WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chryso v. Mustafa Erer / Bahadir Diker
Case No. D2011-1080
1. The Parties
Complainant is Chryso, of Issy les Moulineaux, France, represented by Cabinet Plasseraud, France.
Respondents are Mustafa Erer and Bahadir Diker, of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <chryso.org> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2011. On June 24, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On June 25, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that Respondent Mustafa Erer 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” 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 Respondents of the Complaint, and the proceedings commenced on June 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2011. On June 29 and 30, 2011, the Center received email communications from Respondents, which are described below. On July 19, 2011 the Center notified the parties about the commencement of panel appointment process.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on July 28, 2011. 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
Complainant owns several registrations around the world for the mark and company name CHRYSO, including, for example, Community trademark number 2 788 875, registered on December 21, 2004 in classes 1, 2 and 19.
The disputed domain name was registered on December 29, 2010 and routes users to a website discussing technical information about cement and concrete applications. The website contains links to third-party websites promoting products and services in the concrete fabrication industry. 1
5. Parties’ Contentions
A. Complainant
Complainant avers that it has been active for many years in 70 countries through 14 subsidiaries in the field of providing concrete and cement admixtures. Complainant also avers that Respondent Diker worked as a manager at its Turkish subsidiary until leaving the employ of the company in January 2011.
In its legal allegations under the three required elements of the Policy, Complainant contends that (1) the disputed domain name is identical to marks and trade names in which Complainant has rights, (2) that Respondents lack rights or legitimate interests in respect of the disputed domain name and (3) that the disputed domain name was registered and is being used in bad faith.
In support of the second element, the Complaint alleges that the website to which the disputed domain name routes displays Complainant’s trademarks and photographic images and illustrations belonging to Complainant without permission.2 The Complaint also alleges that despite Respondents’ representations in correspondence between the parties that it was making informational, fair use of the disputed domain name, the website is intended to attract consumers through confusion with Complainant’s trademarks. Complainant contends that the disputed domain name was registered as part of an effort by Respondents to disparage Complainant’s trademarks, to profit from commercial advertising links, and to sell to Complainant the registration for the disputed domain name for an amount in excess of out-of-pocket expenses. Therefore, the Complaint alleges, the use by Respondents is not legitimate.
In respect of bad faith, the Complaint avers that Respondent Diker was a key account manager for Complainant’s Turkish subsidiary, and Respondent therefore knew of Complainant’s company name and trademark rights. Thus, Complainant alleges that Respondent deliberately registered the disputed domain name in bad faith, intending to create the false appearance of affiliation with Complainant. The Complaint also avers that bad faith is shown because Respondents used elements of Complainant’s websites without permission and sought to charge Complainant more than Respondents’ out-of-pocket expense to transfer the disputed domain name.
The Complaint avers that the website to which the disputed domain name routes was not active initially, but was first simply offered for sale. Complainant anonymously asked the price to buy the registration for the disputed domain name and Respondent Diker allegedly responded by email that the price was USD 100,000. .
Complainant states that it then offered USD 700 but did not receive a clear response.
After this exchange, the Complaint alleges that active content was placed on the website, including information relating to the area of activity of Complainant’s business, along with an email contact address. Complainant avers that it therefore sent a cease and desist letter to Respondent Erer at both the email contact listed on the website and the email listed in the Whois record.
As supported by annexes to the Complaint, the cease and desist letter was read by Respondent Diker, who answered on May 26, 2011 stating: “Chryso.org web site is designed to help concrete, cement and admixture producers in terms of formulation, raw material supplier connections and do not aim any commercial benefit. All informations [sic] are free of charge. If your customer has not applied to obtain the internet name extentions of its name, it is his choice to go to court case or purchase this site (taking into account that we invested for this web site). In both cases, you and your customer are welcome. Regards, Bahadir.”
The Complaint avers that Complainant made a further offer of € 1,500, which was refused in favor of a final counter-offer by Respondent Diker of € 20,000. Respondent Diker’s letter of June 7, 2011 states “I am ready to sell it for 20,000 Euros. Please not[e] that this is the final price, please do not propose anything else.” Complainant also alleges that the listed registrant, Respondent Erer, is merely acting as a representative of Respondent Diker.
Based upon the foregoing allegations, Complainant seeks transfer of the disputed domain name.
B. Respondent
Respondent Erer did not reply to Complainant’s contentions. Respondent Diker, however, submitted by email on June 29 and 30, 2011 the following response:
“To whom it may concern,
First of all, please note that www.chryso.org is an information portal and has no any commercial profit
purpose. For this portal, we invested time and money to build it. You can find also the work going on in
http://www.chryso.org/forum.
We still invest money and time for this. The representatives of Chryso have offered some amount which
was very low by the way compared our investment ( 1500 Euros ). That is way we asked 20.000 euros to
compensate our investment for the program expenditures, time and website costs. Then we have
changed our idea to sell it and we have decided to continue to invest.
