WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tupras Turkiye Petrol Rafinerileri A.S. v. See PrivacyGuardian.org / Wizarc Computing
Case No. D2017-0818
1. The Parties
The Complainant is Tupras Turkiye Petrol Rafinerileri A.S. of Kocaeli, Turkey, represented by June Intellectual Property Services Inc., Turkey.
The Respondent is See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Wizarc Computing of Honolulu, Hawaii, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <hexmon.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2017. On April 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 24, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 27, 2017 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 on May 2, 2017.
The Center verified that the Complaint together with the amendment 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2017. The Response was filed with the Center on May 21, 2017.
The Center appointed Ian Lowe as the sole panelist in this matter on June 2, 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 Turkey’s largest industrial enterprise. Amongst other operations, it operates four oil refineries with a total of 28.1 million tons annual crude oil operating capacity. The Complainant is part of the Koç Holding Group, Turkey’s largest industrial and services group listed on the Istanbul Stock Exchange. The Complainant is the proprietor of Turkey registered trademarks number 2013 100738 registered on August 11, 2014 and number 2014 25192 registered on January 28, 2015, both in respect of the stylized word “Hexmon”, as well as European Union trademark number 11984267 in respect of the word mark HEXMON registered on December 26, 2013.
The Complainant registered the domain names <hexmon.net> on December 10, 2013 and <hexmon.com.tr> on February 4, 2014.
The Complainant is also the proprietor of Turkey and European patents in respect of a method for modeling and monitoring of fouling in a heat exchanger, the application for which was first made in Turkey on November 12, 2012 and apparently first published on May 15, 2014.
The Respondent Wizarc Computing, a name used by Mr. Michael Smith, registered the Domain Name through the privacy service See PrivacyGuardian.org on January 30, 2012. The Domain Name did not resolve to an active webpage at the time of preparation of the Complainant, but now resolves to the Twitter webpage twitter.com/hexmon, apparently operated by the Respondent.
5. Parties’ Contentions
The Complainant alleges that the Domain Name is identical to its HEXMON trademark, which has been used by the Complainant in connection with a wide variety of goods and services such that the public has come to perceive goods and services that are offered under a HEXMON mark, or a variation of it, as emanating from or being endorsed by or affiliated with the Complainant. The Complainant further states that its HEXMON trademark represents and uses “a method for modeling and monitoring the amount of fouling in a heat exchangeris developed [sic]” and refers to its Turkish and European patent in respect of an invention for such method.
The Complainant contends that as the Respondent is neither known as “hexmon” nor contends to make a legitimate noncommercial or fair use of the Domain Name, it could only rely on rights or legitimate interests in respect of the Domain Name in connection with a bona fide offering of goods and services. The Complainant states that there is no evidence of any such offering or that the Respondent is commonly known or could be commonly known by the Domain Name. The Complainant points out that it has not licensed or otherwise permitted the Respondent to use the term “Hexmon” and says that the Respondent has no relationship with the Complainant or permission from the Complainant to use its marks.
The Complainant alleges that “the [C]omplainant has prior rights in [HEXMON], which precede [the] [R]espondent’s registration of the [D]omain [N]ame. The only interest that can be imagined for a person, not having an apparent particular connection to the trademark HEXMON, in registering a domain name <hexmon.com> is to somehow create a connection to the Complainant’s trademark HEXMON”.
It asserts that “it is inconceivable that the Respondent, without license or permission, would be able to use the trade/service mark of a well-known company like ‘TUPRAS’ [the Complainant]” and that “this same reasoning is valid for internet domain names in general, and for the [..] [D]omain [N]ame <hexmon.com> in this case in particular”.
The Complainant goes on to say that the Complainant TUPRAS is the largest enterprise in Turkey, that it has advertisements all over the world, from subways to advertisement spaces on the side of the roads, streets and buildings, and that its thousands of commercials appear on almost all TVs and radios every day. Since the TUPRAS company and its trademarks are famous, it is not likely that the Respondent has not known the trademarks of one of the most recognized and advertised companies.
Finally, in relation to the second element, the Panel understands the Complainant to suggest that, because the Respondent registered the Domain Name, it was not available and the Complainant was unable to register <hexmon.com> in its own name.
So far as the third element is concerned, the Complainant relies on the Respondent’s passive holding of the Domain Name and the fact that the Respondent has placed no content on a website at “www.hexmon.com” as establishing bad faith registration and use. The Complainant also alleges that the Respondent registered the Domain Name providing clearly inaccurate contact information and that the Respondent’s use of a privacy service is evidence of bad faith.
Finally, the Complainant states that “the [R]espondent is [sic] apparently knows the KOC, the TUPRAS and the trademark HEXMON very well. Therefore, when the Respondent registered the Domain Name, it knew that the term “Hexmon” was a trademark of the Complainant”.
