WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ermaksan Mak. San.Tic. AŞ v. PPA Media Services, Ryan G Foo
Case No. D2013-0801
1. The Parties
The Complainant is Ermaksan Mak. San.Tic. AŞ of Bursa, Turkey, internally represented.
The Respondent is PPA Media Services, Ryan G Foo of Santiago, Chile.
2. The Domain Name and Registrar
The disputed domain name <ermaksan.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2013. On May 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2013, the Registrar transmitted by email to the Center its verification response:
(a)confirming it is the Registrar for the disputed domain name;
(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint;
(c) indicating the disputed domain name was first registered on October 15, 2005;
(d) confirming the language of the registration agreement is English; and
(e) confirming the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center sent an email communication to the Complainant on May 24, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In the same email communication, the Center also requested the Complainant to amend the Complaint, namely paragraphs relating to the identification of the correct Registrar, and describe the grounds on which it is made, as required by Policy, paragraph 4 and Rules, paragraph 3. The Complainant filed an amended Complaint on May 27 and a second amended Complaint on May 28, 2013.
The Center verified that the Complaint together with the amended Complaints 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 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2013.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 26, 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 is a manufacturer of sheet metal fabricating equipment such as laser tools and systems, rod cropping, electrodes for plasma cutting, press brakes, punch presses, iron workers and engraving systems.
It started business in Turkey in 1965 producing textile and leather fabricating machines, generators and electric motors. Its business developed and expanded into sheet metal fabricating machines in 1980. It now exports its products to over 70 countries around the world including countries in the Americas including, through an agency, Chile.
The Complainant’s business operates under the brand name ERMAKSAN. It has registered trademarks for ERMAKSAN including United States trademark No. 3,291,159 registered on September 11, 2007 and International trademark No. 888322 registered on March 16, 2006, both for a range of goods in International Class 7.
According to the Complaint, “ermaksan” is an invented word, being a combination of syllables for the Turkish words for “name”, “machine” and “industry”.
The disputed domain name resolves to a website which consists of a number of links to suppliers of equipment or services in the sheet metal fabrication field such as “CNC Cutting Machine”, “Laser Marking Machines”, “Cutting Equipment”, “Hydraulic Press Machine” and “Sheet Metal Machinery”. There are also a number of links to specific brands or manufacturers. None of these appear to be ERMAKSAN brand machinery or services.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
No response has been filed. The Complaint (in its second amended form) has been served, however, on the physical and electronic coordinates confirmed as correct by the Registrar. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to decide on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and in accordance with the Policy, Rules and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In the present circumstances it is permissible to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
As is well established now, these are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
Further, the onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant states that it has not authorized the Respondent to use the trademark, ERMAKSAN. Nor is it in any other way associated with the Respondent. Further, the disputed domain name is plainly not derived from the Respondent’s name or that of the individual apparently associated with the Respondent. In addition, it appears that the disputed domain name is being used to generate pay-per-click revenue through advertisements for brands that compete with the Complainant’s business.
These factors raise a clear prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case.
The Respondent appears to have an address in Chile. The Complaint does not include evidence that the Complainant has a registered trademark for ERMAKSAN in Chile. That is not necessarily fatal to the Complaint in this case. First, the Respondent has not sought to assert some right or justification to ERMAKSAN under Chilean law. Secondly, the website to which the disputed domain name resolves at the time of preparing this Decision is not restricted just to business in Chile. For example, the page generated at the time this Decision was being prepared is entirely in English. The links on the page advertise businesses operating in various countries such as Australia and the United States of America and seek to generate custom from those countries as well as, in some cases, Latin America. Moreover, the distinctive component of the disputed domain name consists of (what so far as the Panel can ascertain) an invented or coined term which has significance only by reason of its association with the Complainant’s business. UDRP panels have repeatedly held that the adoption of such a name to generate revenue from click-through advertisements for businesses that are not associated with the Complainant’s trademark does not constitute a bona fide offering of goods or services for the purposes of the Policy.
The registered trademarks proved by the Complainant date from March 16, 2006, which is after the date the disputed domain name was first registered. The Registrar has not confirmed whether the disputed domain name was first registered to the Respondent or the Respondent acquired the registration at some later date. However, the Complainant has demonstrated that it was using ERMAKSAN long before the date it registered its trademarks and, further, before the disputed domain name was first registered. As it appears that “ermaksan” is apparently an invented or coined term, having significance only as a source identifier for the Complainant’s goods, it appears that the Respondent adopted the disputed domain name with full knowledge of the Complainant and its business.
Accordingly, the Panel finds that the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain name under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.
For the reasons discussed in sub-section 5B above, it appears likely that the Respondent registered the disputed domain name with knowledge of the Complainant and its business and has sought to generate revenues from the disputed domain name because of its significance as an identifier of the Complainant’s products. These activities fall clearly within paragraph 4(b)(iv) of the Policy:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
Accordingly, the Panel finds that the Respondent has both registered and is using the disputed domain name in bad faith.
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 <ermaksan.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: July 10, 2013