WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ingenico Group v. Nadir Dinc
Case No. D2018-1569
1. The Parties
The Complainant is Ingenico Group of Paris, France, represented by Markplus International, France.
The Respondent is Nadir Dinc of Konya, Turkey.
2. The Domain Names and Registrar
The disputed domain names <ingenicoturkey.com> and <ingenicoyetkiliservisi.com> are registered with IHS Telekom, Inc. (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 12, 2018. On July 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 20, 2018, 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.
Pursuant to the Complaint submitted in English and the registrar verification dated July 20, 2018 stating that Turkish is the language of the Registration Agreement of the disputed domain names, on July 23, 2018, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On July 23, 2018, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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 in English and Turkish of the Complaint, and the proceedings commenced on July 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 21, 2018.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on August 23, 2018. 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 identifies itself in the Complaint as "one of the leading companies in seamless payments providing end to-end payment solutions to enable commerce across all channels: in-store, online and mobile". Pursuant to Annexes 1 and 9 of the Complaint, the Complainant is present in 170 countries and has an office in Turkey, the country where the Respondent is located.
The Complainant owns numerous trade marks for INGENICO including Turkish trademarks No. 2011 107499 dated March 19, 2013, in classes 9 and 36, and No. 2002 28392 dated June 10, 2002, in classes 9 and 36 and International trademark No.1210578 dated January 3, 2014, in classes 9, 35, 36, 37, 38 and 42; and International trademark No.1004927, dated October 9, 2008 in classes 9,16, 35, 36, 37, 38 and 42.
Pursuant to Annex 12 of the Complaint, the Complainant has registered a domain name under a generic Top-Level Domain ("gTLD") and a country-code Top-Level Domain ("ccTLD") containing the term "ingenico", for example, <ingenico.com.tr> (registered on June 23, 2004) and <ingenico.com> (created on December 17, 1998). The Complainant uses these domain names to connect to a website through which it informs potential customers about its INGENICO mark and its products and services.
The disputed domain names were registered on June 2, 2018 and June 13, 2018. The Panel visited the disputed domain name <ingenicoturkey.com> on September 4, 2018 and observed that the disputed domain name resolves to a parking page in Turkish, including the Respondent's contact details and offering the disputed domain name for sale. The Panel also visited the other disputed domain name <ingenicoyetkiliservisi.com> and determined that it was currently inactive.
5. Parties' Contentions
The Complainant requests the transfer of the disputed domain names.
The Complainant believes the disputed domain names are confusingly similar to the Complainant's INGENICO trademarks as the terms "Turkey", and "yetkili servisi" which means "authorized service" in English, are not sufficient to differentiate the disputed domains name from the Complainant's trademarks.
The Complainant also states that the addition of the gTLD ".com" does not have any impact on the overall impression of the dominant portion of the disputed domain names and is therefore irrelevant to determine the confusing similarity of the disputed domain names to the trademarks.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. In particular, the Complainant states that the Complainant has never granted a license or any other permission to the Respondent to use its INGENICO trademark. The Complainant asserts that the Respondent has never used and does not intend to use the INGENICO trademark in connection with a bona fide offering of goods and services. Additionally, the Respondent has not made any use of the disputed domain names since their registrations. Indeed, the domain names are inactive. Additionally, the Complainant argues that, prior to the registration of the disputed domain names, the Complainant already engaged an UDRP proceeding (see Ingenico Group S.A. v. Nadir Dinc, WIPO Case No. D2018-0551) against the same Respondent regarding the domain names and the panel has ordered their transfer to the Complainant, therefore, it is impossible that the Respondent was not aware of the existence of the Complainant and its trademarks.
The Complainant states that the Respondent has registered and is using the disputed domain names in bad faith as the Complainant's trademarks were registered and used by the Complainant well before the Respondent became the owner of the disputed domain names. And also asserts that it is obvious that the Respondent was well aware of the Complainant's business when registering the disputed domain names as the Complainant is established and well known throughout the world and has been present for more than 20 years in Turkey, the home country of the Respondent and the Respondent itself was involved in a domain name dispute where the bad faith use and registration of domain names which include the trademark INGENICO was established.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Although the language of the Registration Agreement of the disputed domain names is Turkish, the Panel determines in accordance with the Rules, paragraph 11(a) that the language of this administrative proceeding shall be English.
The Panel finds that it would be inappropriate to conduct the proceeding in Turkish and request a Turkish translation of the Complaint, noting that the Respondent has failed to raise any objection about the language of the proceeding, or to respond in any way to the Complaint, despite having received all communications from the Center in Turkish and in English. And additionally, the Panel finds that it would be inappropriate to conduct the proceeding in Turkish as the disputed domain name <ingenicoturkey.com> consists of the English word "Turkey", rather than the Turkish translation of this geographical term, and the Complainant is not fluent in the Turkish language.
6.2 Substantive Issues
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the INGENICO trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding the INGENICO trademark. Although not identical, the disputed domain names fully incorporate the trademark INGENICO. The disputed domain names are confusingly similar to the trademark INGENICO as the addition of the terms "Turkey" and "yetkili servisi", which means "authorized service" in English, do not prevent a finding of confusing similarity with the Complainant's trademark (see, e.g., Realm Entertainment Limited v. Atilim Kaymaz, WIPO Case No. D2017-1263; Realm Entertainment Limited v. Ferhat Aydin, WIPO Case No. D2017-1258; Realm Entertainment Limited v. Necat Celik, WIPO Case No. D2016-0785). Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") makes clear that "Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements".
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain names. The Respondent, without the Complainant's authorization or consent, has registered domain names that are confusingly similar to the Complainant's distinctive INGENICO mark.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain names within any of the "safe harbors" of paragraph 4(c) of the Policy.
Based on the record in this proceeding the Panel considers it most likely that the Respondent was aware of the Complainant and the Complainant's INGENICO mark when registering the disputed domain names as prior to the registration of the disputed domain names, the Complainant already engaged an UDRP proceedings against the same Respondent regarding the domain names <ingenicoturkiye.com> and <ingenicomarket.com> and the panel in that case has ordered their transfer to the Complainant (see Ingenico Group S.A. v. Nadir Dinc,WIPO CaseNo. D2018-0551). In the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain names in order to trade on the goodwill and reputation of the Complainant's mark and/or to disrupt the business of the Complainant through the creation of Internet user confusion. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
Hence, the Panel finds that the Complainant has also satisfied the second requirement of the Policy, namely paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the INGENICO trademark. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
Moreover, the Respondent has previously registered at least one other domain name incorporating the INGENICO trademark (see Ingenico Group S.A. v. Nadir Dinc, WIPO Case No. D2018-0551). For the purposes of the third element of the Policy, such pattern of abusive conduct shall be further evidence of bad faith.
The Panel notes that the Respondent is not actively using the disputed domain names (the disputed domain name <ingenicoturkey.com> appears to be parked and offered for sale and the disputed domain name <ingenicoyetkiliservisi.com> appears to be inactive). In this regard, the Panel is of the opinion that such lack of active use of the disputed domain names (so called "passive holding"), does not prevent a finding of bad faith. See section 3.3 of the WIPO Overview 3.0.
The Panel also believes that the Respondent's lack of a response additionally supports the impression that he has registered the disputed domain names in bad faith without any legitimate interest to use them, Awesome Kids LLC v. Selavy Communications, WIPO Case No. D2001-0210.
Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain names have been registered and are being used in bad faith and that the Complainant has established the third element under 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 names <ingenicoturkey.com> and <ingenicoyetkiliservisi.com> be transferred to the Complainant.
Date: September 5, 2018