WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koçtas Yapi Marketleri Ticaret A.S. v. Adlatus of the Day, DomDoo Domainholding
Case No. D2013-0863
1. The Parties
The Complainant is Koçtas Yapi Marketleri Ticaret A.S., Tasdelen Mevkii, Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Adlatus of the Day, DomDoo Domainholding, Abidjan Lagunes, Côte d'Ivoire.
2. The Domain Name and Registrar
The disputed domain name <koctas.asia> is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2013. On May 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 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 May 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2013.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on July 3, 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.
Having regard to the circumstances of this administrative proceeding, in which no copy of the Registration Agreement has been provided by the Complainant, the Panel determines, pursuant to paragraph 11(a) of the Rules, that the language of the proceeding is English, i.e. the language used in the Complaint.
4. Factual Background
The Complainant is a subsidiary of Koç Holding A.S., Turkey’s largest industrial and services group in terms of revenues, exports, and number of employees.
The Complainant operated as a wholesaler of building materials until 1996, when it decided to start retailing and to open its first home improvement store.
The Complainant is today is a major player in the Turkish Do-It-Yourself market with a total sales area of 160,000 m2. Its 30 stores in 18 provinces offer consumers a wide variety of home improvement and home renovation products.
According to the Complainant, the Complainant's brand awareness in Turkey reached a phenomenal 99% as a result of broadening geographical reach and intensive advertising, with such messages as “homes that become beautiful for less” and “small price, big change”.
In a recent study on Turkish shopping center visitors, the Complainant was apparently named “The most Liked and Preferred Brand in Shopping Centers” in the furniture – decoration category.
The Complainant registered the mark KOÇTAS in Turkey in 1998 and currently holds numerous KOÇTAS trademark registrations from the Turkish Patent Office (together, “the Mark”).
The Complainant owns since 1996 and uses for its main website the “www.koctas.com” domain name. Its Internet sales are significant (over five million visits in 2010 resulting in 30,000 sales transactions).
In addition, the Mark is also the Complainant's trading name.
The disputed domain name was registered on March 24, 2008.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name reproduces the Mark in which the Complainant has rights and is confusingly similar to the Mark as the disputed domain name, <koctas.asia>, contains the Mark in its entirety. The Complainant also asserts that the Mark is well-known, as was acknowledged by prior UDRP panels.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant asserts that it did not license or otherwise permitted the Respondent to use the Mark, that the Respondent has never been commonly known by the disputed domain name, and that the Respondent has no trademark rights.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith and is not making a legitimate noncommercial or fair use of the disputed domain name but instead that the disputed domain name resolves to a website featuring sponsored links which is not a bona fide offering of goods and services but a means of riding on the goodwill and reputation of the Mark.
(iv) Furthermore, the Complainant submits that by registering the disputed domain name, the Respondent sought to misleadingly divert consumers for commercial gain.
(v) Finally, the Complainant submits that the Respondent acted in bad faith because it knew or should have known about the Complainant's rights in and to the Mark when registering the disputed domain name.
(vi) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Aspects
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the deadline set by the Policy and the Rules.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the assertions made in the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
B. Requirements of Paragraph 4(a) of the Policy
(i) Identical or Confusingly Similar
In comparing the Mark with the disputed domain name <koctas.asia>, it is evident that the latter consists solely of the Mark.
It is also well-established that the specific top level of a domain name such as “.asia”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
The Panel finds that the disputed domain name <koctas.asia> is confusingly similar to the Mark, which it incorporates in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a Response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name, or uses a corresponding name in a business.
The disputed domain name resolves to a website featuring sponsored links.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no rights or legitimate interests in the disputed domain name, (ii) is not commonly known by the disputed domain name, and (iii) was not licensed or otherwise permitted by the Complainant to use the Mark.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
(iii) Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering and using a disputed domain name identical or similar to the Mark.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
The Panel notes that the Complainant and its parent company had to initiate several UDRP proceedings, resulting in the transfer of the disputed domain names. See Koç Holding A.S. v. Keep B.T., WIPO Case No. D2009-0938; Koçtas Yapi Marketleri Ticaret A.S. v. Yavuz Bayyigit / Omer Faruk Aksakalli, WIPO Case No. D2011-1278; Koçtas Yapi Marketleri Ticaret A.S. v. Ohran izgin, WIPO Case No. D2012-2245.
The Panel therefore considers that the notoriety of the Mark makes it highly unlikely that the Respondent would have chosen to register the disputed domain name randomly, not knowing of the Complainant’s rights in the Mark prior to acquiring the disputed domain name. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, L.L.C. v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. Where a respondent knew or should have known of the registration and use of a trademark prior to registering a disputed domain name, such conduct may also be a demonstration of bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Here, the Complainant has argued that the disputed domain name is used to divert Internet users for commercial gain, which, coupled with the specificity of the Complainant's activity, makes any good faith use utterly implausible.
Besides, some UDRP panels have held that in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See paragraph 2(b) of the Policy; Nike, Inc v. B.B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name are in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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, <koctas.asia> be transferred to the Complainant.
Date: July 17, 2013