World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Materis Corporate Services and Parexgroup and Parexlanko v. Bahadir Diker - Molekul Yapi Kimyasallari A.Ş. and Mustafa Erer and Timur Artun – Materis Web Tasarim Hizmetleri

Case No. D2011-2108

1. The Parties

The Complainants are Materis Corporate Services and Parexgroup and Parexlanko of Issy les Moulineaux, France.

The Respondents are Bahadir Diker - Molekul Yapi Kimyasallari A.Ş. and Mustafa Erer and Timur Artun - Materis Web Tasarim Hizmetleri of Istanbul, Turkey.

2. The Domain Names and Registrar

The disputed domain names <lanko.org>, <materis.org> and <parexlanko.org> are registered with FBS Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2011. On December 2, 2011, the Center transmitted by e-mail to FBS Inc. a request for registrar verification in connection with the disputed domain names. On December 5, 2011, FBS Inc. transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. Specifically, in its e-mail dated December 5, 2011, FBS Inc. indicated Mustafa Erer as the registrant of all three disputed domain names. On December 12, 2011, the Center transmitted by e-mail to FBS Inc. confirmation of receipt of their e-mail dated December 5, 2011 and noted the following discrepancies:

- on December 2, 2011, the date on which the Complaint was filed, the WhoIs record indicated Bahadir Diker of Molekul Yapi Kimyasallari A.Ş. of Istanbul, Turkey as the registrant of all three disputed domain names;

- on December 5, 2011, FBS Inc. indicated Mustafa Erer of Istanbul, Turkey as the registrant of all three disputed domain names;

- on December 12, 2011, the WhoIs record indicated Timur Artun of Materis Web Tasarim Hizmetleri of Istanbul, Turkey as the registrant of <materis.org> and Bahadir Diker of Molekul Yapi Kimyasallari A.Ş. of Istanbul, Turkey as the registrant of the remaining two disputed domain names, namely, <lanko.org> and <parexlanko.org>.

The Center further reminded FBS Inc. that under paragraph 8 of the Policy, during a pending UDRP proceeding, a registrant may not transfer the domain name registration to another domain name holder (registrant) or registrar for a period of fifteen business days after such proceeding is concluded. The Center further noted that contrary to paragraph 8 of the Policy, it appears a transfer of the disputed domain name <materis.org> to another registrant has been made after the filing of the Complaint on December 2, 2011 requesting FBS Inc. a) explanation if such assumption was accurate and to confirm that the current registrant and contact details for the domain name <materis.org> have been restored, b) to provide the full registrant and contact details to the extent possible for all three disputed domain names and c) to confirm that all three disputed domain names are under registrar lock. On December 15, 2011, FBS Inc. transmitted by e-mail to the Center its response disclosing Mustafa Erer as the registrant for the disputed domain names. On December 22, 2011, the Center transmitted by e-mail to FBS Inc. confirmation of receipt of their e-mails dated December 5, 15 and 20, 2011 and noted that the WhoIs records continued to indicate discrepancies as detailed in the Center’s e-mail communication dated December 5, 2011. On the same day the Center sent e-mail communication to the Complainants advising that the registrant of the disputed domain names has been identified by the concerned Registrar, FBS Inc., as being different to the entity named in the Complaint as Respondent, providing the registrant and contact information disclosed by the Registrar, thereby, inviting the Complainants to file an amendment to the Complaint by December 27, 2011. The Complainants filed an amended Complaint on December 26, 2011.

On December 12, 2011 the Respondent, Timur Artun, sent two e-mail communications to the Center and the Complainants. The first e-mail communication stated that the disputed domain name <materis.org> was for his newly established company Materis Web Design and Programming Consulting Services which does not operate in the same sector as the Complainants. The e-mail further disclosed that the disputed domain name had been transferred to him as a gift for his newly established company. Later the same day Timur Artun sent a second e-mail indicating that the disputed domain name was used by his company Materis Web Design and Programming Consulting Services as a criticism site of businesses. The same Respondent sent an e-mail on December 23, 2011 but the e-mail did not contain any information material to the issues in these proceedings. A further e-mail communication was sent in Turkish by the same Respondent on January 24, 2012 stating that e-mail communications sent by him are registered with a Notary Public and threatened to initiate legal action if they are not considered.

