WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CESAN Elektrikli Vinc Sanayi ve Ticaret A.S. v. Ozlem Ildeniz
Case No. D2012-2198
1. The Parties
The Complainant is CESAN Elektrikli Vinc Sanayi ve Ticaret A.S. of Istanbul, Turkey, represented by Burak Isa Altin of Ali Yüksel & Hilmi Özalp, Turkey.
The Respondent is Ozlem Ildeniz of Izmir, Turkey.
2. The Domain Name and Registrar
The disputed domain names <cesangroup.com> and <csn-vnc.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2012. On November 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 9, 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 November 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2012. The Center received informal email communications from the Respondent on November 22, December 10 and December 11, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on December 10, 2012.
The Center appointed Mr. Kaya Köklü as the sole panelist in this matter on December 19, 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.
On January 17 and 25, 2013, in response to the Panel Order No. 1 sent to the Parties on January 14, 2013, both the Respondent and the Complainant provided further submissions to the Center.
In accordance with the Rules, paragraph 11(a), 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 Turkish company, which offers heavy machinery like cranes, trolley hoists and lifting machines since about 1986.
The Complainant is the registered owner of various CESAN trademarks registered with the Turkish Patent Institute, the competent authority for trademark registrations in Turkey. The first trademark registrations date back to the year 1998.
Since 1998, the Complainant further owns and operates several webpages such as “www.cesan.com” and “www.cesan.com.tr”.
The Respondent seems to be an individual, apparently located in Turkey.
The disputed domain names were registered in May and June 2011. The registration data are as follows:
<cesangroup.com> on May 9, 2011;
<csn-vnc.com> on June 7, 2011.
Both disputed domain names are linked to the same website which provides information and references on heavy machineries like cranes offered by a Turkish company named CSN & VNÇ Ltd.
According to the trademark registry of the Turkish Patent Institute, this said company is the owner of the Turkish trademark “CSN & VNÇ” registered in 2006 for heavy machineries like cranes etc.
The Complainant has provided information that certain legal proceedings are already pending in Turkey. Among others, the Complainant has sued an individual person named Ismail Hakkı Canakay (who apparently is the actual operator of the disputed domain names) for infringing the Complainant’s trademark rights with regard to the use of two domain names, which are not subject to these administrative proceedings (namely <cesanvinc.com> and <ozcesanvinc.com>). The Complainant also submitted an English translation of the court expert’s opinion prepared in said Turkish lawsuit.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain names.
First, the Complainant argues that the disputed domain names are confusingly similar to the Complainant’s trademark CESAN.
Second, the Complainant is of the opinion that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant alleges that it has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to register or use any domain name incorporating its CESAN trademark. The Complainant additionally asserts that “there is no evidence that the Respondent […] has been commonly known as CESAN or has acquired any trademark or service mark rights in the CESAN word or trademark”. Further it is argued that “the Respondent similarly has no legitimate interests with respect to the [disputed] domain names. On the contrary, [the Complainant believes that] Respondent tries to describe its website as CESAN’s official website”.
Third, the Complainant is convinced that the Respondent has registered and is using the disputed domain names in bad faith. Literally, the Complainant argues as follows:
“By using the domain name, Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, origin, affiliation of Respondent’s website. ICANN Rule 3(b)(ix)(3); Policy 4(a)(iii). The “Cesan” mark and “Cesan stamped product images” on the homepage, directed to “Cesan” based website, the text, color scheme of the homepage, and the logo at the bottom of the webpage demonstrate that Respondent is attempting to confuse Internet users, all without correctly identifying the source of the commentary on the webpage. About Us section, Respondent claims that they are real Cesan Company and other companies are completely fake. Also Respondent gives lots of website links on the main page that prove it’s real purpose of registering disputed domain names is present himself/herself as the owner of trademark and gain unfair income. Moreover, respondent’s prior use of the Domain Names to redirect internet users to a competing website was designed to cause a likelihood of confusion and to deceive consumers into mistakenly believing that Respondent and/or products and services offered at he cesangroup.com and csn-vnc.com websites were offered, authorized, licensed or sponsored by Complainant and it’s “Cesan” trademarks and Cesan based names.”
In its submission of January 25, 2013, the Complainant further alleges that the Respondent’s email to the Complainant dated July 16, 2011 indicates his bad faith, in particular as the Respondent emphasized in said letter that “he can always register new domain names, which are similar to CESAN”.
The Respondent did not submit any formal reply to the Complainant’s contentions. However, the Center received two informal email communications from the operator of the disputed domain names on November 22 and December 11, 2012 and January 17, 2013.
In its email communication of December 11, 2012, the operator of the disputed domain names argues that it “produces cranes in Turkey for over 33 years”. It is also alleged that it owns various companies comprising the mark CESAN, like “Cesan Lift Transportation Machinery Industry and Trade; Csan Lift Transportation Machinery Industry and Foreign Trade Co.Ltd.; Özcesan Crane San Co.Ltd Company and CSN VNC LTD.” Furthermore, it is alleged that it operates further websites linked to domain names comprising the term ”cesan”, like <cesangroup.com>; <ozcesanvinc.com> and <cesanvinc.com>.
It is further asserted that the operator of the disputed domain names owned Turkey’s first crane manufacturing company, which was established in 1975 under the name Cesan.
In its email communication of January 17, 2013, the Respondent further provided documents demonstrating the existence of certain trademark rights.
As a conclusion, it is claimed that the Complaint should be denied.
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 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 names are 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 names; and
(iii) the disputed domain names have been registered and are 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 formally or properly 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.
