WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aygaz Anonim Sirketi (Aygaz) v. Ali Isleyen

Case No. D2018-2146

1. The Parties

The Complainant is Aygaz Anonim Sirketi (Aygaz) of Istanbul, Turkey, represented by June Intellectual Property Services Inc., Turkey.

The Respondent is Ali Isleyen of Ankara, Turkey.

2. The Domain Name and Registrar

The disputed domain name <aygazsobakiralama.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2018. On September 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 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.

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 September 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2018.

The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on October 30, 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 is one of the largest Turkish company operating in the LPG (“Liquid Petroleum Gas”) industry. The Complainant, under its AYGAZ brand, supplies, stocks, fills, distributes, and sells LPG products and related services.

The Complainant has been using the trademark AYGAZ continuously since the early 1960 as a trade name and holds many trademark registrations in Turkey and abroad, including Turkish Registration No. 2002/07354 for the trademark AYGAZ, registered on April 3, 2002, covering LPG products and services in classes 11, 37, and 39. The same registration was declared a well-known trademark by the Turkish Patent Institute in 2004.

The disputed domain name was created on October 2, 2017. According to the current WhoIs record, the Respondent is an individual domiciled in Ankara, Turkey.

The Panel visited the disputed domain name on November 19, 2018, and observed that the disputed domain name redirects to the active website “www.tecsobakiralama.com”, offering for sale heating equipment and related services.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark AYGAZ and that the addition of the combination of descriptive words “soba kiralama” – which means “stove rental” in Turkish – reinforces the association between the disputed domain name and the Complainant’s trademark.

The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to register or use any domain name incorporating the trademark AYGAZ.

Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent is well aware of the Complainant’s well-known trademark considering that it sells or offer for rental stoves with AYGAZ brand on it. Furthermore, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark by redirecting it to another website right after a cease-and-desist letter was sent to the Respondent.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceeding, to merit a finding that the disputed domain name be transferred to the Complainant:

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

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) the disputed domain name has been registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A trademark registration provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, the Complainant holds several trademark registrations for the AYGAZ trademark.

The disputed domain name <aygazsobakiralama.com> integrates the Complainant’s AYGAZ trademark in its entirety.

The disputed domain name differs from the registered AYGAZ trademark by the additional descriptive words “soba” and “kiralama”.

The combination of descriptive words “soba” and “kiralama” – which means “rent a stove” – does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, as it is a descriptive term that directly relates to services offered by the Respondent.

Several UDRP panels have ruled that the mere addition of a descriptive element does not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name, see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

As regards the generic Top-Level Domain (“gTLD”) “.com”, it is typically disregarded under the confusing similarity test under the Policy.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case.

Although the Respondent did not file a Response, a respondent’s default does not automatically result in a decision in favor of the complainant. See WIPO Overview 3.0, section 4.3 and the cases cited therein.

However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

As there are no exceptional circumstances for the failure of the Respondent to submit a Response, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. See, Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

The Panel notes that the disputed domain name redirects to the website “www.tecsobakiralama.com”, offering for sale AYGAZ and other related products. As to the question of when a reseller’s use of a domain name incorporating a mark constitutes a bona fide offering of goods and services; the consensus view was articulated in Oki Data Americas, Inc. v. ASD, Inc., supra. See WIPO Overview 3.0 at section 2.8. In that case, the authorized reseller’s domain name <okidataparts.com> incorporated the complainant’s OKIDATA trademark in full. The panel in Oki Data concluded that for a respondent to demonstrate that a resale offering was bona fide, the following conditions must be met:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the corresponding website to sell only the trademarked goods, otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods;

- the site itself must accurately disclose the respondent’s relationship with the trademark owner, i.e., respondent may not falsely suggest that it is the trademark owner, or that the website is the official site, if that is not the case; and

- the respondent must not try to “corner the market” in all relevant domain names, or deprive the trademark owner of reflecting its own mark in a domain name.

In this case, it appears from the website that the Respondent has been operating its business of selling stoves or offering stove rental services while not exclusively selling the Complainant’s products but also other third-party products i.e. UFO electrical stoves.

Moreover, the Respondent is using the stylized version or logo of the AYGAZ trademark on the website. The website includes several images of stoves with the use of the AYGAZ logo. All of these circumstances give the impression that the website is affiliated with the Complainant or that the Respondent is an authorized dealer of the Complainant.

Moreover it is the Panel’s view that using a descriptive word (i.e. “stove rental” in Turkish) together with a registered trademark strengthens the impression that the disputed domain name is in some way connected to the Complainant’s trademark (see, e.g., Société des Produits Nestlé S.A. v. MrToys.com LLC, WIPO Case No. D2012-1356; Allianz SE v. Roy Lee / Traffic-Domain.com, WIPO Case No. D2012-1459; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; and Swarovski Aktiengesellschaft v. www.swarovski-outlet.org, WIPO Case No. D2013-0335).

The Panel further notes that there is no disclaimer disclosing the lack of relationship between the Respondent and the Complainant and on the contrary, the content of disputed domain name strongly suggests that there is a business relation and/or affiliation with the Complainant.

For these reasons, the Panel concludes that the Respondent is clearly not making use of the disputed domain name in connection with a bona fide offering of goods or services.

In the Panel’s view the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complaint succeeds in relation to the second element of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

Considering the Panel’s finding under the second element, the Panel finds that the registration and use of the disputed domain name falls under the circumstances described under paragraph 4(b)(iv) of the Policy, namely, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by seeking to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Moreover, the Complainant sent a cease-and-desist letter dated April 11, 2018, to the Respondent. No reply was received. The Panel finds the Respondent’s conduct in failing to reply to the Respondent’s cease-and-desist letter to be further evidence of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

Lastly, the Panel observed that after the cease-and-desist letter was sent by the Complainant, the Respondent redirected to the disputed domain name to “www.tecsobakiralama.com” and continued its commercial activity.

In conclusion, the Respondent’s use of the disputed domain name, the Respondent’s failure to respond to the cease and desist letter, the Respondent’s decision to redirect the disputed domain name and the Respondent’s failure to provide any response, documentary or evidence all lead to the conclusion that the Respondent registered and used the disputed domain name in bad faith.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.

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 name <aygazsobakiralama.com> be transferred to the Complainant.

Emre Kerim Yardimci
Sole Panelist
Date: November 19, 2018