On December 22, 2011, the Center informed the parties, in Turkish and English, that Turkish is the language of the registration agreement and that, pursuant to paragraph 11 of the Rules, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise. Due to the fact that the Complaint was submitted in English, the Complainants were requested to i) provide evidence of an agreement between the Complainants and Respondents that the proceeding should be in English or, ii) submit the Complaint translated into Turkish or, iii) submit a request with supporting arguments for English to be the language of the administrative proceedings.

The Complainants replied to the notification the following day requesting that the language of the proceedings remain English and contending that the Respondents are familiar with the English language and are definitively able to understand and use it. The Respondents did not reply to the notification.

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 Respondents of the Complaint, and the proceedings commenced on January 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2012. On December 12 and 23, 2011, the Center received e-mail communications from the Respondent Timur Artun as mentioned above; however, the Respondents did not submit any formal response. Accordingly, the Center notified the Respondents’ default on January 24, 2012.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on February 2, 2012. 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

Although acting as three separate entities, the Complainants are part of the same corporate MATERIS CORPORATE SERVICES group. MATERIS CORPORATE SERVICES is a holding company consisting of four businesses, admixtures (CHRYSO), aluminates (KERNEOS), mortars (PAREXGROUP) and paints (MATERIS PAINTS).

MATERIS GROUP SERVICES owns the following trademark registrations:

- French trademark MATERIS No. 3087504 registered on March 8, 2001

- Community Trademark (CTM) MATERIS PAINTS registered on November 2, 2005

PAREXGROUP is a subsidiary of MATERIS CORPORATE SERVICES and specializes in mortars for the construction industry. PAREXGROUP owns the following trademark registrations:

- French trademark LANKO No. 1481375 registered on August 3, 1988

- International trademark LANKO No. 510865 registered on May 4, 1987

PAREXLANKO is a subsidiary of PAREXGROUP and specialises in mortars. PAREXLANKO owns the following trademark registrations:

- French trademark PAREXLANKO No. 3216943 registered on March 19, 2003

- International trademark PAREXLANKO No. 956735 registered on February 29, 2008

The disputed domain names were registered on June 27, 2011 as evidenced in Annex 8 of the Complaint. The Respondent, Bahadir Diker, is a former employee of the Complainants as evidenced in Annex 18 of the Complaint. The Respondent, Mustafa Erer is an individual and the Respondent Timur Artun purports to be the owner of Materis Web Tasarim Hizmetleri of Istanbul, Turkey.

5. Parties’ Contentions

In accordance with paragraph 4(b)(i) of the Policy, the Complainants request that the disputed domain names <materis.org>, <parexlanko.org> and <lanko.org> be transferred to the Complainants. The Complainants submit the grounds for these proceedings are listed in paragraph 4(a) of the Policy.

A. Complainants

Identical or Confusingly Similar

The Complainants submit the disputed domain name <materis.org> is confusingly similar to their trademark MATERIS which was registered on March 8, 2001 in France and by the OHIM on November 2, 2005, as evidenced in Annex 13 of the Complaint. The Complainants also registered the domain names <materisgroup.com> and <materisgroup.eu> on October 3, 2006 as evidenced in Annex 13 of the Complaint and both domain names are redirected to <materis.com>.

The Complainants contend the disputed domain name <lanko.org> is confusingly similar to their trademark LANKO which has several international trademark registrations, including International Trademark registration with Madrid system on May 4, 1987 as evidenced in Annex 14 of the Complaint. The Complainants also registered the domain names <lanko.eu> and <lanko.asia> on April 10, 2006 and May 29, 2008 respectively, as evidenced in Annex 14 of the Complaint.

The Complainants argue the disputed domain name <parexlanko.org> is confusingly similar to their trademark PAREXLANKO which has several international trademark registrations including registration in France on April 20, 2005 and an International Trademark registration with Madrid system on February 29, 2008, as evidenced in Annex 15 of the Complaint. The Complainants also registered the domain names <lparexanko.com> and <parexlanko.asia> on February 7, 2003 and January 22, 2008 respectively, as evidenced in Annex 15 of the Complaint.

The Complainants therefore contend that the disputed domain names are identical or confusingly similar to trademarks or service marks in which the Complainants have rights.

