WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Akzo Nobel N.V. v. Mustafa Erer and Yücel Akbaba
Case No. DCC2012-0005
1. The Parties
The Complainant is Akzo Nobel N.V. of Arnhem, Netherlands, represented by Valea AB, Sweden.
The Respondents are Mustafa Erer of Berlin, Germany and Yücel Akbaba of Izmir, Turkey.
2. The Domain Name and Registrar
The disputed domain name <akzonobel.cc> is registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2012. On May 16, 2012, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the disputed domain name. On May 18, 2012, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. In response to a request for confirmation by the Center about the language of the proceeding, Key-Systems GmbH dba domaindiscount24.com clarified by email on May 22, 2012 that the language of the registration agreement is both English and Turkish.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2012. The Response was filed with the Center on June 7, 2012. On June 18, 2012, the Center informed the Parties that the Panel Appointment Process would commence.
The Center appointed Kaya Köklü as the sole panelist in this matter on June 26, 2012. 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.
According to the Rules, paragraph 11, the language of the administrative proceedings should be the language of the Registration Agreement. In the present case, the Registration Agreement has been concluded in two languages, namely in the Turkish and the English language. As both Parties are apparently capable to understand and write in the English language, the Panel finds that it is appropriate to continue the administrative proceedings in the English language.
4. Factual Background
The Complainant is one of the largest paints and coatings companies in the world and a leading producer of specialty chemicals. It has operations in many countries and employs 55,000 people worldwide. The Complainant’s company name was introduced in 1994 as a result of a merger between the Dutch company Akzo and the Swedish company Nobel Industries.
The Complainant is the owner of the well-known trademark AKZO NOBEL. Since the above mentioned merger of the two companies in 1994, this trademark enjoys thorough trademark protection worldwide. With regard to the disputed domain name ending with the country code top-level domain (“ccTLD”) of Cocos (Keeling) Islands, it is noted that the trademark even enjoys protection in Australia, which covers trademark protection for the Cocos (Keeling) Islands as well.
The Complainant further owns and operates a web portal at “www.akzonobel.com”.
There are two Respondents, which are individuals located in Berlin, Germany and Izmir, Turkey. It seems that the first Respondent (Mustafa Erer) was already involved in a previous WIPO UDRP case in 2011 (Chryso v. Mustafa Erer / Bahadir Diker, WIPO Case No. D2011-1080 <chryso.org>). The second Respondent (Yücel Akbaba) was a former employee of a Turkish subsidiary of the Complainant. Both are hereafter referred to as “the Respondent”, unless indicated otherwise.
The disputed domain name was created and registered in the name of the first Respondent on March 21, 2012. On the website linked to the disputed domain name, several pictures of Mustafa Kemal Atatürk and some slogans like “fighted against imperialism” are displayed.
In its Response, the second Respondent offered to transfer the disputed domain name without any charge. The Complainant did not react on this offer within the due date of June 14, 2012.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
It argues out that the disputed domain name is likely to cause confusion among Internet user as it fully incorporates the mark AKZO NOBEL without any amendments or changes and, hence, is identical to the Complainant’s trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant underlines that it has never granted a permission or license to the Respondent to use the trademark AKZO NOBEL.
Additionally, it is argued that the Respondent has never used and does not intend to use the mark AKZO NOBEL in connection with a bona fide offering of goods or services. In this regard, it is also argued by the Complainant that the Respondent is not generally known by the disputed domain name and that it has not acquired any rights in the mark AKZO NOBEL.
Finally, the Complainant believes that the Respondent must have registered and used the disputed domain name in bad faith. The Complainant is convinced that the Respondent was aware of the AKZO NOBEL trademark well before the registration of the disputed domain name, particularly given that one of the Respondents was a former employee of a Turkish subsidiary of the Complainant.
In light of the above, the Complainant requests the transfer of the disputed domain name as a remedy in these administrative proceedings.
The Respondent replied to the Complainant’s contentions on June 7, 2012.
In its Response, the Respondent asserts that he aimed to create “a meeting point in internet media for especially Akzo Nobel employees to discuss company realities and to share Turkish culture with them”. It is further argued that “it was logical to choose a domain including Akzo Nobel words because of web site search ranking.”
