WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yorktest Laboratories Limited v. Domains By Proxy, LLC / Erdem Rahvanci / Poyraz Ustunel

Case No. D2015-0191

1. The Parties

The Complainant is Yorktest Laboratories Limited of York, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by HGF Limited, UK.

The Respondents are Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Erdem Rahvanci of Istanbul, Turkey / Poyraz Ustunel of Istanbul Turkey, represented by Rubbit of Turkey.

2. The Domain Names and Registrar

The disputed domain names <yorktest-tr.com> (“the first disputed domain name”), <yorktesttr.com>, <yorktestturkiye.com> and <york-testi.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint concerning the first disputed domain name was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2015. On February 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the first disputed domain name. On February 6, 2015, 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.

On February 9 and 16, 2015, the Complainant submitted amendments to the Complaint adding the disputed domain names <yorktesttr.com> and <yorktestturkiye.com> to the Complaint. The Center transmitted by email to the Registrar requests for registrar verification regarding these disputed domain names and the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for these disputed domain names which differed from the named Respondent and contact information in the Complaint and amendments. The Center sent an email communication to the Complainant on February 18, 2015 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, adding another domain name, <york-testi.com>, to the dispute on February 23, 2015. On February 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with this disputed domain name, and on the same day the Registrar transmitted by email to the Center its verification response confirming that the Respondent Poyraz Ustunel is listed as the registrant and providing the contact details.

The Center verified that the Complaint together with the amendments 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 February 12 and 16, 2015, the Center received email communications from the Respondent Erdem Rahvanci’s representative.

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 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the parties of the commencement of the Panel appointment process on March 18, 2015.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 30, 2015. 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 supplier of food allergy/intolerance testing kits and services. It is based in the UK, but supplies its kits and services internationally. Kits used outside the UK are returned to the Complainant’s laboratory in the UK for analysis and report. In some parts of the world, the Complainant operates through distributors.

The Complainant provides these kits and services under the trademark YORKTEST. Amongst other things, it has registered trademarks:

(a) Community Trademark No. 002275022 for YORKTEST for a range of goods and services in International Classes 5, 10 and 42, which was registered on October 7, 2002;

(b) Community Trademark No. 002440964 for the YORKTEST logo (the letter ‘O’ takes the form of a heart shaped apple) for a range of goods and services in International Classes 5, 10 and 42, which was registered on November 6, 2002;

(c) International Trademark No. 1043079 for YORKTEST for a range of goods and services in International Classes 5, 10, 16, 42 and 44 designating numerous countries including Turkey, which was registered on March 8, 2010; and

(d) Turkish Trademark No 201208646 for YORKTEST for a range of goods and services in International Classes 16 and 42, which was registered on August 22, 2014.

The Complaint also includes numerous other registered trademarks for YORKTEST or the YORKTEST logo.

According to the Complaint, the first disputed domain name was registered on April 21, 2009. According to the Registrar, however, it was registered on May 21, 2009. Also according to the Registrar, the first Respondent, Mr. Rahvanci, was the registrant. The Complainant states that this domain name was registered without its knowledge or approval.

On or about May 19, 2009, Mr. Rahvanci approached the Complainant seeking appointment as the Complainant’s distributor for Turkey. The Complainant entered into a distribution agreement with a company associated with Mr. Rahvanci on May 28, 2009. That arrangement was renewed by further agreement on March 27, 2010.

The distribution agreements included clauses stating that the distributor would not have any rights in or to the trademark YORKTEST. There was also a clause requiring the distributor to cease using the trademark on cessation or termination of the distribution agreement.

In the meantime, on December 7, 2009, Mr. Rahvanci applied for, and subsequently obtained, registration in Turkey of trademarks for a YORKTEST logo and a stylized version of YORKTESTI. According to the Complaint, those registrations were obtained without the Complainant’s knowledge or permission.

From late 2011, relations between the Complainant, Mr. Rahvanci and his distribution company deteriorated and by June 2013 the distribution appointment had been terminated.

There have also been proceedings in the Turkish courts over the trademarks registered by Mr. Rahvanci. These culminated in a decision by the Turkish Supreme Court accepting that the Complainant’s trademark was well-known in Turkey before Mr. Rahvanci registered the trademarks and ordering their revocation. The Complainant does acknowledge, however, that further proceedings regarding Mr. Rahvanci’s trademarks are still on foot.

On the same date as the Complaint was filed, the disputed domain names, <yorktesttr.com> and <yorktestturkiye.com> were registered in the name of Poyraz Ustunel. After amendments to the Complaint were made to add these disputed domain names, the disputed domain name <york-testi.com> was registered in the name of Poyraz Ustunel on February 16, 2015.

Shortly before the Complaint was filed, the first disputed domain name resolved to a website in Turkish displaying the Complainant’s YORKTEST logo trademark. A person inquiring through the website is either provided with test kits and services which are not provided by the Complainant or redirected to the website of PinnerTest, which is apparently a competing supplier of such kits and services.

After the Complaint was filed, access to the website via the first disputed domain name was blocked. However, a link on a Facebook page to the second disputed domain name took the browser to essentially the same page. The third disputed domain name did not resolve to that webpage. However, it resolved to a “parking page” which features pay-per-click (PPC) advertising links to goods and services including “cheap home blood tests” which are not those of the Complainant.

The fourth disputed domain name resolves to a website at the URL “www.york-labs.com”. This website is in Turkish. It features the sign YORK TESTI TÜRKIYE. It also appears to advertise the goods and services of PinnerTest associated with the phrase “Yeni Nesil York Testi”.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondents of the disputed domain names, the Complainant must demonstrate each of the following:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondents have 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.