Rights or Legitimate Interests

The Complainants assert that the Respondents have no rights or legitimate interests in the disputed domain names. The Respondents do not have any registered trademarks or trade names corresponding to the disputed domain names and the Respondents are not known by the disputed domain names. The Complainants submit that they have not licensed, or otherwise permitted the Respondents to use their trademarks or to apply for or use any domain names incorporating them. The Complainants note that at least the Respondents Bahadir Diker and Mustafa Erer knew of the Complainants as they were previously involved in a Chryso v. Mustafa Erer / Bahadir Diker, WIPO Case No. D2011-1080 with Crhyso, a subsidiary of Materis Corporate Services.

The Complainants note that <parexlanko.org> and <lanko.org> are redirected to an error page, they further note that until December 2, 2011 <materis.org> also redirected to an error page but currently redirects to a page that states “Materis Web Design and Programming Consulting Services” as evidenced in Annex 20 of the Complaint. The Complainants contend that the Respondents are not using the disputed domain names for a legitimate noncommercial or fair use without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademarks or service marks at issue, as when the site <materis.org> was active it provided information regarding the trade activities of the Complainants which would lead to confusion as evidenced in Annex 11 of the Complaint. Furthermore, even if used only for informative purposes a domain name that does not infringe the Complainants rights or risk confusing consumers could be used.

The Complainants submit that the Respondent Bahadir Diker was a former employee of Chryso Turkish subsidiary until January 3, 2011 as evidenced in Annex 18 of the Complaint. Therefore, the Respondent Bahadir Diker was clearly aware of the Complainants extensive goodwill and reputation of their trademarks MATERIS, LANKO and PAREXLANKO when it registered the disputed domain names on June 27, 2011. Similarly, the Respondent Mustafa Erer was familiar with the Complainants due to the prior UDRP proceedings. The Complainants further contend the fact Bahadir Diker is a former employee is not sufficient to establish rights or legitimate interests in the disputed domain names.

The Complainants contend that there is no bona fide use of the disputed domain names and that they were registered in bad faith as the Respondents knew they would lose the prior WIPO case.

Registered and Used in Bad Faith

The Complainants contend that the Respondent Bahadir Diker a former employee was aware of the Complainants’ rights in it trademarks, MATERIS, LANKO, PAREXLANKO when he registered the disputed domain names. It is alleged that Mustafa Erer acts on behalf of Bahadir Diker as established in the prior UDRP proceeding and he is also aware of the Complainants rights for the same reasons. The Complainants contend that the Respondent Bahadir Diker registered the disputed domain names to harm and damage the Complainants. The Complainants submit documentary evidence in Annex 11 of the Complaint of content from the disputed domain name <materis.org> prior to the Complaint and note the webpage contains negative statements about the Complainants and invites others to boycott Chryso, subsidiary of the Complainants.

The Complainants note that the disputed domain names <parexlanko.org> and <lanko.org> do not resolve to an active website and contend that the Respondents registered the disputed domain names in order to prevent the Complainants as the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.

B. Respondents

The Respondents did not reply to the Complainants contentions. Pursuant to paragraph 5(e) of the Rules, if a respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint.

However, respondent’s failure to respond proceeding does not constitute an admission of any pleaded matter. Therefore, the Panel will proceed to evaluate the Complainants’ evidence and conduct his own examination of the Respondents’ websites in light of the requirements of paragraph 4(a) of the Policy, Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

Although a formal response was not submitted, on December 12, 2011, the Respondent Timur Artun sent an e-mail to the Center stating that the disputed domain name <materis.org> had been transferred to him as a gift. Later the same day, Timur Artun sent a second e-mail indicating that the disputed domain name was used by his company Materis Web Design and Programming Consulting Services as a criticism site of businesses. The same Respondent sent an e-mail on December 23, 2011 but the e-mail did not contain any information material to the issues in these proceedings. The last communication from the same Respondent is of January 24, 2012, in Turkish, where it threatened to initiate legal action in the event his e-mail communications were not considered.

6. Discussion and Findings

There are procedural matters which should be disposed of as a preliminary matter. The first procedural matter relates to the Respondent Timur Artun’s unsolicited Supplemental Filings on December 12, 2011, December 23, 2011 and January 24, 2012, the second matter relates to the identity of the Respondents and discrepancies in registrant details, the last matter relates to language of the proceedings.

