WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Çiçeksepeti İnternet Hizmetleri Anonim Şirketi v. Bonaport LLC, Mehmet Ali Alsoy
Case No. D2014-1775
1. The Parties
The Complainant is Çiçeksepeti nternet Hizmetleri Anonim Şirketi, of Kagithane, Turkey, represented by Cagirgan Law Firm & IP Services Ltd., Turkey.
The Respondent is Bonaport LLC, Mehmet Ali Alsoy of Wilmington, Delaware, United States of America (“U.S.”), represented by Erdem Kaya Partners, Turkey.
2. The Domain Name and Registrar
The disputed domain name <bonnyfood.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2014. On October 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2014, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 20, 2014 providing the registrant and contact information disclosed by the Registrar, and in response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 24, 2014.
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 October 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response November 17, 2014. The Response was filed with the Center on November 17, 2014.
The Center appointed Luca Barbero, Emre Kerim Yardimci, and David E. Sorkin as panelists in this matter on December 23, 2014. The Panel finds that it was properly constituted. Each member of 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.
The Complainant submitted a Supplemental Filing on December 25, 2014, to which the Respondent replied on December 29, 2014.
In light of the Supplemental Filings submitted by the parties, that the Panel decided to consider in this proceedings, the decision due date was postponed to January 30, 2015.
4. Factual Background
The Complainant is a Turkish e-commerce company which provides goods and services in the area of floriculture, fruit, cake, and biscuit arrangements, operating the websites “www.ciceksepeti.com” and “www.frutation.com”.
The Complainant acquired the following Turkish trademark registrations previously owned by Bonnyfood A.S. through a judicial auction on May 16, 2014, paying a price of 265.000,00 TRY (corresponding to approximately 117.000,00 USD): trademark registration No. 2010/52138 for BONNYFOOD (figurative mark), in classes 30, 35, and 43; No. 2009/09000 for BONNY (figurative mark), in classes 30, 35, and 43; and No. 2012/18724 for BONNY (word mark), in class 35.
The trademark BONNYFOOD No. 2010/52138 was filed on August 10, 2010 in the name of the Turkish company BONNYFOOD A.S. and was registered on April 9, 2013. According to the trademark records, the recordal of assignment was made on June 23, 2014 and completed before July 18, 2014.
After purchasing the trademark BONNYFOOD through judicial auction, the Complainant sent a letter to Bonnyfood A.S. in order to request the transfer of the disputed domain name and of <bonnyfood.com.tr> as trademark owner of the mark BONNYFOOD. Bonnyfood A.S. sent a response letter to the Complainant indicating that it was ready to transfer the domain name <bonnyfood.com.tr> but not the disputed domain name <bonnyfood.com>, since one of the shareholders of the company Bonnyfood A.S. held control over the disputed domain name.
In view of the above, the Complainant currently operates the website “www.bonnyfood.com.tr”, at which it provides cake, biscuit, chocolate and fresh fruit arrangements to its customers under the trademark BONNYFOOD.
The disputed domain name <bonnyfood.com> was registered on August 29, 2008 through a privacy service. According to the Respondent, it was registered by Ms. Didem Güney Alsoy, and the Complainant contends that Ms. Alsoy currently holds registration and control over the disputed domain name even though the evidence submitted shows that the second renewal of the domain name was made under the name of the company Techoplus A.S., which then merged into Bonnyfood A.S. on July 7, 2010.
The Registrar-identified registrant of the disputed domain name is the U.S. company Bonaport LLC, which was incorporated on August 28, 2014. The contact person indicated in the Registrar’s WhoIs records is Mr. Mehmet Ali Alsoy (the husband of Ms. Alsoy, who is a shareholder of Bonnyfood A.S.).
Mr. Alsoy also owns another company, Favorya Internet Pazarlama Ticaret Limited Sirket (“Favorya”) and operates the website “www.lezzetlihediye.com”
A trademark application for BONNYFOOD was filed in the name of the company Bonaport LLC on September 16, 2014 before the United States Patent and Trademark Office (“USPTO”). Said application, which was assigned the number 86395576, was filed in International classes 35 and 43.
