WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aygaz Anonim Şirketi v. Arthur Cain
Case No. D2014-1206
1. The Parties
The Complainant is Aygaz Anonim Şirketi of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Arthur Cain of Greenwood Village, Colorado, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <pursu.com> is registered with Iserveyourdomain.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2014. On July 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 21, 2014, 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 July 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2014. On July 24, 2014 the Respondent issued an informal email to the Center in respect of which the Center acknowledged receipt on July 25, 2014 and reminded the Respondent of the due date for Response. The Response was filed with the Center on August 12, 2014.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 22, 2014. 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 was founded in 1961 and is the first and largest company of the Koç Group to operate in the liquefied petroleum gas industry. The Complainant states that it has been a leader of this industry for 45 years. In 2011, the Complainant began distributing carboy water under the PÜRSU trademark with the objective of optimizing its distribution network. The Complainant’s carboy water business serves various areas in Turkey including 30 cities in four regions. The Complainant has engaged in various public relations and educational programs in connection with which it has won national and international awards.
The Complainant is the owner of various Turkish trademark registrations for the word mark PÜRSU, the earliest of which appears to be No. 2010 53015, protected from August 13, 2010 and registered on June 17, 2011 in international classes 30, 32, 33, 35 and 43. The Complainant has also been the owner of the domain name <pursu.com.tr> since August 19, 2010.
The Respondent does not state what kind of entity it is or its line of business, although the Complainant states, and the Respondent does not deny, that the Respondent is a company in the business of domain name/website/technology. The Respondent appears to be a corporation based in Colorado, United States of America. According to the Registrar’s WhoIs data, the disputed domain name was created on April 10, 2013. Screenshots prepared by the Complainant show that the website associated with the disputed domain name displays pay-per-click links connected with higher education services together with a hyperlink stating “Click here to buy Pursu.com for your website name!” The Complainant states that the link forwards users to “www.domainnamesales.com” on which the disputed domain name is listed for sale in the sum of USD 6,999.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to trademarks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant states that the disputed domain name is identical to the Complainant’s mark because the disputed domain name wholly incorporates such mark and that, since Turkish characters are not represented in domain names, the “ü” character should be treated as “u” for the purposes of similarity, citing Koç Holding A.S. v. KEEP B.T., WIPO Case No. D2009-0938 as authority for this proposition.
The Complainant notes that it has not licensed or otherwise permitted the Respondent to use its PÜRSU trademark or to apply for or use any domain name incorporating such mark and adds that the Respondent would only have a right to the disputed domain name if the Complainant had specifically granted such right. The Complainant states that the only interest that can be imagined for a person not having a connection to the Complainant’s trademark would be to create a connection to the Complainant and its trademark in some fashion. The Complainant contends that the Respondent does not use the disputed domain name commercially or noncommercially and has not been commonly known thereby.
The Complainant asserts that its PÜRSU mark is highly distinctive and was created by the Complainant, such that it is not a word that any person would legitimately choose unless seeking to create an impression of association with the Complainant. The Complainant submits that the Respondent is a company in the business of domain name/website/technology, with a domain name for its email address containing the term “seo-visibility” indicating that the Respondent is a domain name/website/online profit professional. The Complainant contends that in these circumstances the Respondent should have made a basic search to avoid infringement of a third party’s rights at the time when it registered or acquired the disputed domain name. The Complainant makes reference to paragraph 2 of the Policy which states that it is the domain name holder’s responsibility to determine whether the domain name infringes or violates someone else’s rights. The Complainant contends that this becomes more important where the Respondent is a professional in the domain name or website industry. The Complainant adds that even if it is assumed that the Respondent did not register the disputed domain name with the Complainant’s mark in mind, the Respondent’s shielding its eyes with willful blindness must be considered. The Complainant cites multiple cases under the Policy as authority for the proposition that a lack of any good faith attempt to ascertain whether a domain name was infringing a third party’s trademark, such as by conducting trademark searches or search engine searches, supports a finding of bad faith in the case of a sophisticated respondent engaged in the purchase of domain names for resale or pay-per-click advertising.