Unsolicited Supplemental Filings

The Rules make no explicit provision for supplementary filings and they are admissible at the Panel’s discretion, having regard to paragraphs 10(a) and 10(b) of the Rules to conduct the proceedings in a manner it considers appropriate under the Policy and Rules, subject to the requirements that the parties are treated with equality. The Panel has, therefore, decided to accept the supplemental filings and to take them into consideration when rendering its decision.

Identity of the Respondents

The Complaint was initially brought against Bahadir Diker. In accordance with the WhoIs records available on December 2, 2011, the date the Complaint was filed, the disputed domain names were registered on June 27, 2011 and the registrant was Bahadir Diker. Since service of the Complaint, presumably on December 5, 2011, the date of the last update to registrant details, registration of <materis.org> changed to Timur Artun, Materis Web Tasarim Hizmetleri of Istanbul, Turkey. Despite the WhoIs records the registrar FBS Inc. identified Mustafa Erer of Istanbul, Turkey as the registrant of all three disputed domain names.

Having established the history of the disputed domain name registration, whereby Bahadir Diker was the registrant at the time of submission of the Complaint, the registrar FBS Inc. identified Mustafa Erer and WhoIs listed Timur Artun as the registrant of <materis.org>. The Complainants allege that Mustafa Erer is the “front man” for Bahadir Diker as established in a previous dispute, Chryso v. Mustafa Erer / Bahadir Diker, WIPO Case No. D2011-1080. Furthermore, the Complainants state that Bahadir Diker, the original registrant, is behind all three registrations and the transfer to Timur Artun constitutes cyber flight in breach of paragraph 8 of the Policy.

Paragraph 8 of the Policy prohibits, inter alia, transfer of the domain name registration to another holder during a pending administrative proceeding. Although the meaning of “pending proceeding” is not explicitly stated, prior cases have found that process starts from the filing of the complaint, PREPADOM v. Domain Drop S.A. (PREPADOM-COM-DOM), WIPO Case No. D2006-0917, Imperial Chemical Industries, PCL. v. Oxford University, WIPO Case No. D2001-0292.

Although the exact date of transfer has not been provided, on the balance of probabilities the Panel infer the disputed domain name <materis.org> was transferred after receipt of the Complaint in an attempt to circumvent proceedings. Therefore the Panel finds such transfer was in breach of paragraph 8(a) of the Policy and constitutes cyber flight, Humana Inc. v. CDN Properties Incorporated, WIPO Case No. D2008-1688.

In accordance with paragraph 14(b) of the Rules, the Panel is permitted to draw such inferences as it considers appropriate from a party’s failure to comply with a provision of, or requirement under the Rules. As stated above, the Panel finds breach of paragraph 8(a) and the Panel draws an inference, in absence of any Response the Respondents do not dispute the allegations in the Complaint of the relationship between the Respondents. Furthermore, the Respondent Timur Artun accepts that the domain name was transferred to him as a gift which suggests that it was to avoid proceedings and constitutes cyber flight. Furthermore, The relationship between Bahadir Diker and Timur Artun is established by admission. Therefore, in the absence of any information or evidence offered by the Respondents to the contrary, the Panel infers that all three Respondents are connected and as a change of registrant in these circumstances can not affect the proceedings, Unilever PLC v. ABC Corp., WIPO Case No. D2003-0164, the Panel shall go on to consider the Complaint against all three Respondents.

Language of the Proceedings

The Registrar of the disputed domain names has informed the Center that the language of the relevant registration agreement is Turkish. On December 22, 2011, the Center sent a notification to the Parties stating that, according to information provided from the concerned registrar, the language of the registration agreement is Turkish.

The Complainants submit that English should be the language of the proceedings as the Respondents clearly understand English. The Complainants rely on the fact that prior UDRP proceeding initiated against the Respondents Bahadir Diker and Mustafa Erer was conducted in English without any difficulty on the part of the Respondents. The Respondents did not make any representations with regards to the language of the proceedings.

The Center sent notification of the Complaint and invited the Respondents to make submission regarding the language of the proceedings in both English and Turkish. The Panel is therefore satisfied that the Respondents had notice of the proceedings and an opportunity to request that it proceed in Turkish; however, the Respondents failed to submit any response at all.