The disputed domain name is pointed to the website “www.bonnyfood.com”, promoting food industry market research and other marketing services. Reference is made on the website to the company Bonaport LLC as owner of the brand BONNYFOOD. Banners published on the site lead users to the website “www.lezzetlihediye.com”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to the trademark BONNYFOOD in which the Complainant has registered rights pursuant to the purchase of the trademark at a judicial action in May 2014.
The Complainant highlights that its main goal when paying quite a large amount of money for purchasing the trademark BONNYFOOD was being able to operate a website under the disputed domain name, in light of the reputation acquired by the disputed domain name.
As a result of its purchase of the trademark at the judicial auction, the Complainant affirms that the Respondent does not have a legal right to the disputed domain name.
The Complainant asserts that, in light of the Respondent’s registration and use of the disputed domain name, its trademark BONNYFOOD is being tarnished and diluted and the Complainant’s reputation is damaged as consumers who trust the Complainant are misleadingly diverted to another website named “www.lezzetlihediye.com”.
The Complainant points out that the Respondent acquired and is using the disputed domain name in bad faith since:
- The Respondent was established and has acquired the disputed domain name for the purpose of disrupting the business of a competitor, namely Bonnyfood A.S., at which the wife of the Respondent company’s owner is a shareholder;
- The Respondent is still using the disputed domain name for the purpose of disrupting another competitor, namely the Complainant;
- The Respondent sells the same products as the Complainant through its website at “www.lezzetlihediye.com”, whose content concerns fruit, cake and biscuit arrangements, giving rise to confusion and trying to attract the attention of the Complainant’s customers. The Complainant concludes that the Respondent is intentionally attempting to attract for commercial gain Internet users to its website “www.lezzetlihediye.com”, by creating a likelihood of confusion with the Complainant’s mark.
In its amendment to the Complaint, the Complainant also asserts that the Respondent (Mr. Alsoy) is acting in bad faith through i) his recent attempts of setting up a shell company called Bonaport LLC, which was incorporated on August 28, 2014 and was registered through an agent named Delaware Business Incorporaters, Inc., whose address corresponds to the Registrar-disclosed registrant’s address; and ii) its filing of a trademark application, on September 16, 2014, for the registration of the mark BONNYFOOD in the name of his fictitious U.S. company, against which the Complainant intends to take necessary legal actions in the U.S., separately.
The Complainant explicitly objects to the Respondent’s U.S. address, stating that it is not the principal address of the Respondent and should not be taken into account regarding the mutual jurisdiction it relied on in its Complaint. In particular, the Complainant states that Mr. Alsoy is a Turkish citizen focusing its business activities in Turkey through his company Favorya İnternet Pazarlama Ticaret Limited Şirketi (“Favorya”), which the Complainant names as co-Respondent.
The Respondent requests to dismiss the designation of Favorya as the second Respondent, stating that, even if this company was founded by the same person (Mr. Alsoy), every company has its own legal personality, and sharing the same founder does not automatically make a company liable for its sister company’s actions and activities.
The Respondent also states that Favorya has never used the trademark BONNYFOOD and has never controlled the disputed domain name for any reason at any time, as said company is the owner of the LEZZETLIHEDIYE trademarks and domain names, whose rights of use and control have been assigned to a third party company, named Filizgift Gida Ve Ihtiyaç Maddeleri Egitim Danismanlik Snayi Ve Ticaret Limited Sirketi (“Filizgift”).
The Respondent has submitted an invoice issued by Bonaport LLC to Filizgift for a customer expectations research covering 13 cities in Turkey and states that the business relationship between said companies does not entail that Favorya or Filizgift have ever infringed the trademark BONNYFOOD or have owned the disputed domain name.
The Respondent also states that the Complainant has been infringing the Respondent’s trademark LEZZETLIHEDIYE and conducting unfair competitive activities on the Internet since February 24, 2014 and that a lawsuit was filed by Favorya against the Complainant based on unfair competition before the Istanbul Commercial Court of First Instance on September 30, 2014.