The Complainant accordingly relies on previous panel decisions under the UDRP where it was held that the respondent’s constructive and actual knowledge of the complainant’s service mark rights prior to registering the disputed domain names was already strong evidence of registration of the domain name in bad faith.
The Response was filed by Michael Smith who uses the name Wizarc Computing. He accepts that the Domain Name is similar to the Complainant’s trademark HEXMON. He notes that neither of the Complainant’s domain names, namely <hexmon.net> and <hexmon.com.tr>, resolves to an active webpage.
The Respondent explains that for many years he has been interested in hex-based wargames. The Panel understands hex-based games to be board games based on an hexagonal grid. Before computers and the Internet they would be played using a board or on paper. The Respondent grew up playing tactical
hex-based wargames such as Tobruk, Star Fleet Battles and Advanced Squad Leader and during his tour in the US Navy created a hex-based tactical space-ship game on paper. He later started playing World of Warcraft (WOW) and other games online and in WOW he created a Troll Shaman character called Hexmon. This character had a spell in his repertoire called “Hex” and a Jamaican accent – so that “man” is pronounced “mon” – hence the “hexmon” correlation.
After creating this character, the Respondent set up a Twitter account as Hexmon in 2009 (twitter.com/hexmon). Some years later, in January 2012, the Respondent purchased the Domain Name and set up email accounts using “hexmon” including “@hotmail.com”, “@outlook.com” and “@gmail.com”. He has registered a number of domain names, often associated with characters he has created, including <zenwar.com> registered on October 4, 2009, <draighen.com> registered on July 15, 2013 and <intelliowl.com> registered on May 19, 2016. The Respondent has had a number of ideas as to what to do with these various domain names, but as yet has not had the time or resources to develop them.
Before registering these domain names he carried out searches using Google. In relation to the Domain Name the Respondent did not discover any other use of “hexmon”. The Respondent states that until the Complaint was filed he had not heard of the Complainant TUPRAS and, despite the Complainant’s assertion that it has advertisements all over the world, denies ever having seen an advertisement for TUPRAS or HEXMON.
The Respondent is adamant that there is no question of his having registered the Domain Name in bad faith. He was totally unaware of the Complainant or any use it might have made of HEXMON at the time he registered the Domain Name. Before doing so he carried out a Google search and found no references to HEXMON. At the time he registered the Domain Name, all “hexmon” domain names were available, including “.biz”, “.net” and “.org”, but he was only interested in registering “.com”. Contrary to the statement made in the Complaint, the Respondent certainly does not know KOC or TUPRAS or the Complainant’s trademark “hexmon” very well or at all.
Finally, the Respondent disputes that his use of a privacy service is any evidence of bad faith registration and use on his part. He believes that it is appropriate to use a privacy service when you are not interested in selling a domain name.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the registered proprietor of Turkey and European Union trademarks in respect of HEXMON. The first registration was made in 2014, more than two years after the Domain Name was registered by the Respondent on January 31, 2012. However, as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) makes clear, and as numerous UDRP panelists have found, the Policy requires only that the Complainant has relevant rights in a trademark at the time of filing the Complaint. Ignoring the gTLD suffix “.com”, the Domain Name is identical to the Complainant’s HEXMON mark. Accordingly the Panel finds that the Domain Name is identical to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant makes bald, cyclostyled assertions that the Respondent is not known as “hexmon” and does not contend to make a legitimate noncommercial or fair use of the Domain Name and that it could therefore only rely on rights or legitimate interests in respect of the Domain Name in connection with a bona fide offering of goods and services. The original Complaint made this assertion before the privacy service through which the Domain Name was registered disclosed details of the underlying registrant of the Domain Name. After such disclosure, in amending the Complainant, the Complainant simply added Wizarc Computing as Respondent. It made no substantive amendment to the Complaint.
The Complainant bases its assertions on an allegation that it has prior rights in HEXMON, which precede the Respondent’s registration of the Domain Name, and that the only interest that can be imagined for a person not having an apparent particular connection to the trademark HEXMON in registering the Domain Name is somehow to create a connection to the Complainant’s trademark.
The Complainant has not provided any evidence whatsoever that it has rights in HEXMON that predate the registration of the Domain Name in January 2012. Indeed, beyond details of its registrations of its Turkey and European Union trademarks, it has not provided any evidence whatsoever of any use of HEXMON at all. It has neither specified, nor given any details of, any products or services the Complainant may have provided under the HEXMON mark and no evidence whatsoever of any marketing or advertising of any such products or services under the mark at any time, let alone prior to the registration of the Domain Name. The Panel presumes that the Complainant intends to assert that it has used HEXMON in some way connected with its patent in respect of “a method for modeling and monitoring the amount of fouling in a heat exchanger”. The Panel could speculate that the Complainant adopted HEXMON from “HeatEXchanger” and “MONitoring”, but if so there is no explanation or statement in the Complaint as to any exploitation of the Complainant’s invention whether under the HEXMON mark or otherwise.