The Panel is satisfied that all parties can understand and communicate in English. The Panel considered that the Respondents, Bahadir Diker and Mustafa Erer have previously been subject to UDRP proceedings held in English and that Timur Artun sent e-mail communications, after receipt of notification regarding the language of the proceedings, in English suggesting not only that he understands and can communicate in English, but that he chose to communicate in English.

In reaching its decision regarding the language of the proceeding the Panel has considered paragraph 11 of the Rules, the fact that the Center sent all the communications in both languages, Turkish and English, and as such, the Panel is satisfied that the Respondents had fair notice of the dispute. Further, based on the lack of any response, in the Panel’s view, the Respondents will not be prejudiced by a decision being rendered in English.

For all the above reasons, the Panel determines, according to paragraph 11(a) of the Rules, that the language of these proceedings be English.

The Panel turns to the merits of the case. In accordance with paragraph 4 of the Policy, the Complainants request that the disputed domain names be transferred to the Complainants. The Complainants submit the grounds for these proceedings are listed in paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

Registration of a trademark satisfies the threshold requirement of having trademark rights. The Panel is satisfied that the Complainants are registered owners for trademarks MATERIS, LANKO, PAREXLANKO as evidenced by trademark certificates in Annexes 13,14 and 15 of the Complaint and such registrations predate the registration of the disputed domain names.

While not dispositive under the first element, the Panel notes the Complainants have registered a number of domain names incorporating their trademarks. It is clear that the only difference between the disputed domain names <materis.org>, <parexlanko.org> and <lanko.org> and the Complainants registered domain names is the gTLD “.org”. The Panel finds the addition of a gTLD suffix is irrelevant when determining whether a disputed domain name is confusingly similar to the complainant’s trademark, PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2009-0009. It has been stated in several decisions by other UDRP panels that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941.

Following Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903, a domain name that reproduces the trademark in its entirety is confusingly similar to the mark. It has been stated in several decisions by other UDRP administrative panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark. The panel recognises the Complainants’ rights and concludes that the disputed domain names are identical or confusingly similar with the Complainants’ trademarks.

The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled, consequently, the Panel finds for the Complainants on the first element of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii) of the Policy, the Complainants must prove that the Respondents have no rights or legitimate interests in respect of the disputed domain names. Although the Policy states that the Complainants must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative and therefore it has been generally accepted under the Policy that, once a complainant has presented a prima facie case of a respondent’s lack of rights or legitimate interests in a domain name, the burden shifts to the respondent.

The Complainants contend that the Respondents have no rights or legitimate interests in the disputed domain names; there is no supporting trademark registration, neither association to the Complainants, nor a connection to the disputed domain names and the Respondents are not commonly known by the disputed domain names. This has not been contested by the Respondents and the Panel finds no evidence to suggest the Respondents are commonly known by the disputed domain names or that there are other grounds to establish a legitimate interest to justify choosing the disputed domain names which incorporate the Complainants’ trademarks.

The Complainants note that <parexlanko.org> and <lanko.org> are redirected to an error page, they further note that until December 2, 2011 <materis.org> also redirected to an error page but currently redirects to a page that states “Materis Web Design and Programming Consulting Services” as evidenced in Annex 20 of the Complaint. The Panel visited the disputed domain names and notes that although still under construction the content of the webpage of <materis.org> has changed when compared to the screenshot submitted in Annex 20 of the Complaint. The Complainants also submit evidence in Annex 11 of the Complaint that the website <materis.org> prior to the Complaint was an active website containing information about Chryso cement and also stating that the website “chryso.org” had been unfairly taken from the owners and that the company should be boycotted. The Panel therefore adduces that the recent transfer of <materis.org> to Timur Artun was a cyber flight and although the Respondent claims that the domain name <materis.org> is a gift for his business “Materis Web Design and Programming Consulting Services”, there is no evidence of such entity, its activities or preparations to use the disputed domain name for legitimate purposes. The Respondent Timur Artun claims that it is developing a website for the disputed domain name <materis.org> and intends to use the website as a criticism site. However it has failed to provide any evidence of “demonstrable preparations” which suggests there is no such intention, Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000. Aside from the Respondent Timur Artun’s statement, there is no evidence of such intended use and the Panel does not accept that this alone provides sufficient evidence to draw the conclusion that the disputed domain name <materis.org> will in fact be used for a bona fide offering of goods or services as the Respondent claims.