The Respondent concludes that Favorya should be found irrelevant to this proceeding and that the real and appropriate Respondent of this proceeding is the Alsoy family, namely Mr. and Ms. Alsoy, in relation with Bonaport LLC and Bonnyfood A.S.
The Respondent highlights that the disputed domain name has been registered and managed through the same personal account with the concerned registrar since the date of registration, August 29, 2008, and that the registration and most of the renewal fees were paid with Ms. Alsoy’s own personal credit card.
The Respondent contends that the Complainant filed the Complaint only to eliminate all possible competitors and to harm the Respondent, who is the major shareholder of Bonnyfood A.S. The Respondent also underlines that the Complainant expressly acknowledges that the Alsoy family has registered the domain name with bona fide intentions and still has legal rights and legitimate interests in respect of the domain name.
The Respondent describes the factual background of this case as follows:
- In February 2005, Ms. Alsoy came up with the idea of bringing “fresh fruit bouquets” into the Turkish market;
- On August 29, 2008, Ms. Alsoy registered the disputed domain name with Mr. Alsoy, as they were preparing to enter into the food business industry and the disputed domain name consisted of generic words meaning “healthy food”;
- On October 16, 2008, Ms. Alsoy founded a company named Techoplus A.S. with her founder partner Hamit Kekeç and two other shareholders. Ms. Alsoy had and still is currently the majority shareholder of the company. Bonnyfood A.S. is active in the field of e-commerce of online healthy, edible fruit, vegetable, cake bouquets and baskets, and has been a pioneer company in bringing this business line to Turkey. The Respondent highlights that the disputed domain name and corresponding trademark BONNYFOOD have been widely advertised and promoted by Ms. Alsoy and that she has been granted several awards, including European Business Awards;
- On December 8, 2009, the domain name <bonnyfood.com.tr> was registered;
- On June 25, 2010, the name of the company “Techoplus A.S.” was changed to Bonnyfood A.S.;
- On August 10, 2010, Bonnyfood A.S. applied for the registration of the figurative trademark BONNYFOOD before the Turkish Patent Institute;
- On June 22, 2012, shareholders of Bonnyfood A.S. committed forgery on legal company documents and with these fake documents and signatures registered the resignation of one of the members of Board before the Istanbul Chamber of Commerce. Since the authority of signatures to represent Bonnyfood A.S. remained the same for a while, Ms. Alsoy did not realized the forgery at that time;
- In May, 2013, Ms. Alsoy discovered the above-mentioned fraud and fake General Assembly Resolution and filed a law suit before the İstanbul Commercial Court of First Instance for anomalous capture of the signature authorities and invalidation of the forged General Assembly Minutes and Decisions.
With the new power acquired by the forgery, Ms. Alsoy’s authority of signature was abridged. Subsequently, the company Bonnyfood A.S. and the domain name <bonnyfood.com.tr> were confiscated due to unpaid debts;
- On December 13, 2013, a criminal complaint for forgery was filed by Ms. Alsoy and another shareholder against their partners. This case is currently pending before the Istanbul 28th Criminal Court of First Instance.
- On May 16, 2014, the Complainant acquired the trademarks from a judicial auction;
- On June 13, 2014, another law suit was filed by Ms. Alsoy against her partners for the malpractice and illegal acquisition of the property of the company. This case is pending before the İstanbul Anadolu Commercial Court of First Instance;
- On July 09, 2014, the Respondent filed a request for the rescission of a sale of the BONNYFOOD trademarks before the Ankara Enforcement Court against the Complainant and the bank that auctioned off said trademarks. This case is pending before the Supreme Court.
Therefore, the Respondent contends that the Complainant’s claim to the trademarks is in question before the Turkish Supreme Court and states that the Respondent has a legal interest in the trademarks, as founder and majority shareholder of Bonnyfood A.S. In view of the above, the Respondent deems that, until the Court gives its decision on the validity of the transfer of ownership of the trademark, this requirement of the Policy should not be deemed satisfied.
The Respondent further alleges that, while fighting before the legal authorities to re-institute her rights and prevent further damage, Ms. Alsoy decided to get into another business with Mr. Alsoy, under his name. Given the above legal actions, they thought it would be better to establish the company solely in the name of her husband, Mr. Alsoy, who then registered the U.S. company Bonaport LLC.
