WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Borusan Mannesmann Boru Sanayi ve Ticaret A.Ş. v. Wise Software / Ersin Ayaz
Case No. D2014-0004
1. The Parties
The Complainant is Borusan Mannesmann Boru Sanayi ve Ticaret A.Ş. of Istanbul, Turkey, represented by BTS & Partners, Turkey.
The Respondent is Wise Software, Ersin Ayaz of Istanbul, Turkey, self-represented.
2. The Domain Name and Registrar
The disputed domain name <borusan.net> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2014. On January 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 3, 2014, the Registrar transmitted by email to the Center its verification response confirmed that the Registrant for the disputed domain name was different than the Respondent named in the Complaint. The Center sent an email communication to the Complainant on January 14, 2014, informing it that its Complaint was administratively deficient and providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 14, 2014.
On January 4, 2014, the Center received an informal email communication in Turkish from the Respondent. The Center acknowledged the same on January 6, 2014, and noted that, according to paragraph 11 of the Rules, noting that the language of the registration agreement is English, the language of this administrative proceeding is English, subject to the authority of the panel to determine otherwise.
The Center verified that the Complaint together with the amendment to 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 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2014.
The Center appointed Ugur G. Yalçiner as the sole panelist in this matter on February 6, 2014. 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.
On February 7, 2014, the Respondent sent an informal email communication in Turkish to the Panel. In this respect, on February 12, 2014, the Center reminded the parties about the prohibition contained in the Rules, paragraph 8, against unilateral communications with the Panel and that the language of this administrative proceeding was English.
The Panel notes that the language of the registration agreement is English. Accordingly, the Panel finds that the appropriate language of the proceedings in this case is English.
4. Factual Background
The Complainant is a well-known Turkish company that has been established in 1958 and the company is active in steel, distributorship, logistics, energy industries. The Complainant is leading company in the field of steel pipe production in Turkey and has a partnership with Europe’s leading steel and technology company, Salzgitter Mannesmann GmbH since 1998. The company provides products for various international projects such as the Baku-Tbilisi-Ceyhan Pipeline, the NK1 Oil Pipeline, the Şahdeniz, the Blue Stream, the Turkey-Greece-Hungary Gas Pipeline and the United States Elba Express Natural Gas Pipeline projects. The Elba Express Project, with a budget of USD 170 million, has been called one of the greatest projects being achieved by a Turkish manufacturer in the United States of America.
The Respondent is from Turkey.
The Complainant has a registered trademark BORUSAN. The registration of the trademark in class 06 before the Turkish Patent Institute has been made on April 1, 1991 and renewed on April 1, 2011 for ten more years as submitted in Annex 4 of the Complaint.
The disputed domain name <borusan.net> was created on November 25, 2013.
5. Parties’ Contentions
The Complainant’s assertions may be summarized as follows:
The Complainant is a well-known company that has been established in 1958 and the company is active in steel, distributorship, logistics, energy industries. The Complainant claims that it is one of the largest group companies of Turkey with approximately 14 different group companies operating in various different sectors. One of those companies affiliated to Borusan Holding is Borusan Mannesman Boru Sanayi ve Ticaret A.Ş. The Complainant alleges that it has become a trusted brand for more than 55 years in all over the world. While exporting products to various countries in America, Europe, and Asia, it contributes to Turkey and it also grows into one of the main driving forces of the Turkish economy due to its assurance for future developments.
The trademark BORUSAN is a well-known mark and the disputed domain name <borusan.net> is identical with the Complainant’s well-known trademark.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not use such name as his legal name, corporate name or a commonly known identifier. The Respondent has not made a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish BORUSAN trademark.
The Complainant further contends that it “sent a notification to the Respondent on 4 December 2013 as provided Annex-5. In this notification, the Complainant has explained why the Respondent’s registration violates the registered trademark rights of the Complainant, and asked for the transfer of the domain name. In his response provided as Annex-6 and in the consequent phone call, the Respondent has offered to sell the domain name to the Complainant. This also demonstrates the Respondent’s lack of interest in the domain name as the Respondent has offered to sell the domain name to the Complainant as response to the first conduct of the Complainant.”