On the balance of probabilities, the Panel is of the opinion that Timur Artun was aware of the Complainants marks and “his friend’s” intention in giving him the disputed domain name as a “gift”. The Panel further finds that the Respondent Mustafa Erer was familiar with the Complainants due to the prior UDRP proceedings and the Respondent Bahadir Diker obviously was aware of the Complainants and their rights due to his former employment by the Complainants.

The disputed domain names do not currently resolve to a website and therefore there are no grounds to suggest that the Respondents have rights or legitimate interests in using the disputed domain names identical to the Complainants trademarks. Furthermore, the Respondents are not making use of the disputed domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services and the domain names resolve to inactive websites.

In the absence of a response, the Respondents were unable to demonstrate rights or legitimate interests in the disputed domain names and there is no evidence to suggest that the Respondents, or any business operated by them, are commonly known by the disputed domain names. The Panel is of the opinion that the Respondents’ use of the disputed domain names cannot be considered a bona fide or fair or noncommercial use.

Paragraph 4(a)(ii) of the Policy requires the Complainants to prove that the Respondents have no rights or legitimate interests in the disputed domain names. The Complainants have established a prima facie case and therefore the Panel concludes that the Respondents have not satisfied paragraph 4(c) of the Policy and concludes that the Respondents have no rights or legitimate interests in all three disputed domain names.

The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy are fulfilled and consequently finds in favour of the Complainants on the second element of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainants must prove that the disputed domain names have been registered and are being used in bad faith.

As detailed above, the Panel is convinced that the Respondents knew or should have known of the Complainants rights in their trademarks. The Complainants’ trademarks were registered long before the Respondents registered the disputed domain names and the Panel finds in all likelihood that the Respondents were aware of both the Complainants and their trademarks at the time of registering the disputed domain names. It is clear that the Respondents Bahadir Diker and Mustafa Erer knew of the Complainants due to the previous UDRP proceeding between the parties and the Panel finds on a balance of probabilities that at the date of transfer of the disputed domain name <materis.org> Timur Artun knew of the Complainants rights, hence, accepting transfer and attempting to legitimise such transfer through his alleged company “Materis Web Design and Programming Consulting Services”. It is therefore clear to the Panel that the Respondents, at the time of registration of the disputed domain names, must have been aware that any use of the said domain names would result in a violation of the Complainants’ trademark rights, suggesting that there was never an intention of good faith use from the part of the Respondents, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

The Panel also finds the Respondent Bahadir Diker has acted in bad faith by changing the registration details of <materis.org> after receiving the Complaint. This is a clear example of cyber flight and is in violation of paragraph 8 of the Policy. In previous UDRP cases the Panel has found cyber flight to be indicative of bad faith, British Sky Broadcasting Group plc v. Mr. Pablo Merino and Skyservices S.A., WIPO Case No. D2004-0131. Furthermore, the Respondents have attempted to mislead the Panel into believing that the Respondent Timur Artun has good reason to register the disputed domain name <materis.org> which again indicates bad faith. Additionally, the Panel finds that the lack of a response from the part of the Respondents is further suggestive of bad faith, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.

The Panel turns to the use of the disputed domain names and notes that none of the disputed domain names resolve to an active website and that there is no evidence to suggest that there is any intention to make use of the disputed domain names for any purpose or legitimate activity consistent with good faith use. Previous UDRP panels have found that passive holding of a domain name is in violation of the Policy and may constitute bad faith, as found in several UDRP decisions, Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon, WIPO Case No. D2004-0245, DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232, CareerBuilder LLC, v. Finity Development Group, WIPO Case No. D2006-0615.

As in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonnoma International LDC, WIPO Case No. D2002-0131 after examining all circumstances surrounding the registration and use of the disputed domain names, the Panel finds that the Respondents registered and are using the disputed domain name in bad faith. Accordingly the Panel finds in favour of the Complainants on the third element 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 domain names <lanko.org>, <materis.org> and <parexlanko.org> be transferred to the Complainants.

Gökhan Gökçe
Sole Panelist
Dated: February 23, 2012

 

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