Said company filed an application for the registration of the trademark BONNYFOOD before the USPTO on September 16, 2014.
With reference to the activity of Bonaport LLC, the Respondent states that it is a marketing outsourcing company that drives awareness, project management, leads and revenue for its clients, and that said company would like to provide its vertical marketing and research services for the companies in the U.S. using the trademarks BONNYFOOD, for services in the food industry, and BONNYGOODS, for Design-based Consumer Goods industries, such as Textile, Luxury Products, Home Equipment.
Therefore, the Respondent contends that the Complainant’s claimed trademark is in question before the Court and states that, however, the Respondent has a legal interest on it, being the founder and major shareholder of Bonnyfood A.S. In view of the above, the Respondent deems that, until the Court gives its decision on the validity of the transfer of ownership of the trademark, this requirement of the Policy should not be deemed as satisfied.
The Respondent asserts that the Mr. and Ms. Alsoy have rights to the disputed domain name in two different jurisdictions: in Turkey, based on the trade name rights to which the Respondent is entitled by virtue of the Respondent’s status as majority shareholder of Bonnyfood A.S. and in the U.S., based on the trademark application for BONNYFOOD pending before the USPTO.
The Respondent further states that the BONNYFOOD trademark, trade name and the disputed domain name have become distinctive identifiers associated with the Respondent and its goods and services.
As to the bad faith registration and use, the Respondent underlines that the disputed domain name was registered in 2008, six years before the Complainant’s acquisition of the BONNYFOOD trademark, and even before the establishment of the Complainant’s company or of the Respondent’s company and even prior to the filing of the related trademarks. Furthermore, the disputed domain name has remained in the same Godaddy account since registration.
The Respondent also claims not to have used the disputed domain name in violation of the Complainant’s trademark rights, as the Respondent is now promoting its recently established company and trademark in the U.S. in a different line of business, namely providing consultancy and research services in the food industry and not selling fruit bouquets/products as the Complainant. The Respondent asserts that the banner promoting the website “www.lezzetlihediye.com” is placed amongst the banners of other clients of its new business.
The Respondent further states that the Complaint was filed in bad faith to eliminate all the Complainant’s competitors in the market and to acquire the disputed domain name and that the Panel should therefore issue a finding of Reverse Domain Name Hijacking.
C. Complainant’s Supplemental Filing
The Complainant states that it has no objection to the designation of the Respondent as requested in the Response, as its sole objection is against the U.S. company Bonaport LLC, which the Complainant believes to have been established by the Respondent for the sole purpose of keeping the disputed domain name in its hand unfairly.
The Complainant asserts that it is not aware of the lawsuit based on unfair competition mentioned by the Respondent, stating that it has not received a formal notification so far and that, however, this would be completely unrelated with this case.
The Complainant also reiterates that the disputed domain name was not an asset of Ms. Alsoy, her husband or family, but an asset of her company, Bonnyfood A.S., and submits a WhoIs record dated July 10, 2012 showing that the registrant of the disputed domain name at that time was Techoplus A.S., the company that subsequently changed its business name from Techoplus to Bonnyfood A.S..
The Complainant also states that it does not object to the fact that the disputed domain name was registered in good faith by whoever first registered in 2008” and that “this administrative proceeding should be considered as the ones before, in which the Panel decided that the Respondent was in bad faith in use of the domain name although he/she had not been in bad faith at the time of the registration”. In particular, the Complainant points out that the Respondent’s new business project in the U.S. and trademark application before the USPTO are fictive scenarios derived by the Alsoys to create a fake legal interest in the disputed domain name.
The Complainant also contends that the Respondent is wrongly using legal means for cancellation of the legal auction and its result and that the Respondent’s action was not taken serious by the competent Court and dismissed immediately.
The Complainant further states that any mention of disputes between the partners of Bonnyfood A.S. should be disregarded, as they are irrelevant to this administrative proceeding.
