WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GS Yuasa Corporation v. Engin Ulubas, ACDC Elektronik Sistemler Dan. San. ve Tic. Ltd. Sti.

Case No. D2017-0563

1. The Parties

The Complainant is GS Yuasa Corporation of Kyoto, Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

The Respondent is Engin Ulubas, ACDC Elektronik Sistemler Dan. San. ve Tic. Ltd. Sti. of Istanbul, Turkey, self-represented.

2. The Domain Names and Registrar

The disputed domain names <yuasa-aku.net>, <yuasa-aku.org>, <yuasaaku.org>, <yuasa-batteries.com>, <yuasa-batteries.net>, <yuasa-batteries.org>, <yuasa-battery.org>, <yuasatr.com>, <yuasa-turkey.com>, <yuasaturkey.com> and <yuasa-turkiye.com> are registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2017. On March 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 21, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2017. On April 27, 2017, the Respondent submitted two email communications.

The Center appointed Kaya Köklü as the sole panelist in this matter on May 8, 2017. 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 company with its registered seat in Japan. It supplies batteries and related products for more than 100 years worldwide.

The Complainant is the owner of the trademark YUASA, which is registered in many jurisdictions, including the Japanese trademark No. 579338, registered on August 19, 1961 covering protection for goods in classes 9 and 11, and Turkish trademark Nos. 113959 and 154349, respectively registered on December 4, 1989 and January 11, 1995 for goods in class 9.

The creation dates of the disputed domain names are as follows:

The Respondent is an individual acting on behalf of a Turkish company, which seems to be active in the field of batteries.

On January 28, 2016, the Complainant filed a complaint against the Respondent regarding similar domain names, GS Yuasa Corporation v. Engin Ulubas, ACDC Elektronik Sistemler Dan. San. ve Tic. Ltd. Sti., WIPO Case No. D2016-00178. In that already finalized case, the Panel ordered that all disputed domain names be transferred to the Complainant.

Among the disputed domain names, <yuasaaku.org> resolves to a website offering the Complainant’s products or counterfeit products for sale; <yuasatr.com>, <yuasa-turkey.com> and <yuasaturkey.com> are inactive; <yuasa-aku.net>, <yuasa-aku.org>, <yuasa-batteries.com> <yuasa-batteries.net>,

<yuasa-batteries.org>, <yuasa-battery.org> and <yuasa-turkiye.com> feature a registrar parking page.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain names.

The Complainant is of the opinion that the disputed domain names are confusingly similar to its YUASA trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant believes that the Respondent was fully aware of the Complainant’s trademark, when registering the disputed domain names, particularly as several of the disputed domain names were registered by the Respondent during the previous UDRP proceedings.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

However, on April 27, 2017, the Center received two informal email communications in Turkish from the Respondent. In its first email communication, the Respondent asked for clarification on the subject matter of the proceedings. In its second email communication, the Respondent asserts that the Complainant’s attorneys in Turkey have been already informed by him that the disputed domain names will not be renewed by the Respondent.

No further communications have been filed by the Respondent.

6. Discussion and Findings

According to paragraphs 14(a) and 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 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, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO 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

To begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in YUASA. As evidenced in the Complaint, the Complainant is the owner of various YUASA trademarks, which are registered in many jurisdictions since many decades, including in Turkey.

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s YUASA trademark. Each disputed domain name fully incorporates the mark YUASA in its entirety as the distinctive first part of the domain name.

In view of the Panel, the addition of dictionary terms or other non-distinctive geographical terms do not create a new distinctiveness of the disputed domain names in relation to the Complainant’s registered trademark. On the contrary, the Panel rather finds that the generic additions are intentionally used by the Respondent in order to confuse Internet users into their believing that the disputed domain names are affiliated or endorsed by the Complainant or that the use of the disputed domain names is at least authorized by the Complainant.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

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 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 of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names 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.

With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license to use the Complainant’s YUASA trademark in a confusingly similar way within the disputed domain names and on the respective websites, where relevant.

In the absence of a formal Response by the Respondent, there is no indication in the current record that the Respondent is commonly known by the disputed domain names. The Respondent has also 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 names.

Further, the Panel considers the Respondent’s emails which state its intention to let the disputed domain names lapse to be further evidence that the Respondent has no rights or legitimate interests.

The Panel does also not see any indication in the record for assessing a bona fide offering of goods or services by the Respondent.

Consequently, 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 Panel is convinced that the Respondent has registered and is using the disputed domain names in bad faith.

The Panel is of the opinion that the Respondent intentionally attempted to create a likelihood of confusion among customers and/or to otherwise take advantage of the Complainant’s trademark for commercial gain or some other illegitimate benefit.

The Panel believes that the Respondent was clearly aware of the Complainant and its YUASA trademark when it registered and used the disputed domain names, particularly as some of the disputed domain names were registered even during previous UDRP proceedings initiated by the Complainant against the Respondent.

The fact that some of the disputed domain names are currently parked does not change the Panel’s findings in this respect.

Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. In view of the Panel, the disputed domain names were all registered and are 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.

7. 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 <yuasa-aku.net>, <yuasa-aku.org>, <yuasaaku.org>, <yuasa-batteries.com>, <yuasa-batteries.net>, <yuasa-batteries.org>, <yuasa-battery.org>, <yuasatr.com>, <yuasa-turkey.com>, <yuasaturkey.com> and <yuasa-turkiye.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: May 22, 2017