The Complainant submits that due to the offer of sale made in respect of the disputed domain name it was registered primarily for the purposes of selling it to the owner of the trademark for valuable consideration in excess of the Respondent’s out-of-pocket costs. The Complainant notes that the disputed domain name is not being used actively but is employed to earn pay-per-click revenues for redirecting Internet users to third parties’ websites and thus capitalizing on the Complainant’s mark until it is sold for the amount of USD 6,999.
The Complainant states that there is no evidence whatsoever of any good faith use or intention to use the disputed domain name and that in light of these circumstances the Respondent’s passive holding of the disputed domain name demonstrates that it is being used in bad faith.
The Complainant contends that in most relevant UDRP decisions, panels have agreed on the existence of bad faith and responsibility of the registrant of a domain name incorporating pay-per-click links even if these were chosen and displayed without the registrant’s knowledge.
The Respondent states that it acquired the disputed domain name from a “www.snapnames.com” auction on April 13, 2013 for the price of USD 689.00. The Respondent indicates that the disputed domain name was in the auction because the previous owner had not renewed it.
The Respondent asserts that its intent was to develop an Internet dating site using the name “pursu” (which it notes rhymes with “pursue”). The Respondent adds that after acquiring the disputed domain name, it started to receive inquiries from domain name brokers regarding a possible sale of the disputed domain name. The Respondent notes that after several such inquiries, it “relented” and quoted a high price on the basis that it was not really wanting to sell the disputed domain name.
The Respondent submits that it checked the United States Patent and Trademark Office for the word “pursu” and noted that while application had been made for a mark, this had been abandoned in 2012. The Respondent states that it intended to apply for a US trademark itself once its dating site was ready.
The Respondent states that it has never heard of the Complainant or its bottled water product PÜRSU and adds that it should not be expected to search every country in the world for trademark usage, when its intended usage was in the US only. The Respondent adds that its intended use of the disputed domain name does not infringe in any way upon the Complainant’s Turkish trademark or its bottled water product that is sold only in Turkey. The Respondent submits that it is unreasonable to expect that it should have known about the Complainant and its products.
The Respondent asserts that it did not register the disputed domain name in bad faith and intended to use it for a legitimate enterprise in the United States. The Respondent submits that the Complaint is a blatant attempt of Reverse Domain Name Hijacking.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The inquiry under the first element is in two parts, namely first, does the Complainant have UDRP-relevant rights in a trademark and, secondly, is such trademark identical or confusingly similar to the disputed domain name.
The Panel is satisfied that the Complainant has rights in its PÜRSU registered trademark as described in the factual background section above. This is not identical to the disputed domain name as it contains the letter “ü”. The Panel accepts the Complainant’s submission, not contested by the Respondent, that this letter must be substituted with a letter “u” in order to be represented in a domain name. In these circumstances, disregarding the generic Top Level Domain (“gTLD”) “.com” as is customary under the Policy, the Panel finds that the disputed domain name is identical to the Complainant’s trademark and accordingly that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Complainant contends that it has not licensed or otherwise permitted the Respondent to use its registered trademark, that the Respondent does not use the disputed domain name for commercial or noncommercial purposes and that the Respondent has not been commonly known by the disputed domain name. The Complainant adds that the only interest that can be imagined for a person not having a connection to the Complainant’s trademark would be to create a connection to the Complainant and its trademark in some fashion. The Panel is satisfied that this constitutes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and, accordingly, the burden of production shifts to the Respondent to bring forward evidence of its rights and legitimate interests therein.