We are not a commercial company and that is why after some research, we decided to purchase the
extention org . We placed some photos while construction of the website that we found in the internet
( www.google.com ). After their complaint, we are not publishing these photos anymore. No photos or
informations are present in our site to influence Chryso commercially.
Our main purpose is to knowledge people in the field of concrete, cement, aggregates, admixtures and
we noticed that there is a need in this field.
Our Chryso.org means C ( çimento (tr ) cement ), H ( hazır beton (tr) ready mix concrete ), R ( reolji ( tr )rheology , Y ( yayılma (tr ) spread ), S ( Slump ), O ( organisazyon ( tr ) organisation ).
Regards ,
Bahadır Diker”
6. Discussion and Findings
As a threshold matter, the Panel will address the question of proper respondents in this proceeding.
There is no Response to the Complaint by Respondent Erer, the registrant listed in the Whois record. All correspondence leading up to this proceeding, and the informal response to the notification of the Complaint, have been sent by Respondent Diker. There is no suggestion in the record that Mr Diker is acting solely on behalf of the registrant (Erer), and there is credible evidence that Mr Diker had direct involvement with the management of the website to which the disputed domain name routes, in addition to having a material interest in selling the disputed domain name to Complainant.3 The Panel concludes therefore that it is proper to consider both the listed registrant and Mr. Diker as Respondents in this proceeding.
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. (Rules, paragraph 15(a)). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondents have 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
The Panel agrees with Complainant that the disputed domain name is identical to the CHRYSO trademarks, in which Complainant has rights.
Panels disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000 0607; Shangri La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
The Panel concludes, therefore, that Complainant has established the first element of Paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel also concludes that Respondents have no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. (Policy, paragraphs 4(c)(i)-(iii)).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Complainant avers that Respondents are not commonly known by the disputed domain name, and that Respondents have no trademark rights in the disputed domain name or license or authorization from Complainant to use the CHRYSO trademark. In the absence of opposition to these allegations by Respondents, the Panel accepts as true these undisputed factual averments by Complainant.
Complainants also contend that Respondents have no legitimate rights or interests in use of the disputed domain name, suggesting that Respondents intend to use Complainant’s trademarks to divert Internet traffic to a website displaying sponsored commercial link advertising. The Panel agrees.
Annexes to the Complaint and publicly available evidence viewed by the Panel on line show that the disputed domain name is being used to promote products of Complainant’s competitors through the display of links to third-party commercial websites. The Panel finds that Respondents are using Complainants’ marks for their own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079. The Panel therefore finds that this use of the disputed domain name demonstrates Respondents’ lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name. E.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
The Panel concludes, based upon the above factors, that Complainant has established a prima facie case. Despite the email responses of July 29 and 30, 2011, Respondents have not refuted the effect of having displayed links to third-party businesses or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of “rights or legitimate interests” in use of the disputed domain name.4
Having failed to rebut Complainant’s prima facie case, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
In this instance, it is clear that Respondents knew about Complainant’s trademark rights, since Respondent Diker was formerly a manager working for Complainant’s Turkish subsidiary. The Panel further infers that Respondents registered the disputed domain name intending to trade on the value of Complainant’s trademark. The Panel finds that Respondents deliberately attempted to attract Internet users to their website for commercial gain, by creating a likelihood of confusion with Complainant’s marks. The Panel concludes, therefore, that Respondents registered the disputed domain name in bad faith.
The Panel also concludes that the circumstances demonstrate bad faith use of the disputed domain name by Respondents, as elaborated below.
The Panel finds that Respondents’ contentions that the website to which the disputed domain name routes is noncommercial, and simply an attempt to provide information, lacks credibility. Currently available online screens from Respondents’ website show that the disputed domain name is used to promote sales of competitors of Complainant in the cement and concrete industries. This constitutes use in bad faith. Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; and Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).
Moreover, Respondents’ insistence on requiring that Complainant buy the registration for the disputed domain name for no less than € 20,000, an amount clearly in excess of Respondents’ out-of-pocket expenses (alleged in Respondent Diker’s response to be € 1,500), is a clear ground for finding bad faith under paragraph 4(b)(i) of the Policy.
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondents in bad faith under 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 <chryso.org> be transferred to Complainant.
Nasser A. Khasawneh
Sole Panelist
Dated: August 10, 2011
1 The Panel has undertaken limited research by visiting online the website to which the disputed domain name routes, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5.
2 The Complaint annexes considerable evidence respecting the allegedly copied material.
3 As noted earlier, responses on behalf of the registrant to the correspondence by Complainant’s counsel were signed by Mr. Diker, who also used the first person “I” when discussing the sale of the disputed domain name.
4 The Panel notes that the Complainant contends that there is no conceivable use of its trademarks in a domain name like the one presently under consideration that would be permissible under the Policy. Such a sweeping assertion is not addressed by the Panel in this Decision; the existence of links on Respondents’ website to other commercial businesses means that Respondents are not in this case, as they represent, simply providing public information without commercial interest.