D. Respondent’s Supplemental Filing
The Respondent states that the Complainant’s Supplemental Filing is a sign of the Complainant’s bad faith and is aimed at preventing the Respondent’s defense, as it was filed 38 days after the filing of the Response and one week before the due date for the Panel’s decision.
The Respondent reiterates that Bonaport LLC is an existing company and that the disputed domain name is the property of the Alsoy family. It also underlines that the related WhoIs records in 2012 showed Ms. Alsoy’s personal address as the registrant’s email address.
The Respondent also rebuts the Complainant’s allegations that it was not aware of a lawsuit based on unfair competition filed by the Respondent against the Complainant, stating that the Complainant had already submitted its reply to that lawsuit before the filing of its Supplemental Filing.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Preliminary procedural issues.
1. Relationship between the present UDRP proceeding and court proceedings
According to the documents and statements submitted by the parties, the Panel notes that no legal proceeding has been initiated or concluded with reference to the disputed domain name.
One of the pending Court proceedings cited by the Respondent relates to unfair competition issues unrelated to the disputed domain name and the trademark BONNYFOOD, while the other relates to the rescission of the judicial sale of the trademark BONNYFOOD to the Complainant, which appears to be pending before the Turkish Supreme Court.
Considering the circumstances of the case, including the fact that the trademark was acquired by the Complainant through a judicial sale for a considerable amount of money, that the assignment of the trademark to the Complainant has already been recorded on the Turkish Patent and Trademark Office database, and that the legal action for the rescission of the sale has been dismissed in the first instance, the Panel will proceed to issue a decision.
In doing so, the Panel considers that, as paragraph 4(k) of the Policy indicates, the UDRP does not bar either the Complainant or the Respondent from seeking judicial remedies. Moreover, as also highlighted in paragraph 4.14 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “[c]ourts are not bound by UDRP panel determinations; where a domain name subject to a UDRP panel decision becomes subject to a court proceeding (for example, because a respondent elects to take the matter to court under paragraph 4(k) of the UDRP); such court case is generally acknowledged to represent a De novo hearing of the case under national law”.
2. Parties’ Supplemental filings
The Panel notes that, according to the consensus view of the UDRP panelists as summarized in the WIPO Overview 2.0, paragraph 4.2, it is in its discretion whether to accept the Parties’ unsolicited supplemental filings, bearing in mind the need for procedural efficiency and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting the supplemental filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. In addition, most UDRP panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances.
This Panel has decided, in light of the complexity and peculiarity of the factual background of the case, to review the unsolicited supplemental filings submitted by the Parties as noted above in sections 5.C and D of this Decision.
3. Identification of the proper Respondent
The registrant of the disputed domain name according to the information disclosed by the Registrar to the Center is the company Bonaport LLC, with Mr. Alsoy as contact person. Evidence has been submitted to demonstrate that such a company is not a fictitious entity but a company which has been established in the U.S. by Mr. Alsoy in September 2014.
Therefore, the Panel deems appropriate to consider Bonaport LLC and Mr. Mehmet Ali Alsoy acting in apparent concert with Ms. Alsoy, as Respondent in this proceeding.
The Complainant has designated the location of the disputed domain name holder's address as the mutual jurisdiction to which it will submit with respect to any challenges made by the Respondent to a decision by the Panel. That location, as verified by the Registrar, is Wilmington, Delaware, U.S.
B. Identical or Confusingly Similar
The Panel notes that, according to the evidence on record, the Turkish trademark No. 2010/52138 for BONNYFOOD (figurative mark), on which the Complainant relies, is currently registered in the name of the Complainant.
If a complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights according to paragraph 4(a)(i) of the Policy. In addition, figurative, stylized, or design elements in a trademark may be disregarded for the purpose of assessing identity or confusing similarity where, as in the present case, they do not form an especially prominent or distinctive part of the trademark overall. See paragraph 1.11 of the WIPO Overview 2.0.
In view of the above, the Panel finds that the disputed domain name is identical to the trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests.
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (WIPO Overview 2.0, paragraph 2.1).
Based on the factual background described by the Parties and on the review of the related supporting evidence on records, the Panel finds that the Respondent has failed to demonstrate that it is commonly known by the disputed domain name.