With respect to paragraph 4(a)(iii), 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules, the Complainant contends that the Respondent has registered the disputed domain name in 2013, after the Complainant’s well-known trademark BORUSAN has been registered in Turkey. This clearly shows that the Respondent was well informed of the trademark when it registered the disputed domain name, thus his registration clearly constitutes bad faith.
The Respondent does not actively use the disputed domain name. When the Complainant contacted the Respondent, it offered to sell the disputed domain name to the Complainant.
On the basis of the above, the Complainant requests transfer of the disputed domain name.
The Respondent did not formally reply to the Complainant’s contentions. The Respondent’s email communication in Turkish of January 6, 2014, can be summarized as follows:
- There is no content under the website of the disputed domain name;
- There is no violation of BORUSAN trademark;
- The disputed domain name can be transferred to the Complainant in the event of covering the Respondent related expenses in the amount of USD 500
The Panel also notes that the Respondent sent an email communication to the Panel dated February 7, 2014, in Turkish language stating as follows:
-- The Respondent couldn’t send his arguments due to the language of proceedings,
-- There is no harm against the trademarks of the Complainant,
-- Everybody knows that “.com”, “.net, “.org” domain names can be registered without any condition which exists for “.com.tr”
-- There is no confusion with the trademark BORUSAN,
-- The Respondent bought the disputed domain name from “godaddy” 2 years ago by auction,
-- The Respondent can sell the disputed domain name to the Complainant if they are interested in,
-- If the disputed domain name is transferred to the Complainant, then the Respondent’s rights will be violated.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) The disputed 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 in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
In the Panel’s view, the Complainant has rights in the BORUSAN trademark considering the trademark registrations in Turkey on April 1, 1991.
The Panel agrees that the disputed domain name is identical to the Complainant’s trademark and the distinctive term of the Complainant’s trade name due to fact that there is no other term in the disputed domain name.
Moreover, the full inclusion of the Complainant’s well-known mark may cause the false impression that any offered product or service under the disputed domain name is linked to the Complainant.
Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s mark and the first requirement under paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel notes that the Complainant did not grant any license, permission or authorization to the Respondent to use the BORUSAN mark in the disputed domain name. The Panel also notes that the Respondent does not have any registered trademarks or trade names.
Additionally, the Panel notes that the Respondent has not replied to any of the Complainant’s or the Center’s correspondences, apart from submitting email communications to the Center and the Panel which indicate the willingness to transfer the disputed domain name to the Complainant for the amount of USD 500. The Panel considers that the Respondent’s statement shows it has no interest in the disputed domain name.
The Panel has carefully considered the Respondent’s assertions and finds that the Respondent has not successfully rebutted the Complainant’s prima facie case.
Therefore, also in light of the Panel’s findings below, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel confirms the reputation and recognition of the Complainant and its trademark BORUSAN. The Panel is convinced that the Respondent must have known of this trademark when it registered the disputed domain name, since the Respondent is a Turkish entity/individual and it must have been aware of the Complainant’s well-known trademark.
The Panel recognizes the Complainant’s reputation in its field of activities. The Complainant established satisfactory evidence that BORUSAN is the Complainant’s trademark which has been granted protection.
The Respondent has also made no active use of the disputed domain name. In a number of previous cases, passive holding of a domain name was construed to fall within the meaning of paragraph 4(a)(iii) of the Policy, evidencing bad faith use in light of the circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Respondent expressed in his email messages to the Center and the Panel that it can sell the disputed domain name to the Complainant if they are interested in it.
In view of the foregoing, the Panel finds that the Respondent was aware or must have been aware of the trademark BORUSAN before registering the disputed domain name. In light of all the circumstances of this case, the Panel finds that it is more likely than not that the Respondent registered and used 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 <borusan.net> be transferred to the Complainant.
Ugur G. Yalçiner
Date: February 20, 2014