The Respondent’s case is that it selected the disputed domain name for use as an Internet dating site, based upon its similarity to the word “pursue”. However unlikely the employment of the term “pursue” or any variant might seem to the Panel to be for such a purpose, such use might ex facie have been considered to be a bona fide offering of goods and services in terms of paragraph 4(c)(i) of the Policy. However, the Respondent’s alleged intentions are the subject of mere assertion only and are unaccompanied by any supporting evidence whatsoever. There is thus no evidence of use of the disputed domain name for this purpose, nor is there any evidence of demonstrable preparations for its use. The Panel considers that the word “demonstrable” in paragraph 4(c)(i) of the Policy is of some importance, meaning that if the Respondent wishes to rely on preparations to use the disputed domain name it requires to produce sufficient evidence that is capable of demonstration. The Panel is of the opinion that a mere assertion of intent, absent suitable evidence, is insufficient to demonstrate rights or legitimate interests in terms of this paragraph of the Policy.
In these circumstances, the Panel is left with the Respondent’s use of the disputed domain name for the purpose of publication of pay-per-click links and a general offer of sale. Either of these uses might have been permissible had the disputed domain name represented a common word or phrase of universal applicability. Pay-per-click links associated only with the general meaning of such word or phrase can be acceptable in these circumstances (see paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Similarly, in certain circumstances, a domain name comprised of one or more dictionary words can also be acceptable (see paragraph 2.2 of the WIPO Overview 2.0). The problem for the Respondent is that the disputed domain name is not such a word or phrase and has the appearance, to the Panel, of the Complainant’s trademark, which the Complainant says is an invented term. Accordingly, the Panel finds no evidence of rights and legitimate interests on the part of the Respondent arising from the present use of the disputed domain name. The Respondent has therefore failed to rebut the Complainant’s prima facie case.
In all of these circumstances, the Panel finds that that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
In the present matter, the Complainant’s case focuses squarely on the fact that the Respondent has offered for sale the disputed domain name, which represents the Complainant’s distinctive trademark, at a price that considerably exceeds its out-of-pocket costs. This is effectively a submission in terms of paragraph 4(b)(i) of the Policy. The Complainant states that due to the fact that its mark is an invented term, the Respondent must have known that it was the only entity that would have been interested in purchasing the disputed domain name. In response, the Respondent insists that it knew nothing of the Complainant or its mark when it acquired the disputed domain name, which it states was intended for the purpose of operating an Internet dating website, and notes that it performed a local trademark search before proceeding. The Respondent adds that it did not want to sell the disputed domain name and only placed it on the market at “a high price” having “relented” following the approach of third parties.
In the Panel’s view, the Respondent’s submissions simply do not ring true. If the Respondent had intended to use the disputed domain name for the purpose it alleges, why would it offer the disputed domain name for general sale at any price, high or low? Furthermore, if it was prepared to carry out a trademark search for the term PURSU in its local registry why did it not also carry out a far simpler Internet search engine search as well, particularly as it does not deny being in the Internet business and thus is likely to be a user of some sophistication? Given the extensive evidence of the Complainant’s use of its mark as supplied in the Annexes to the Complaint, such a search would in the Panel’s view have been likely to disclose the existence of the Complainant even where the Complainant does not trade outside Turkey. Furthermore, if the Respondent had intended to use the disputed domain name for an Internet dating site, why would it place the disputed domain name on pay-per-click advertising? Why would it have taken no steps to develop the disputed domain name or be unable to demonstrate any preparations to use the disputed domain name, in connection with the proposed use alleged in the Response, despite the passage of more than a year since its acquisition?
In the Panel’s view there are too many open questions arising from the Respondent’s submissions to confer any credibility upon the Respondent’s case on registration and use in bad faith. In the circumstances, the Complainant’s assertion that its rights in its mark were being targeted by the Respondent’s acquisition of the disputed domain name, whether deliberately or through “willful blindness”, is to be preferred. The Panel places particular emphasis on the Respondent’s offering of the disputed domain name for sale at a price considerably in excess of its out-of-pocket costs despite allegedly having a plan for the use of the disputed domain name, and also on the fact that the Respondent appears to be in the domain name/website business such that its failure to conduct adequate searching may give rise to an inference of knowledge of the Complainant’s mark (on this subject see mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The Panel therefore finds that the Complainant has proved that the Respondent has registered and used the disputed domain name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <pursu.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: September 5, 2014