WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Borçelik Çelik Sanayi Ticaret Anonim Şirketi v. Contact Privacy Inc. / Naci Varol

Case No. D2012-0083

1.The Parties

The Complainant is Borçelik Çelik Sanayi Ticaret Anonim Şirketi of Istanbul, Turkey, represented by BTS & Partners, Turkey.

The Respondent is Contact Privacy Inc. of Toronto, Canada and Naci Varol of Antalya, Turkey.

2. The Domain Name and Registrar

The disputed domain name <borcelik.xxx> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2012. On January 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2012, the Registrar 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 January 23, 2012 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 January 30, 2012.

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”).

On January 28, 2012, the Center received an email communication from the Respondent requesting the language of the administrative proceedings to be the Turkish language. The Center acknowledged its receipt on January 31, 2012.

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 February 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2012.

The same day, the Center received another email communication from the Respondent containing some statements on the term “Borçelik” in the Turkish language. The Center acknowledged its receipt on February 23, 2012. The Center received a further email communication from the Respondent on February 23, 2012 in which the Respondent asked for further information on the administrative proceedings. The Center acknowledged its receipt on February 27, 2012.

The Center appointed Kaya Köklü as the sole panelist in this matter on February 28, 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

The Complainant is a group member of the well-known Borusan Holding in Turkey. The Borusan Holding comprises more than 10 groups of companies operating in various industrial sectors, like in the steel, energy, distributorship and logistics sectors. The first company of Borusan was founded in 1944. The Complainant, meanwhile one of the largest group members of the Borusan Holding, is a leading flat steel manufacturer in Turkey.

The Complainant is the registered owner of several Turkish trademarks comprising the word ”Borçelik”. As evidenced by the Complaint, one of the recent BORÇELİK trademark registrations in Turkey dates back to the year 2007 and covers protection for various kinds of treatment of materials as defined in class 40 of the Nice Classification.

Additionally, the term “Borçelik” is also part of the Complainant’s company name.

Furthermore, the Panel recognizes that the Complainant has also registered and operates its company name and trademark BORÇELİK as a domain name under <borcelik.com.tr>.

The original Respondent named in the Complaint was Contact Privacy Inc. of Toronto, Canada, but the registrar Tucows Inc. subsequently disclosed that the registrant of the disputed domain name is an individual named Naci Varol of Antalya, Turkey.

Based on the current record, the disputed domain name <borcelik.xxx> was created on December 9, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical to the Complainant’s company name and trademark BORÇELİK. The Complainant believes that the Respondent deliberately registered the disputed domain name being well aware of the Complainant’s prevailing trademark rights.

Furthermore, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. It is stated that the Complainant has never granted a license, consent or any other rights by which the Respondent would have been entitled to register or use the disputed domain name.

In addition, the Complainant believes that the Respondent has never used and does not intend to use the disputed domain name for a bona fide noncommercial offering of goods or services.

The Complainant has no doubts that the Respondent must have known the Complainant and its trademark BORÇELİK before the registration of the disputed domain name, and hence must have registered and used the disputed domain name in bad faith.

B. Respondent

The Respondent did not formally or properly reply to the Complainant’s contentions.

However, the Center received some informal email communications on January 28, 2012 and February 22 and 23, 2012.

In the first email communication, the Respondent requests that the language of the proceedings be the Turkish language. Additionally, the Respondent asserts that the term “borçelik” is a combination of two Turkish generic terms, namely “bor” and “çelik” (standing for “boron” and “steel” in the English language).

However, the Respondent has not filed a conclusion or a request to deny the contentions and remedy claimed by the Complainant.

6. Discussion and Findings

According to paragraph 11 of the Rules since the Parties have not agreed otherwise, the Panel finds that the language of the administrative proceedings is the language of the registration agreement for the disputed domain name (i.e. English, as confirmed by the Registrar).

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 is satisfied:

(i) The disputed domain name is 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 disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

Concerning the uncontested information provided by the Complainant, the Panel may accept the provided reasonable factual allegations in the Complaint as true, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

In this regard, the Panel finds that the informal email communications received by the Center on January 28, 2012 and February 22 and 23, 2012 do not qualify to be a properly drafted response to the Complaint. However, as they indicate a sort of argumentation on the merits of the case, the Panel in its decision will nevertheless consider these informal email communications.

