Response was submitted.
The Center appointed Kaya Köklü as the sole panelist in this matter on April 30, 2010. 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.
The date scheduled for the issuance of the Panel's decision was May 14, 2010.
In accordance with the Rules, paragraph 11, and since the Parties have not agreed otherwise, the language of the administrative proceedings is the language of the Regsitration Agreement (i.e. English).
The Complainant is a widely known company in Turkey. It was established in the early 50's and is the leading manufacturer for various kinds of household and security locks in Turkey. Its products are delivered to customers worldwide.
As shown in the Complaint, the Complainant is the registered owner of several KALE trademarks, including but not limited to Turkish, Community and International Registration word and figurative trademarks.
As evidenced by Complaint Annex 4, the Complainant's KALE trademark was first registered in 1969 and then renewed every ten years.
In addition, the Complainant is also the registered owner of several KALE KILIT word and figurative trademarks. The term “kilit” is, in the Turkish language, a rather generic term and means in the English language “lock”.
Furthermore, the Complainant holds and operates its homepage under the website “www.kalekilit.com.tr”.
As evidenced by the Complaint Annex 1, the disputed domain names were created on August 27, 2009 and are registered in the name of the Respondent.
According to the current record, the Respondent is an individual, residing in Izmir, Turkey.
There was no content provided, when the Panel visited the Respondent's websites on May 10, 2010.
The Complainant alleges that it is not only the leading lock manufacturer in Turkey, but also the number three of lock manufacturers worldwide. The Complainant also sets forth that it produces up to 20 million locks per year.
The Complainant argues that its trademarks KALE and KALE KILIT are one of the best-known household brands in Turkey and are well recognized brands among the Turkish population and are clearly understood by consumers as signs for products provided by the Complainant.
The Complainant claims the transfer of the disputed domain names and agues that (i) the disputed domain names are identical or at least confusingly similar to the famous trademarks registered by the Complainant, (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names and (iii) the Respondent has registered and used the disputed domain names in bad faith.
In particular, the Complainant argues that it never granted a permission or licence to the Respondent to use the trademark KALE. In addition, the Complainant alleges that the Respondent has never used and does not intend to use the sign KALE in connection with a bona fide offering of goods and services.
Finally, Complainant argues that Respondent has registered and used the disputed domain names in bad faith as the Respondent must have known the Complainant's well known trademarks well before the registration of the disputed domain names.
The Respondent did not formally respond to the Complainant's contentions.
However, the Respondent replied by informal email communication in the Turkish and English language. In these email communications, it is alleged that the Respondent has registered and intends to use the domain names for noncommercial purposes only. The Respondent asserts in his email communication that the content will only relate to social network services in order “to make people have fun”. He further asserts that if he had a commercial interest in the domain names he would have made a public offer for sale.
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 and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) The domain names are identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) The domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all these requirements are fulfilled, even if the Respondent has not formally replied to the Complaint, Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228. In this regard, the Panel notes that the informal email communication by the Respondent will nevertheless be considered in its decision.
Concerning the uncontested information provided by the Complainant, the Panel may – as appropriate — accept the provided factual allegations in the Complaint as true, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this regard, it is noted that an independent research by visiting the Internet sites linked to the disputed domain names has been performed by the Panel. The competence of the Panel to perform such independent research is undisputed and in line with previous Panel decisions, e.g. Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038.
The Panel finds that the disputed domain names <kalelock.com>, <kalelock.net> and <kalelock.org> are confusingly similar to the Complainant's trademarks.
First, the Panel finds that the Complainant has satisfied the threshold requirement of having trademark rights regarding the signs KALE and KALE KILIT. It is non-contested that the Complainant owns several KALE trademarks registered in various jurisdictions all over the world. Its first KALE trademark was registered in Turkey in 1969, followed by more than 50 further trademarks containing the sign KALE.
The disputed domain names <kalelock.com>, <kalelock.net> and <kalelock.org> fully incorporate the Complainant's trademark KALE. The additional word “lock” used in the disputed domain names is a generic term and the English equivalent of the Turkish term “kilit”. As indicated above, the Complainant is also registered owner of several trademarks containing both terms, KALE and KILIT. Both terms are also part of the Complainant's firm name.
