WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Omya AG v. Husnu Gedikoglu
Case No. D2011-1885
1. The Parties
The Complainant is Omya AG of Oftringen, Switzerland, represented by Omya Management AG, Switzerland.
The Respondent is Husnu Gedikoglu of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <omyacarb.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2011. On November 1, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 1, 2011, GoDaddy.com, Inc. 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 November 9, 2011 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 amendment to the Complaint on November 11, 2011.
The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 14, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2011.
The Center appointed Dr. Brigitte Joppich as the sole panelist in this matter on December 9, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant and its affiliates are global producers of industrial minerals material and worldwide distributors of chemical products. Founded in 1884 in Switzerland, the Complainant and its affiliates have today a global presence at more than 100 locations in over 50 countries and 7,000 employees.
The Complainant is registered owner of trademarks protecting the word “OMYACARB” in more than 40 countries for goods in a variety of classes, inter alia through a Turkish trademark registration no. 122401 OMYACARB, registered on September 28, 1990, and a Community trademark registration no. 000570747 OMYACARB, registered on January 25, 1999 (hereinafter referred to as the “OMYACARB Marks”).
The disputed domain name was registered on January 4, 2006, and is linked to the website of SOMGROUP, a Turkish manufacturer, exporter, and importer of construction materials, micronized industrial minerals, chemical raw materials and furniture accessories, available at www.somgroup.net.
The Complainant sent a cease-and-desist letter to the Respondent’s domain proxy service on January 4, 2011, which remained unanswered.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is identical to the OMYACARB Marks.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as there is no evidence of 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, as the Respondent has never been commonly known by the domain name and as the Respondent is making an illegitimate and unfair commercial use of the disputed domain name, misleading market participants and tarnishing the Complainant’s trademarks.
(3) With regard to bad faith, the Complainant contends that the OMYACARB Marks are well known and that the Respondent had to be very well aware of the Complainant’s rights when registering the disputed domain name, that the Respondent is forwarding the disputed domain name to the website of one of the Complainant’s competitors, that the Respondent did not reply to the Complainant’s cease and desist letter, and that the disputed domain name was registered or acquired primarily for the purpose of attracting Internet users to the Respondent’s website or a website of a third party for whom the Respondent acts for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s OMYACARB Marks in which the Complainant enjoys rights and therefore is identical to such marks. It is established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds the Complainant satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 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 domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the Complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the Respondent's rights or legitimate interests in the disputed domain name will then shift to the Respondent.
The Complainant substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use of the disputed domain name in connection with a website of one of the Complainant’s competitors is no bona fide use under the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(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; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(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.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the OMYACARB Marks. The Complainant provided evidence that the OMYACARB Marks are well established in numerous countries worldwide. As the OMYACARB Marks are highly distinctive and as the Respondent, located in Turkey, forwards the disputed domain name to a website of one of the Complainant’s direct competitors located in Turkey, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the OMYACARB Marks.
As to bad faith use, by using the disputed domain name in connection with one of the Complainant’s competitors’ website the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to another online location for commercial gain as set out under paragraph 4(b)(iv) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <omyacarb.com> be transferred to the Complainant.
Dr. Brigitte Joppich
Dated: December 16, 2011