WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vakko Holding Anonim Şirketi v. G&R International
Case No. D2012-0974
1. The Parties
The Complainant is Vakko Holding Anonim Şirketi of Istanbul, Turkey, represented by AYDIN & AYDIN Law Firm, Turkey.
The Respondent is G&R International of Ridgefield, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <vakkojewellery.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2012. On May 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 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”).
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 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2012. The Response was filed with the Center on May 18, 2012.
The Center appointed Kaya Köklü as the sole panelist in this matter on June 18, 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.
In accordance with the Rules, paragraph 11, and since the Parties have not agreed otherwise, the Panel finds that the language of the administrative proceedings is the language of the Registration Agreement (i.e. English).
4. Factual Background
The Complainant is a long-established and famous fashion company in Turkey. Since 1934, it is active in various fields of business, in particular in the fields of textiles and accessories.
The Complainant is the registered owner of various VAKKO trademarks, which cover protection for numerous products and services. Already in the year 1997, the Turkish Patent Institute, which is the competent authority for trademark registrations in Turkey, affirmed that the mark VAKKO is a well-known trademark in light of Article 6bis of the Paris Convention.
The Complainant further owns and operates a web portal at “www.vakko.com.tr”.
According to the information received by the Registrar, the Respondent is the company G&R International located in New Jersey, United States of America (“US”).
The disputed domain name was first registered by the Respondent on May 26, 2007. At the web portal linked to the disputed domain name, various jewelleries are offered for sale, mainly by using the brand name Vakko. As evidenced in the record, the language used on the website linked to the disputed domain name is the Turkish language.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is identical or at least confusingly similar to the Complainant’s trademark as it fully incorporates the Complainant’s VAKKO trademark. The Complainant argues that the only difference between the disputed domain name and the Complainant’s trademark is that the disputed domain name additionally comprises the generic term “jewellery”. It is argued that in the present case, the additional use of such generic term may even add to the confusingly similarity as it creates the impression that any product offered under the disputed domain name originates or is somehow linked to the genuine products offered by the Complainant.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent concerning the use of the VAKKO trademark. With reference to the products commercially offered at the web portal linked to the disputed domain name, the Complainant alleges that the Respondent has never used and does not intend to use the VAKKO trademark in connection with a bona fide offering of goods and services.
Finally, it is argued that the Respondent has registered and used the disputed domain name in bad faith. Due to the wide recognition of the VAKKO trademark in Turkey, the Respondent must have known this well-known trademark long before the registration of the disputed domain name.
On May 18, 2012, the Center received an email, which the Panel considers as the Response of the Respondent to the Complaint. The Response was sent from an email account identified as “…@diccut.com” and signed by “GnR International Inc.”, without revealing any names or contact details.
In this email communication, it is requested that the Complaint should be denied for the following reasons:
“Our site is named VakkoJewellery by being inspired by the Hungarian word Vakko (blind in Hungarian) and ékszerek (jewellery in Hungarian language) Vak – Vakok ékszerek – vak ékszerek vakko ékszerek and does not have any relation what so ever with the Turkish Company’s name as stated in “www.vakko.com.tr” […].
1) While using internet search engines neither “www.vakkojewellery.com” nor “www.vakko.com.tr" are linked to each other. So to state the searchers definitely not linked to plaintiff's site as he complained. Since day one of our registration date (which was May 26 th 2007) we never announced that our domain was on sale or rental. Again since our registration date we sell gold and silver jewellery articles by manufacturing them after order. As you are also aware of our performance is in our sector.
2) We did not filibuster neither the commercial name nor the trademark of the plaintiff. As they stated before their domain name is “www.vakko.com.tr” and our domain name is “www.vakkojewellery.com”.
The plaintiff has registered many trade marks ( vakko chokolade, Vakko c/line , Vakko details, Vakko espose by sky , Vakko soft , Vakko Turkish delight etc.. ) under the roof of its trade name Vakko and operates there. We have not used any similar slogans, products, logos of the plaintiff. As well we have not copy cat the plaintiff. In the social networking sites, many well known reputable jewellery portals, in our e-mail campaign advertisements and all media publicities we clearly pointed out that Vakkojewellery is an establishment of GnRInternational Inc., and we did not take any action that bring to mind the plaintiff. We did not sell neither the same nor any similar items of the plaintiff. As well we did not disparage the site or the products of the plaintiff. As well we did not take any damaging actions what so ever to the plaintiff."
Furthermore, it is argued that:
“It is thought provoking to consider the fact that although it has been 5 years since our registration and promoted in well known social networks, well known jewellery portals as well in our e-mail advertising campaigns’ the plaintiff has not applied to your authority or gave us any legal warnings what so ever thefore their action now is thought provoking
6. Discussion and Findings
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.
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
The Panel finds that the disputed domain name is confusingly similar to the VAKKO trademarks of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding its VAKKO trademarks. As evidenced in the Complaint, the Complainant owns a large number of well-known VAKKO trademarks in Turkey, covering protection for various products and services including fashion and accessories.
Although not identical, the disputed domain name fully incorporates the trademark VAKKO.
The disputed domain name differs from the trademark VAKKO only by the addition of the generic term “jewellery”. In the Panel’s view, the addition of a generic term like “jewellery” does not negate the confusing similarity between the Complainant’s trademark and the disputed domain name. The Panel finds that this incorporation is purely descriptive and does not create a new distinctiveness separate from the Complainant’s trademark VAKKO. On the contrary, the full inclusion of the Complainant’s trademark in combination with this generic term “jewellery” may even enhance the false impression that the website linked to the disputed domain name is somehow officially related to the Complainant.
Hence, the Panel concludes that the Complainant has satisfied the first requirement 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 responsibility 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 sufficiently demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
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 trademark in the disputed domain name.
On the contrary, the Respondent 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. Furthermore, there is no indication in the current record that the Respondent is commonly known by the disputed domain name.
There is also no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain to misleadingly divert Internet users or to tarnish the VAKKO trademark. Quite the contrary, it appears that the Respondent particularly tries to mislead Turkish customers by causing the impression that the jewelleries offered at the website linked to the disputed domain name are genuine or somehow authorized products by the Complainant.
With regard to the defense arguments raised by the Respondent, the Panel believes that all of them are not convincing. The Panel in particular believes that the Respondent’s allegation that it has been inspired by the Hungarian language is not true and a purely self-serving assertion, particularly as the web portal of the Respondent is not in Hungarian but in Turkish language. All other allegations and opinions do also not legitimatize any sort of use of the well-known VAKKO trademark by the Respondent.
Hence, the Panel finds that the Complainant has also satisfied the second requirement of the Policy, namely paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is 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 VAKKO in Turkey. The Panel believes that the Respondent must have known this trademark when the disputed domain name was created on May 26, 2007, particularly given that the disputed domain name has been registered many years after the Complainant’s trademark has become well-known in Turkey and outside.
The Respondent’s bad faith use is indicated by the fact that on the website linked to the disputed domain name, products are explicitly branded and promoted with the Complainant’s trademark VAKKO. Additionally, by using the Turkish language, the Respondent obviously targets mainly Turkish speaking Internet consumers, apparently trying to mislead them about the genuine nature of the offered products and their non-existing link to the Complainant. The Panel is convinced that this demonstrates the Respondent’s intention to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s well-known VAKKO trademark.
Overall, the Panel finds that the above demonstrates a typical cybersquatting case.
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) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <vakkojewellery.com> be transferred to the Complainant.
Dated: July 5, 2012