WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sembol Plastik İnşaat Malzemeleri İç ve Dış Tic. San. Ltd. Şti. v. Ali Akgoz
Case No. D2013-0069
1. The Parties
The Complainant is Sembol Plastik İnşaat Malzemeleri İç ve Dış Tic. San. Ltd. Şti. of Istanbul, Turkey, represented by Salih Bulut, Turkey.
The Respondent is Ali Akgoz of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <sembolplastik.com> is registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2013. On January 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2013.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on February 14, 2013. 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 started its commercial activities in Turkey in 1998. The Complainant is a manufacturer of plastic boxes and stands.
The Complainant has registered its trademark SEMBOL on July 11, 1995 before the Turkish Patent Institute with in classes 06, 14, 17, 19, 20 and 21, including all plastic boxes and storage functions products, bottles and material storage boxes manufactured with plastic injection machinery.
Since the year 2003, the Complainant is the legal owner and user of the domain name <sembolplastik.com.tr>.
“Sembol Plastik” is also the trade name of the Complainant.
The disputed domain name was registered on June 24, 2003, long after the Complainant has registered its SEMBOL trademark.
5. Parties’ Contentions
The Complainant owns the SEMBOL trademark, which is protected in Turkey in connection with the manufacturing of plastic boxes and stands.
The Complainant is a well-known company, the Respondent knew about the Complainant’s trademark before the disputed domain name was registered. Furthermore, the Complainant and the Respondent are members of the same industrial sector.
The disputed domain name has been directed to the Respondent website at “www.hipas.com.tr”.
According to the Complainant, due to the confusing similarity between the disputed domain name and the SEMBOL trademark, the disputed domain name is considered confusingly similar to the SEMBOL trademark. The disputed domain name is a combination of two separate words, namely “sembol” and “plastik”. The word “Sembol” is the Complainant’s main trademark and its company name. The second word in the trademark is “plastik” (“plastic” as its English equivalent), a descriptive and generic term
The Respondent has no rights or legitimates interests in respect of the disputed domain name. The Respondent has never been commonly known by the disputed domain name or the trademark SEMBOL.
The Respondent uses the disputed domain name to divert web traffic for commercial gain using the good will built up by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name registered by the respondent 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 with respect to 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 has proven to own the trademark SEMBOL and the trade name “Sembol Plastik”. The SEMBOL trademark is entirely included in the disputed domain name. The adjunction of the word “plastik” to the trademark SEMBOL in the disputed domain name does not diminish the confusing similarity with the trademark, since the dominant part of the disputed domain name is the trademark SEMBOL and the word “plastik” is an ordinary descriptive Turkish word.
In similar cases, previous UDRP panels have found that adding descriptive words does not avoid the likelihood of confusion between a trademark and a domain name incorporating said trademark. See e.g. Sanofi-Aventis v. Gideon Kimbrell, WIPO Case No. D2010-1559; Greenbrier IA, Inc. v. Moniker Privacy Services/Jim Lyons, WIPO Case No. D2010-0017 and Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green, WIPO Case No. D2010-0024.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark SEMBOL in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy a respondent can establish its rights or legitimate interests in its domain name if it shows the presence of any of the following circumstances:
(i) before any notice to the respondent 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent 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.
It is for the Complainant to demonstrate that this condition is met. If the Complainant is successful in demonstrating that the condition is met prima facie, it is for the Respondent to provide evidence of its rights or legitimate interests. Accordingly, the burden of production shifts to the Respondent.
The Complainant contends that the Respondent does not use the disputed domain name for any legitimate noncommercial purpose or makes any fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent failed to respond to the Complaint.
It is obvious that the Respondent enjoys commercial gain from use of the website and the Panel finds registering a domain name incorporating a trademark and using it to misdirect Internet users to websites offering competing products and services cannot be considered a bona fide use, or fair or noncommercial use.
Accordingly, the Panel considers that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is of the opinion that the Respondent must have been aware of the Complainant and its trademark rights when he registered the disputed domain name. Bearing this in mind, the Panel finds the Respondent’s bad faith is illustrated as the disputed domain name resolves to a website offering services in direct competition with the Complainant’s services. The Panel is prepared to infer that the Respondent is taking advantage of the goodwill and reputation of the Complainant’s trademark for commercial gain and it well-established that such use is evidence of bad faith. Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Universal Spheres Inc., WIPO Case No. D2010-0822. Such use clearly threatens to divert actual clients away from the Complainant and disrupt the Complainant’s business.
As in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonnoma International LDC, WIPO Case No. D2002-0131, after examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favor of the Complainant on the third element 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 name <sembolplastik.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Date: February 28, 2013