In this context, the Panel finds that the informal email communication received by the Center on December 11, 2012 does not qualify to be a formal response to the Complaint. However, as it indicates a sort of argumentation on the merits of the case, the Panel will nevertheless consider this informal email communication in its Decision.
It is further noted that independent research, i.e., visiting the Internet sites linked to the disputed domain names and checking the Turkish trademark registers, has been performed by the Panel on January 1, 2013. 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 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 relevant trademark rights. As evidenced in the Complaint, the Complainant is, since 1998, the registered owner of the CESAN trademark in Turkey, covering protection mainly for heavy machineries like cranes, etc.
Second, the Panel finds that the disputed domain name <cesangroup.com> is confusingly similar to the Complainant’s trademark CESAN. Although not identical, the disputed domain name <cesangroup.com> fully incorporates the trademark CESAN. In the Panel’s view, the addition of the generic term “group” does not negate the confusing similarity between the Complainant’s trademark and the disputed domain name. The Panel finds that this incorporation does not create a new distinctiveness separate from the Complainant’s trademark CESAN.
However, the assessment is different with respect to the disputed domain name <csn-vnc.com>. The Panel believes that the deletion of all vowels from the terms “cesan” and “vinç“ creates a new distinctiveness separate from the Complainant’s trademark CESAN. The Panel is of the opinion that “csn-vnc” is no common abbreviation for “cesan” and “vinç”. Additionally, it has a different appearance and differs significantly in the way of pronunciations from the CESAN trademark. Consequently, the Panel believes that there is no confusing similarity between the trademark CESAN and the disputed domain name <csn-vnc.com>. In the Panel’s assessment, consumers will likely be able to distinguish between the mark CESAN and the term “csn-vnc” as used in the disputed domain name.
The fact that the disputed domain name <csn-vnc.com> is redirected to the disputed domain name <cesangroup.com> is in view of the Panel of no dispositive relevance for the question of assessing confusing similarity between the former disputed domain name and the trademark in question.
Given the findings above, the Panel concludes that the first requirement under paragraph 4(a) of the Policy is fulfilled only with respect to the disputed domain name <cesangroup.com>.
But it should be noted that the finding concerning the disputed domain name <csn-vnc.com> in no way precludes any other option the Complainant may wish to pursue under national trademark or unfair competition laws as it has done with the domain names <cesanvinc.com> and <ozcesanvinc.com> already, but these are matters beyond the scope of the Panel’s rather more limited deliberations under the Policy.
B. Rights or Legitimate Interests
The Panel believes that the Respondent has no rights or legitimate interests in the disputed domain name <cesangroup.com>.
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 and sphere of the Respondent. Therefore, the Panel agrees in line 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 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 by providing uncontested prima facie evidence that the Respondent has no trademark, license or any similar right to use the Complainant’s trademark in the disputed domain name <cesangroup.com>.
The Respondent has particularly failed to provide sufficient evidence demonstrating such a right or legitimate interest or any other evidence of a right or legitimate interest in the disputed domain name <cesangroup.com> according to the Policy, paragraphs 4(a)(ii) and 4(c).
In particular, the Respondent is not able to successfully rely on own registered trademark rights. It is undisputed that the term “CSN & VSN” is registered as a Turkish figurative trademark by a company named CSN & VNC Ceraksal ve Vinc Pazarlama Sanayi ve Ticaret Limited Sirketi, which is obviously closely linked to the person who operates the disputed domain names and who sent the email communications to the Center on December 11, 2012 and January 17, 2013. However, as indicated above, the Panel believes that this trademark is significantly different than the term “cesan”, and hence cannot be basis for any legitimate use of the Complainant’s trademark CESAN in the disputed domain name <cesangroup.com>. Furthermore, the Respondent did not submit any evidence that it may be entitled to rely on firm name rights comprising the Complainant’s trademark CESAN.
As the Complainant is the only registered owner of the Turkish trademark CESAN, the Panel believes that any use of the mark CESAN in the way the Respondent does in the present case, needs to be assessed as an unauthorized and illegitimate use by the Respondent. In particular, the Panel confirms that the Respondent did not provide (nor does the case file contain) any evidence of a bona fide use of the disputed domain name <cesangroup.com> or any legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. There is also no sufficient evidence in the case file to assess whether the Respondent trades under or is commonly known by a firm name corresponding to the disputed domain name <cesangroup.com>.
In light of the above, the Panel concludes that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name <cesangroup.com>.
C. Registered and Used in Bad Faith
The Panel is convinced that the Respondent has registered and is using the disputed domain name <cesangroup.com> in bad faith.
First, the Panel believes that the Respondent was well aware of the CESAN trademark when it registered the disputed domain name <cesangroup.com> in 2011.
It is further apparent that the Respondent tries to monetize on the prominence of the Complainant’s CESAN trademark and to mislead customers. In the Panel’s view, the Respondent’s sole purpose is to create a likelihood of confusion among users and/or to tarnish the Complainant’s trademark. This is particularly likely as the Respondent does not even refrain from using pictures of the Complainant’s genuine products on the website linked to the disputed domain name <cesangroup.com>.
In light of the above, the Panel cannot conceive of any good faith use of the disputed domain name <cesangroup.com> by the Respondent.
The Panel therefore concludes that the disputed domain name <cesangroup.com> 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 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 <cesangroup.com> be transferred to the Complainant.
With regard to the disputed domain name <csn-vnc.com>, the Complaint is denied.
Date: January 29, 2013