WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koc Holding A.S. v. Whois Privacy Protection Service, Inc. / Josh Berry
Case No. D2015-1047
1. The Parties
The Complainant is Koc Holding A.S. of Istanbul, Turkey, represented by June Intellectual Property Services Inc., Turkey.
The Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America ("United States") / Josh Berry of Denver, Colorado, United States.
2. The Domain Name and Registrar
The disputed domain name <kocgroup.org> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 18, 2015. On June 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2015, the Registrar transmitted by email to the Center its verification response 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 June 23, 2015 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 June 25, 2015.
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 June 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 20, 2015.
The Center appointed James A. Barker as the sole panelist in this matter on July 28, 2015. 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 Turkey's largest industrial and services group in terms of revenues, exports, shares in the Istanbul Stock Exchange and numbers of employees. The Complainant is one of the 50 largest publicly traded companies in Europe and among the largest 200 companies in the world. The Complainant operates in the energy, automotive, consumer durables and financial sectors. The Complainant is the owner of a number of trademarks registered with the Turkish Patent Institute, which include the term "Koç". The earliest of these marks were registered in 2002. The Complainant also has registrations for that mark in other jurisdictions and a Community mark.
In June 2014, the Complainant also filed a trademark application for the mark "KOÇ GRUBU" which translates to "Koç Group" in English.
The disputed domain name has a creation date of July 2012. At the date of this decision, the disputed domain name did not revert to an active website.
Although the Complaint does not mention them, the Complainant has been a previous complainant in cases under the Policy. These include the recent case of Koc Holding A.S. v. Domain eRegistration / Domain ID Shield Service, WIPO Case No. D2015-0847, which involved the domain name <kocgroups.org>, and was decided in the Complainant's favor.
In the absence of a Response and any website at the disputed domain name, there is no information about the business of the Respondent.
5. Parties' Contentions
The Complainant argues that the disputed domain name is confusingly similar to the mark in which it has registered rights. The disputed domain name entirely incorporates its trademark, and the addition of the term "Group" does not eliminate that confusion. The Complainant says that the disputed domain name is relevantly identical to the mark in which it has unregistered rights, and for which it has filed a trademark application in 2014 (KOÇ GRUBU).
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent knew of the Complainant's company name when he registered the disputed domain name. He registered the disputed domain name because of its association with the Complainant. The Respondent is not otherwise licensed or permitted by the Complainant to use its marks. The Respondent is not commonly known by the mark.
The Complainant also says that the Respondent has registered and used the disputed domain name in bad faith. It is clear that the original holders of the disputed domain name knew of the Complainant and its mark. The Complainant's mark is well-known and it is difficult to imagine that the holder of the disputed domain name was not aware of it. The Respondent has not actively used the disputed domain name. The incorporation of a famous mark in a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. The Respondent has made no use of the disputed domain name and there is no evidence whatsoever of any good faith use of or intention to use it.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
These elements are discussed as follows.
A. Identical or Confusingly Similar
The Complainant provides evidence of having registered rights for marks including "Koç". The Complainant explains that this mark was based on the name of its founder Vehbi Koç. The Complainant has therefore established that it relevantly "has rights" in a trademark. Those rights have also previously been recognized in decisions under the Policy: e.g., Koc Holding A.S. v. Domain eRegistration / Domain ID Shield Service, cited above.
The next issue is whether the disputed domain name is identical or confusingly similar to those registered marks. (The Panel has not considered the issue of whether the disputed domain name is identical to the trademark KOÇ GRUBU in which the Complainant claims to have unregistered rights, and for which it has filed a trademark application. For the reasons set out below, it is not necessary for the Panel to consider this issue)
The disputed domain name wholly incorporates the KOC component of the Complainant's registered mark, with the exception of the accent marks and addition of the generic Top-Level Domain ("gTLD") ".org". These differences are not material for the purpose of the Policy: See, e.g., La Mafafa, Inc. dba Cultura Profética v. Domains Real Estate, WIPO Case No. D2009-0534. Such differences have also been found to immaterial specifically in relation to the Complainant's mark in at least one previous decision under the Policy: See, Koc Holding A.S. v. VistaPrint Technologies Ltd., WIPO Case No. D2015-0886. In numerous previous cases under the Policy, it has been held that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338.
The disputed domain name also adds the descriptive term "group". This generic addition is insufficient to avoid confusing similarity, for a number of reasons. One is that, being a descriptive term, it is not capable of distinguishing the Complainant's mark. The Complainant's mark remains easily recognizable in the disputed domain name. In particular, the addition of the term "group" to a mark has, in other cases, been treated as not sufficient to distinguish the mark in question: See, e.g., Nufarm Australia Limited v. Luke James, WIPO Case No. D2015-0712.
Secondly, paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") makes it clear that "The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name."
Thirdly, a prior panel has made a finding on this issue in favor of the Complainant, in a case that involved a very similar domain name to the disputed domain name: Koc Holding A.S. v. Domain eRegistration / Domain ID Shield Service, WIPO Case No. D2015-0847, which involved the domain name <kocgroups.org>.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered mark.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent on this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant has made a strong prima facie case against the Respondent. The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, and has registered it to trade off the Complainant's reputation.
Paragraph 4(c) of the Policy sets out a nonexclusive list of circumstances upon which a respondent may rely in order to demonstrate its rights or legitimate interests in a domain name. The Respondent has submitted no reply and so not demonstrated any such circumstances to rebut the prima facie case against him. Nor is there any other evidence before the Panel to suggest that the Respondent has any rights or legitimate interests in the disputed domain name. On the contrary, as further discussed below, the Panel finds that the Respondent registered and has used the disputed domain name because of its association with the Complainant. Such a registration cannot form a basis for rights or legitimate interests for the Respondent.
For these reasons, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant's trade mark rights and reputation. See, e.g., SingTel Optus Pty v. Xnet, WIPO Case No. D2004-0734.
There is no direct evidence in this case of the Respondent's motivation in registering and using the disputed domain name. The Respondent has chosen to submit no Response, there is no active website at the disputed domain name, and there is otherwise no evidence of the Respondent's business.
But the available evidence in this case suggests that the Respondent was aware of the Complainant and its mark. The Complainant is a large commercial entity with a well-known mark. As noted above, the Respondent has chosen to register a domain name that is confusingly similar to the Complainant's mark, and there is no evidence that the Respondent otherwise has rights or legitimate interests in the term "Koc". The addition of the term "group" to the Complainant's mark is unlikely to have been an accident, and is clearly suggestive of the conglomerated nature of the Complainant's business.
In these circumstances, the Panel considers it reasonable to infer that the Respondent was motivated to register and use the disputed domain name to obtain some unfair advantage of the Complainant's mark and/or to disrupt the Complainant's business. The Panel therefore concludes that the disputed domain name was registered and has been 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, <kocgroup.org>, be transferred to the Complainant.
James A. Barker
Date: August 11, 2015