It is further noted that an independent research, by visiting the Internet site linked to the disputed domain name and by searching for further information on the trademark BORÇELİK, has been performed by the Panel on March 9, 2012. The competence of the Panel to perform such independent research is in line with previous UDRP decisions (see, e.g. Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038).

Finally, it is noted that the Panel has taken note of the WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

A. Identical or Confusingly Similar

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in BORCELİK (Annex 4 of the Complaint). As evidenced by the Complainant, the trademark BORÇELİK was registered years before the registration of the disputed domain name.

Second, the Panel finds that the disputed domain name is identical to the Complainant’s trademark BORÇELİK. The disputed domain name is an identical adoption of the registered trademark BORÇELİK and does not incorporate any changes or additions.

The mere addition of the “.xxx” TLD has no distinguishing effect and may as a general principle not to be considered when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP panels concerning the use of the letters “xxx” within disputed domain names, cf. V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054).

Moreover, in its assessment, the Panel has taken into account that due to the use of the “.xxx” TLD, which is primarily for adult entertainment content, Internet users may associate the disputed domain name with an adult related website instead of a steel company’s website. Such Internet users may conclude in advance that any website linked to a domain name ending with the “.xxx” TLD, even if comprising the Complainant’s mark, will likely not be operated by the trademark owner itself. In fact, Internet users may not expect a steel company to provide sexual content or comparable services on the Internet. Nevertheless, it is the Panel’s view that this does not per se exclude a likelihood of confusion. The Panel rather believes that even if the “.xxx” TLD is currently associated mainly with adult content, there is still a valid risk of confusion among Internet users, in particular if well-known trademarks are concerned. Given the notoriety of the Complainant’s Turkish trademark in this particular case, the Panel is convinced that any use of a domain name fully incorporating the Complainant’s trademark BORÇELİK will most likely result in confusion among Internet users with respect to the Complainant’s existing trademark rights (cf. Deutsche Bank Aktiengesellschaft v. New Work TV Tickets Inc., WIPO Case No. D2001-1314).

Hence, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.

While the burden of proof remains with the Complainant, the Panel recognizes that this would result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of 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 file any evidence or argument to demonstrate a right or legitimate interest in the disputed domain name according to paragraph 4(a)(ii) and 4(c) of the Policy.

With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no trademark, license or any similar rights to use the Complainant’s mark in the disputed domain name.

In the absence of a properly filed Response, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under paragraph 4(c) of the Policy or any other evidence of a right or legitimate interest in the disputed domain name.

The Respondent’s allegation (raised in his informal email communication of February 22, 2012) that the trademark BORÇELİK is a combination of two Turkish generic terms, namely “bor” and “çelik” (standing for “boron” and “steel” in the English language) is in the Panel’s view of no relevance. In this context, the Respondent did neither question the validity of the Complainant’s trademark nor demonstrate his use or demonstrable preparations to use the combination of the terms “bor” and “çelik” in a generic or descriptive way.

There is also no indication in the current record that the Respondent is commonly known by the disputed domain name, particularly given that the disputed domain name has been registered just recently on December 9, 2011. As the disputed domain name is inactive, there is virtually no option to associate a concrete person or company with the disputed domain name.

Finally, there is also no indication in the case file that the Respondent is planning to make a bona fide noncommercial or fair use of the disputed domain name without the intent for commercial gain to misleadingly divert users or to tarnish the trademark BORÇELİK.

Overall, the Panel concludes that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel is well aware of the reputation and recognition of the Complainant’s trademark BORÇELİK in Turkey. The Panel believes that the Respondent must have known this trademark when the disputed domain name was created on December 9, 2011.

This assessment is in particular likely as the disputed domain name was registered many years after the Complainant’s trademark BORÇELİK had become registered and recognized in Turkey.

Another indication for bad faith registration and use is that the disputed domain name is fully identical to the Complainant’s trademark BORÇELİK.

As previously noted, the disputed domain name does not resolve to an active website. Having examined all the circumstances of the case, the Panel finds that the lack of active use of the disputed domain name does not as such prevent a finding of bad faith.

Overall, the Panel finds that the above demonstrates bad faith registration and use.

The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii).

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 <borcelik.xxx> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Dated: March 11, 2012