The Panel finds that simply adding a generic term like “lock” does not ameliorate the likelihood of confusion and does not make the disputed domain names distinctive as compared to the Complainant's trademarks. The Panel even finds that by using the additional word “lock”, the English translation of the Turkish term “kilit”, the likelihood of confusion with the Complainant's trademarks is increased as the term “lock” obviously refers to the Complainant's core business and the goods and services protected by its trademarks.
This is in particular the case as the Panel assesses the Complainant's trademarks to be well-known among the Turkish population.
Hence, the Panel finds that the first requirement under paragraph 4(a) of the Policy is fulfilled.
The Panel finds that the Respondent has not demonstrated a right or legitimate interest in the disputed domain names.
While the burden of proof in principle rests with the Complainant, the Panel has recognized that this would result in the impossible task of proving a negative, in particular as defending a claim as to the lack of rights or legitimate interests, is primarily within the knowledge of the Respondent. Therefore, the Panel believes that the Complainant is only required to make out a prima facie case in order to meet the requirements in paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to demonstrate any right or legitimate interest in the disputed domain names according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided non-contested prima facie evidence that the Respondent has no trademark, license or any other similar right to use the disputed domain names.
As indicated above, the Panel confirms that – when it visited the disputed domain names on May 10, 2010 – there was no provided content. It rather appears that the disputed domain names have been passively held.
By not submitting a proper response, the Respondent failed to demonstrate any circumstance that could be brought forward to support a legitimate noncommercial or fair use of the domain names without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue.
In the informal emails sent by the Respondent to the Center, it was simply stated that the disputed domain names would not be used for commercial purposes. The Respondent stated without substantiation that its intention was to use the disputed domain names for social network services only. This allegation is not convincing as it is unsupported by evidence and does not sufficiently show a right or a legitimate interest in the disputed domain names.
The Panel finds that there is no indication that the disputed domain names are used or are supposed to be used in future in connection with a bona fide offering of goods or services. In addition, there is no indication that the Respondent has been commonly known by the domain names.
Hence, the Panel finds that the Complainant has satisfied the requirements of 4(a)(ii) of the Policy.
The Panel is of the opinion that according to the Policy, paragraph 4(b), the Respondent has registered and used the disputed domain names in bad faith.
The Panel is well aware of the notoriety and reputation of the Complainant's trademarks KALE and KALE KILIT.
In the present case, all disputed domain names obviously refer to the Complainant's well known trademarks, slightly amended by an additional generic term “lock” which is in essence nothing else than an English translation of its Turkish equivalent “kilit”.
In line with several previous UDRP decisions, the Panel believes that the registration of domain names fully incorporating a famous trademark without demonstrating a legitimate interest strongly indicated a registration in bad faith, AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; Turkcell Iletisim Hizmetleri A.S. v. GWT, WIPO Case No. D2007-0614.
In particular, the Panel is convinced that the Respondent was well aware that a legitimate use of the disputed domain names would not have been possible without infringing the Complainant's trademark rights, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
This assessment made by the Panel is supported by the fact that the Respondent is located in Turkey and must have known the Complainant, its business and its famous trademarks at the time of registration of the disputed domain names. This is particularly the case as the domain names in dispute have all been registered in August 2009, hence, well after the registration of the relevant trademarks of the Complainant and years after the Complainant started its business and has become the leading lock manufacturer in Turkey and one of the leading manufacturers in the world.
In this regard, the Panel also believes that the Respondent's lack of a formal Response supports the impression that the registration of the disputed domain names has been made in bad faith without any legitimate interest to use them, Awesome Kids LLC v. Selavy Communications, WIPO Case No. D2001-0210.
The Respondent's informal email communication to the Center on April 19, April 21, April 29, and April 30, 2010, stating that it has registered the disputed domain names in order to use them for noncommercial purposes only, does not change the Panel's impression as this unsubstantiated allegation could not convince the Panel of an intended future use in good faith.
Based on the current record, the Panel does not see any possibility of conceiving a good faith use of the disputed domain names by the Respondent.
Hence, the Panel is convinced that the disputed domain names were registered and used in bad faith and that the Complainant has satisfied the third element of the Policy, namely 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, <kalelock.com>, <kalelock.net> and <kalelock.org> be transferred to the Complainant.
Dated: May 14, 2010