WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enka İnşaat ve Sanayi Anonim Şirketi v. Ali İseri
Case No. D2015-1321
1. The Parties
The Complainant is Enka İnşaat ve Sanayi Anonim Şirketi if Istanbul, Turkey, represented by Dericioğlu & Yaşar Law Office, Turkey.
The Respondent is Ali İseri, of Ankara, Turkey.
2. The Domain Name and Registrar
The disputed domain name <enkainsaat.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2015. On July 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2015, 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 August 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2015.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on August 31, 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 a leading construction company offering a wide range of project such as industrial plant, docks, marine slipways, shipyards, grain silos, bridges, roads and piers.
The Complainant has been using the trademark ENKA continuously since late 1960 and holds many trade and service mark registrations in Turkey, including Turkish Registration No. 2003/37970 for the mark ENKA, registered on April 22, 2003 covering constructions services in class 37.
The Complainant has been the owner of the domain name <enka.com> since June 6, 1996.
The disputed domain name was created on August 26, 2014. According to the current record, the Respondent is a physical person domiciled in Ankara.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant asserts that the disputed domain name is identical or in any case confusingly similar to the Complainant’s trademark ENKA and the addition of the descriptive word “insaat” which means construction in Turkish, reinforcing the association of the disputed domain name with the Complainant’s mark.
The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark ENKA.
Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent could not ignore the Complainant’s well-known trademark in the related construction sector. Furthermore, the disputed domain name was previously listed for sale and contained PPC links related to the business of the Complainant, and the present passive holding supports a finding of registration and use in bad faith for the intention of selling the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, the Complainant holds several trademark registrations for the ENKA trademark.
The disputed domain name <enkainsaat.com> integrates the Complainant’s ENKA trademark in its entirety, as its dominant element.
The disputed domain name differs from the registered ENKA trademark by the additional descriptive word “insaat” and the generic Top-Level Domain (“gTLD”) “.com”.
The additional descriptive word “insaat” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, as it is a descriptive term that directly relates to construction services offered by the Complainant.
Several UDRP panels have ruled that the mere addition of a descriptive element does not sufficiently differentiate a disputed domain name from a complainant’s registered trademark. Moreover it is the Panel’s view that in using such a descriptive word together with a registered trademark rather strengthens the impression that the disputed domain name is in some way connected to the Complainant’s trademarks (see, e.g., Société des Produits Nestlé S.A. v. MrToys.com LLC, WIPO Case No. D2012-1356; Allianz SE v. Roy Lee / Traffic-Domain.com, WIPO Case No. D2012-1459; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; or Swarovski Aktiengesellschaft v. ‘www.swarovski-outlet.org’, WIPO Case No. D2013-0335.
As regards the gTLD, it is typically disregarded under the confusing similarity test.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The onus is upon the Complainant to make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case.
The Panel accepts the Complainant’s submissions that the Respondent does not appear to have been known by the disputed domain name, has not made demonstrable preparations to use the disputed domain name other than in relation to pay-per-click websites and the Respondent is not making a legitimate noncommercial use of the disputed domain name.
Previous UDRP panels have found that the mere fact that the disputed domain name resolves to a pay-per-click website is not of itself evidence of rights or legitimate interests arising from a bona fide offering of goods or services (see for example Compart AG v. Compart.com/Vertical Axis, Inc., WIPO Case No. D2009-0462).
The Respondent has not filed a Response. It has no consent from the Complainant to register any domain name incorporating the Complainant’s trademark, it has not used the disputed domain name for a bona fide offering of goods and services, as discussed below, and it is not commonly known by the disputed domain name. Nor is it making noncommercial fair use of the disputed domain name.
In the Panel’s view the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to file a Response. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
At the time of registration of the disputed domain name, the Complainant’s trademark ENKA was a well-known trademark in its sector for a long time. As the Complainant submits, it is inconceivable that the Respondent would not have known of the Complainant’s mark.
It appears from the screenshot (in Annex 6) of the website at the disputed domain name, submitted within the Complaint (in Annex 6), that the disputed domain name resolves to a website which provide sponsored pay-per-click links to websites associated with construction services and construction materials. More strikingly, the website at the disputed domain name contains, at the top of the page, the English wording that the disputed domain is for sale and/or for rent. The Panel also noted that at the date of this decision, the disputed domain name is no longer available or could not be retrieved.
The Panel is persuaded that the Respondent’s registration and use of the disputed domain name for redirecting Internet users, particularly customers and potential customers of the Complainant to companies which directly compete with the Complainant, constitutes bad faith registration and use of the disputed domain name. Prior UDRP panel decisions also support this conclusion. See Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”); Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (“Respondent’s registration and continued use of the contested domain name for re-directing Internet users, i.e., particularly customers and potential customers of the Complainant from the Complainant’s web site to the web site of Bestnet, Inc., a company which directly competes with the Complainant, constitutes bad faith and use.”).
The only reason for the registration of the disputed domain name must have been with bad faith intent to use it to exploit, for commercial gain, the Complainant’s reputation. As demonstrated above, the Respondent has used the disputed domain name for precisely that purpose. See Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004.
Therefore, in the view of cumulative circumstances, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).
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 <enkainsaat.com> be transferred to the Complainant.
Emre Kerim Yardimci
Date: September 14, 2015