It is further alleged that the registration of the disputed domain name was not illegal as the registration process followed a “defined routine procedure”. Furthermore, it is argued that there is no trademark infringement as the mark AKZO NOBEL is not used to “sell something, to offer, to buy any good”. Hence, the Respondent is of the opinion that “nobody can stop [him] to use this web site”.
6. Discussion and Findings
According to paragraph 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.
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 name is 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 name; and
(iii) The disputed domain name has been registered and is 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 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 as appropriate accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
Further, the Panel has taken note of the WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistently with the WIPO Overview 2.0.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainant’s trademark AKZO NOBEL.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights on AKZO NOBEL. The Complainant has provided sufficient evidence demonstrating that for many years it is the registered owner of a large number of AKZO NOBEL trademarks worldwide, including trademark protection in Turkey and on the Cocos (Keeling) Islands.
Second, the Panel finds that the disputed domain name is identical to the Complainant’s trademark AKZO NOBEL. The disputed domain name is an identical adoption of the registered trademark AKZO NOBEL and does not incorporate any amendments or additions. The Panel points out that the addition of a ccTLD has no distinguishing effect and, as being a technical prerequisite of a domain name registration, may not to be considered within the assessment of identity or confusing similarity between the disputed domain name and the trademark in question.
Given the findings above, the Panel concludes that the first requirement under paragraph 4(a) of the Policy is fulfilled.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel has recognized that this would result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of 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 shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements in paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or arguments to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no trademark, license or any similar right to use the Complainant’s mark in the disputed domain name.
Additionally, there is no indication in the current record that the Respondent is commonly known by the disputed domain name. 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 name. In particular, the Respondent has failed to show that the disputed domain name has been used in connection with a bona fide offering of goods or services.
Finally, there is also no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain to misleadingly divert users or to tarnish the AKZO NOBEL trademark. The Panel finds the Respondent’s allegation that the disputed domain name has been registered solely for the purpose of creating a social web portal for employees of the Complainant is not convincing. The Respondent did not provide any material or convincing argumentation supporting this allegation. The content provided on the web site linked to the disputed domain name does at least not indicate any such purpose of use. The Panel is convinced that this allegation is a purely self-serving assertion.
Hence, the Panel concludes that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel further believes that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel is convinced of the reputation and recognition of the Complainant’s trademark AKZO NOBEL and believes that the Respondent must have known this trademark when it registered the disputed domain name in 2012, many years after the Complainant’s trademark AKZO NOBEL has become registered and recognized worldwide, including in Turkey. This finding is also supported by the fact that one of the Respondents is a former employee of a Turkish subsidiary of the Complainant.
Although the Panel could not explicitly identify a commercial use of the disputed domain name at the time of this decision, it is nevertheless of the opinion that there is a bad faith registration and use by the Respondent. With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, this Panel believes that the current lack of a commercial use of the disputed domain name without any active attempt to sell it, does not as such prevent the finding of bad faith (see WIPO Overview 2.0, paragraph 3.2).
First, it is undisputable that the Complainant’s trademark is known worldwide and the Respondent was apparently well aware of the Complainant’s trademark. Second, the statements published on the website at the disputed domain name such as “fighted against imperialism” or “money or honour?” indicate that the Respondent has registered and uses the disputed domain name in order to tarnish the reputation of the Complainant’s business and trademark. Third, even if the Respondent’s allegations on its primary goals of registration were assessed as true, the Respondent did not provide any convincing argument why it is necessary to identically adopt the Complaint’s well-known trademark. Quite the contrary, the identical adoption of the Complainant’s trademark without bothering to incorporate any amendments or additions to the disputed domain name compared to the trademark AKZO NOBEL is in the Panel’s view a strong indication of the Respondent’s intention to tarnish the Complainant’s reputation and well-known trademark.
The fact that the Respondent has offered to transfer the disputed domain name to the Complainant free of charge does not change this assessment as it is the Panel’s view that the Respondent should have submitted this offer prior to these administrative proceedings. The Panel finds that submitting such an offer after being confronted with a Complaint does not cure the Respondent’s initial bad faith registration and use of the disputed domain name.
The Panel therefore concludes that the disputed domain name was registered and is 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.
For all 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 <akzonobel.cc> be transferred to the Complainant.
Dated: July 6, 2012