The Panel notes that the Respondent has no rights in the Turkish trademark BONNYFOOD No. 2010/52138, as it was originally registered in the name of the company Techoplus A.S., subsequently renamed Bonnyfood A.S., and Mr. Alsoy or his wife Ms. Didem Alsoy has not claimed that he holds trademark rights or was granted a license these rights through an agreement with Bonnyfood A.S..
The Respondent filed a trademark application for BONNYFOOD in the U.S. on September 16, 2014, claiming first use in commerce as of September 12, 2014. The date of the filing of this trademark, which postdates the judicial assignment of the Turkish trademark BONNYFOOD to the Complainant, suggests that the Respondent filed a trademark application in the U.S. for the main purpose to preserve the disputed domain name from possible enforcement of the Complainant’s rights. As found in Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, “To establish cognizable rights, the overall circumstances should demonstrate that the [trademark] registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.”
In view of the above, and since the disputed domain name is pointed to a website where products and services which compete with the Complainant’s are promoted, such as the fruit, cake, and biscuit arrangements (provided through the website “www.lezzetlihediye.com” linked thereto), the Panel finds that the disputed domain name is not being used in connection with a bona fide offering of goods or services.
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
In light of the facts and circumstances of this case, the Panel finds that the disputed domain name is currently retained and used by the Respondent in bad faith.
Indeed, the pointing of the disputed domain name to a website which promotes, directly or indirectly, products and services identical or similar to those of the Complainant, is apt to cause confusion among Internet users as to the source, sponsorship, affiliation, or endorsement of the website by the Complainant according to paragraph 4(b)(iv). Moreover, notwithstanding the Respondent’s argument that the disputed domain name comprises dictionary words, given that the Complainant has obtained a trademark registration and the Respondent is seeking to unfairly capitalize on the Complainant’s rights,1 the Panel also finds that the Respondent’s conduct, namely seeking to disrupt the Complainant’s business according to paragraph 4(b)(iii) of the Policy. The Panel therefore finds that the disputed domain name is being used by the Respondent in bad faith.
The second part of this element of the Policy is the demonstration of the bad faith registration.
In the case at hand, the disputed domain name was originally registered in 2008, several years prior to the acquisition of the Turkish trademark BONNYFOOD by the Complainant. Based on the WhoIs records, the disputed domain name was registered through a privacy service, making it difficult to ascertain the identity of its effective owner. According to the Respondent’s statements, Ms. Alsoy originally registered the disputed domain name and provided for the payment of the renewal fees, but the evidence on record shows that the disputed domain name - on October 7, 2012 - was in the name of Techoplus A.S. (predecessor of the company Bonnyfood A.S.).
As indicated above, the documents submitted show that the company Bonaport LLC, which is currently listed as the registrant of the disputed domain name, was established on August 28, 2014, after the judicial sale of the Turkish trademark BONNYFOOD to the Complainant. Therefore, the Panel considers that the transfer of ownership of the disputed domain name to said company was done after the date of incorporation of said company. At that time, in light of the relationship between Mr. Alsoy and his wife and her pending Court proceeding with the Complainant, the Panel finds that the Respondent was well aware of the acquisition of the Turkish trademark BONNYFOOD by the Complainant, which occurred on May 16, 2014.
As stated in several prior UDRP decisions, the transfer of a domain name to a third party amounts to a new registration. In this respect, the WIPO Overview 2.0, paragraph 3.7 states that: “Panels have tended to the view that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner's identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.”
In view of the particular circumstances of this case where the disputed domain name has been assigned to a company established in the U.S. well after the Complainant’s acquisition of a trademark identical (or confusingly similar) to the disputed domain name-the Panel does not consider such transfer of the disputed domain name as a mere formal change in the WhoIs records, but tantamount to a bad faith registration.
In view of the above, the Panel finds that that the disputed domain name was registered and is being used 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 <bonnyfood.com> be transferred to the Complainant.
Emre Kerim Yardimci
David E. Sorkin
Date: January 29, 2015
1 The Panel is inclined to accept the national trademark registration for purposes of this case; this would not prevent the Respondent from challenging its status in another forum.