WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
upjers GmbH und Co. KG v. Aşkın Ceyhan
Case No. D2012-0823
1. The Parties
The Complainant is upjers GmbH und Co. KG of Bamberg, Germany, represented by Schulte Riesenkampff Rechtsanwaltsgesellschaft mbH, Germany.
The Respondent is Aşkın Ceyhan of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <upjers.net> is registered with IHS Telekom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2012. On April 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent 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”).
On April 25, 2012, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On April 27, 2012, the Complainant requested English to be the language of the proceedings. The Respondent did not submit any comments.
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 May 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2012.
The Center appointed Kaya Köklü as the sole panelist in this matter on May 29, 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 Germany-based company that provides online browser games. It is the registered owner of the German trademark UPJERS covering protection for various goods and services, including for online browser games. The UPJERS trademark was registered with the German Patent and Trademark Office on November 26, 2008.
The Complainant has also registered and operates the trademark UPJERS as domain names under several generic top-level domains (gTLD) and country-code top level domains (ccTLD), e.g. <upjers.com> and <upjers.de>.
The Respondent is an individual from Eskişehir, Turkey.
At the end of the year 2009, the Respondent started to cooperate with the Complainant as a freelancer. During that business relationship between the Parties, the disputed domain name was created by the Respondent on May 25, 2010.. At a later stage (without specifying the concrete date in its Complaint), the Complainant terminated the freelance contract for reasons of asserted money embezzlement by the Respondent.
5. Parties’ Contentions
As a remedy in these administrative proceedings, the Complainant requests the transfer of the disputed domain name for the following reasons.
First, the Complainant believes that the disputed domain name is identical or at least indistinguishably similar to the Complainant’s trademark.
Second, it is argued that the Respondent has no rights or legitimate interests in using the disputed domain name. It is particularly alleged that the Respondent is no longer allowed to use the disputed domain name, since the Complainant effectively terminated the freelance contract with the Respondent.
Third, it is the Complainant’s view that the Respondent has registered and is using the disputed domain name in bad faith. It is asserted that after the termination of the freelance contract, the Respondent retained the disputed domain name and started to advertise competing products with the sole purpose of harming the Complainant’s business and reputation. Literally, the Complainant alleges that “instead of handing over the login name and password to the Complainant after the contract was terminated, the Respondent decided to abuse his knowledge of the login data to use this domain to damage the Complainant and to gain profit while doing so.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To begin with, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the Registration Agreement is Turkish, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint, taking into account that the Respondent has failed to raise any objection or even to respond to the Complaint or the Center’s email communication with regard to the language of the proceedings, sent in Turkish and in English. The Panel is convinced that the Respondent will not be prejudiced by a Decision being rendered in English as the Respondent is apparently capable to read, write and understand the English language.
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, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may as appropriately accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
Further 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 the term UPJERS since the end of the year 2008.
Second, the Panel finds that the disputed domain name, which was first created in 2010, is identical to the Complainant’s trademark. The disputed domain name is an identical adoption of the registered trademark UPJERS and does not incorporate any changes or additions.
The mere addition of the top level domain name (TLD) “.net” 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 a TLD 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).
Hence, the Panel concludes that the first requirement under paragraph 4(a) of the Policy is fulfilled.
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 often 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 shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name 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 file any evidence or argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no trademark, valid license or any similar right to use the Complainant’s mark in the disputed domain name. In this regard, it is undisputed that the Complainant effectively terminated the aforementioned freelance contract between the Parties. Hence, the Respondent cannot derive any potential rights or legitimate interests from that contract anymore.
In the absence of a Response by the Respondent, there is also no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. Especially, the Respondent has failed to show that the disputed domain name has been used in connection with a bona fide offering of goods or services.
Finally, there is also no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without the intent to tarnish the Complainant’s UPJERS trademark.
Hence, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii) requires both, bad faith registration and use of a domain name.
The Complainant provided sufficient evidence demonstrating bad faith use of the disputed domain name. The Panel is convinced that the Complainant is right in asserting that the Respondent used the disputed domain name for the sole purpose of harming and tarnishing the Complainant’s trademark as a sort of revenge for the termination of the freelance contract.
However, the Panel was unable to find that the disputed domain name was also registered in bad faith. On the basis of the Complainant’s own oration, the Panel has to conclude that in the year 2010, the Respondent registered the disputed domain name with the Complainant’s consent. It appears that while the freelance contract between the Parties was in force, the Complainant explicitly agreed to the registration and use of the disputed domain name by the Respondent. At least, the Complainant did not provide any facts indicating the opposite.
It may be true that the Respondent is now acting in breach of its contractual obligations. It may in particular be true that the Respondent is now infringing the Complainant’s trademark rights. However, even if accepted as true, this does not justify the assessment of a bad faith registration for the reasons stated above.
The Panel is aware that it might appear inappropriate to dismiss the requested remedy, although the Respondent did not demonstrate to have any rights or legitimate interests in the disputed domain name. This impression may even be enhanced as the Respondent is now using the disputed domain name apparently in bad faith. But it needs to be noted once again that the Panel is bound to the Policy, which explicitly requires not only bad faith use but also bad faith registration. It is the Complainant’s obligation to demonstrate that both requirements are fulfilled.
Having repeated this, the Panel finds that the current record does not provide sufficient facts indicating a bad faith registration by the Respondent.
Hence, the Complainant failed to fulfill the third requirement of the Policy.
For the foregoing reasons, the Complaint is denied.
Dated: June 11, 2012