The Complainant also asserts that it is inconceivable that the Respondent could have any legitimate use for the Domain Name because it must have known of “one of the most recognized and advertised company’s trademarks” since the Complainant “and its trademarks are famous”, that “it has advertisements all over the world, from subways to advertisement spaces on the side of roads, streets and buildings” and that “its thousands of commercials appear on almost all TVs and radios in everyday”.
The Complainant has not produced any evidence whatsoever of any such advertising or given any plausible details of how the Respondent might have known of its HEXMON trademark at any time, let alone before it registered the Domain Name. The Panel confesses to finding grossly exaggerated the suggestion that advertisements by the Complainant for some product or service under the HEXMON mark “appear on almost all TVs and radios […] everyday”.
The Respondent has put forward what is on the face of it a perfectly credible explanation for his registration of the Domain Name, given his expressed interest in hex-based games and his registration of other domain names based on what appear to be fictional characters he has created. He used Hexmon to set up a Twitter account in 2009, more than two years before he registered the Domain Name. In the Panel’s view, the Complainant has failed to make out a case that the Respondent could have no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Since the Complainant has failed on the second limb, it is not strictly necessary for the Panel to reach a finding on the third limb. However, the Panel feels bound to point out that the Complainant has completely failed to show that the Domain Name was registered in bad faith. It has asserted that it has rights in respect of HEXMON that predate the registration of the Domain Name, but has produced no evidence whatsoever that this is the case. The Panel notes that the Complainant applied for its patent in respect of a method for monitoring heat exchanges, which it apparently relies on as evidence of its use of HEXMON, in November 2012, some 11 months after the Domain Name was registered. The Panel therefore considers it almost inconceivable that the Complainant could have made any use of HEXMON in respect of the invention of the patent either before November 2012 or, indeed, until some time afterwards.
Furthermore, the Panel finds that the Complainant has failed in any event to show that the Respondent must have known of the Complainant and its rights in the trademark HEXMON before the Complaint was served on the Respondent, let alone before the Domain Name was registered.
So far as bad faith use is concerned, there is no evidence of any use of the Domain Name by the Respondent until after the Complaint was filed, and it now resolves to the Respondent’s Twitter page. Although paragraph 3.3 of the WIPO Jurisprudential Overview 3.0 does reflect the finding by numerous UDRP panelists that the passive holding of a Domain Name may in appropriate circumstances amount to bad faith use, this cannot possibly support an allegation of bad faith registration and use where there is no evidence of bad faith registration and there is a credible good faith reason, as here, for the registration. Similarly, the Panel does not accept that in the current case the use by the Respondent of a privacy service in any way supports a finding of bad faith registration and use.
The Panel finds that the Complainant has failed to prove that the Respondent has registered and is using the Domain Name in bad faith.
7. Reverse Domain Name Hijacking (RDNH)
Paragraph 15(e) of the Rules provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. RDNH is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
Although the Respondent does not make any allegation of Reverse Domain Name Hijacking (RDNH) against the Complainant, the Response by the Respondent acting in person makes it clear that he regards the Complaint as totally unjustified and oppressive. The Rules do not require the Respondent to have made an express allegation of RDNH. In the circumstances, the Panel considers it appropriate to consider the issue of RDNH of its own volition.
What is clear is that the mere fact that a Complainant has not succeeded is not sufficient for a finding of RDNH. However, as paragraph 3.8 of the WIPO Jurisprudential Overview 3.0 points out, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. There was no doubt in this case that the Domain Name was registered more than two years before the Complainant registered its Turkey trademark. The Complainant made the bald assertion that it had prior rights in the trademark that preceded the registration of the Domain Name, yet it produced no evidence whatsoever that this was the case and the factual background as to the Complainant’s application for a patent in respect of an invention for which it may have used the trademark strongly suggested that any such use must have been long after the Domain Name was registered.
The Complainant made no allegations of bad faith use of the Domain Name beyond its passive holding by the Respondent. Even after the details of the underlying registrant were disclosed to the Complainant, it does not appear to have made any enquiries as to what rights or legitimate interests the Respondent may have had in respect of the Domain Name. Although scarcely relevant, as stated above, the Panel found the Complainant’s assertion that advertisements for its products or services under the HEXMON mark appeared on almost all TVs or radios every day to be grossly exaggerated.
In the circumstances, the Panel considers that the Complainant must have known that its allegations of bad faith were unfounded and that on proper consideration its Complaint was bound to fail. For these reasons, the Panel finds that there was RDNH in this case.
For the foregoing reasons, the Complaint is denied and the Panel declares that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking and accordingly constitutes an abuse of the administrative proceeding.
Date: June 6, 2017