In the present case, the Complainant seeks to join its complaints regarding the second to fourth disputed domain names with its complaint regarding the first disputed domain name. There are a number of factors which support this. First, there are links on Mr. Rahvanci’s Facebook page using the second disputed domain name. Secondly, the website which the second disputed domain name resolves to is very similar to the website which the first disputed domain name previously resolved to and uses the same telephone number. Thirdly, the Center received two emails from Mr. Rahvanci in response to the notifications of the Complaint and its various emails.

In the first email, Mr. Rahvanci’s representative called on the Center to stop the proceedings against the first disputed domain name on the basis that he owned a registered trademark in Turkey for YORKTEST. The email foreshadowed that court action would be started soon and “[w]e will present all documents very soon to the court and you.”

In the second email, Mr. Rahvanci’s representative responded to a request to clarify his role following amendment of the Complaint to include the second and third disputed domain names by stating that:

“Our company Rubbit is the Legal Rep. for all issues after now. You can contact me and pls. inform me for all communications.”

There has been no communication from Respondent Poyraz Ustunel.

Having regard to all these considerations, the Panel considers it is appropriate to join all the disputed domain names in the one dispute.

No substantive response has been filed by Mr. Rahvanci and no response at all from Poyraz Ustunel. Written Notice and the Complaint have been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. And it is clear from Mr. Rahvanci’s emails that he is well aware of the Complainant. Accordingly, the Panel finds that the Complaint has been properly served on the Respondents.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the panel to proceed to a decision on the complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, each disputed domain name must be shown individually to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the registered trademarks identified in section 4 above as well as a number of corresponding registrations in many other countries.

On the question of identity or confusing similarity, what is required is simply a comparison and assessment of each disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

In undertaking that comparison, it is permissible in the present circumstances to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.

The distinctive element of each of the disputed domain names is the element “yorktest”. The other elements are descriptive, geographical elements or a hyphen. The hyphen is merely a typographical bridge of very little significance in a comparison of this kind: see Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046. The geographical elements identify Turkey; “tr” being the country code for Turkey. All the combination of these elements with the trademark YORKTEST conveys is that it is the domain name of the Turkish arm of YORKTEST.

Accordingly, the Panel finds that the Complainant has established that the disputed domain names are confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondents have no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:

“(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the respondent] has acquired no trademark or service mark rights; or

(iii) [the respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant states that the disputed domain names were registered without its knowledge or permission. The Respondent, Mr. Rahvanci, or a company associated with him was the Complainant’s distributor for a period, but he registered the first disputed domain name before that relationship commenced and, in addition, it has been terminated. According to the Complaint, the Respondent Poyraz Ustunel is unknown to the Complainant. The disputed domain names are plainly not derived from any of the Respondents’ own names.

The first email from Mr. Rahvanci’s representative stated that Mr. Rahvanci, or his company, owned a registered trademark in Turkey for YORKTEST. He has not provided further details about this. The Complainant has obtained a judgment from the Turkish Supreme Court cancelling Mr. Rahvanci’s registration in Turkey on grounds including that the trademark was already well-known in Turkey as the Complainant’s trademark. However, in the circumstances of this case, even if Mr. Rahvanci did have registered trademarks that would not confer on him or Poyraz Ustunel rights or legitimate interests in the disputed domain names. These trademarks were registered by Mr. Rahvinci in the knowledge that they referred to the Complainant in the marketplace, and without the Complainant’s permission, and as such are of little assistance under the Policy. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, where the panel stated, “… it would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy. [….] To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark…”

The registration of the first disputed domain name before the distribution agreement was concluded and, according to the Complaint, without the knowledge or approval of the Complainant particularly in circumstances where the Turkish Supreme Court has ruled that the Complainant’s trademark was well known in Turkey before Mr. Rahvanci registered the YORKTEST trademark does not confer rights or a legitimate interest in the first disputed domain name.

The other disputed domain names were registered after Mr. Rahvanci’s appointment as the Complainant’s distributor in Turkey had been terminated and were plainly registered in response to the original filing of the Complaint. The Respondents can have no better rights to these disputed domain names than Mr. Rahvanci’s has in the first disputed domain name.

In these circumstances, the Complainant has established a prima facie case that the Respondents do not have rights or legitimate interests in any of the disputed domain names. The Respondents have not rebutted that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondent.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

Mr. Rahvanci registered the first disputed domain name either just after he approached the Complainant for appointment as its distributor in Turkey or, in any event, very close to the making of that approach. It is clear that Mr. Rahvanci knew of the Complainant and its trademark when he registered the first disputed domain name. Plainly he registered it to take advantage of it for its significance as the Complainant’s trademark. On the record in this proceeding, that was done without the knowledge or approval of the Complainant.

The use of the first disputed domain name to sell kits and services which are not sourced from the Complainant or to redirect potential customers to PinnerTest, a competitor of the Complainant, constitutes use of it in bad faith under the Policy.

Nothing is known of the Respondent Poyraz Ustunel. He or it appears to be closely associated with Mr. Rahvanci. Mr. Rahvanci had links on his Facebook page to the second disputed domain name very soon after the Complaint was initially filed. The content of the website closely resembles the content of the earlier website and featured the same telephone number. In his second email, Mr Rahvanci’s representative indicated Rubbit should be the point of contact for the first three domain names. In these circumstances, the Panel infers that the other disputed domain names were also registered with knowledge of the Complainant and its trademark. The way they are being used as described above is also use in bad faith under the Policy.

Accordingly, the Panel finds that each of the disputed domain names has been registered and is being used in bad faith.

6. 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 names <york-testi.com>, <yorktest-tr.com>, <yorktesttr.com>, and <yorktestturkiye.com> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: April 4, 2015