WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eczacıbaşı Holding A.Ş. v. Ali Haydar Bayındır
Case No. D2016-0041
1. The Parties
The Complainant is Eczacıbaşı Holding A.Ş. of Istanbul, Turkey, represented by BTS & Partners, Turkey.
The Respondent is Ali Haydar Bayındır of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <geberitvitraservisi.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2016. On January 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2016. The Respondent submitted an informal email communication to the Center on January 18, 2016 stating that he had “cancelled” the disputed domain name. Nothing further was received by the Respondent by the due date for Response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on February 8, 2016.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on February 12, 2016. 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 Turkish industrial group manufacturing building products, sanitary products and healthcare and consumer products.
The Complainant, under its VITRA brand, offers ceramic sanitary wares ranging from tiles and bathroom furniture to faucets and shower systems and accessories.
The Complainant has been using the trademark VITRA continuously since the late 1960s and holds many trademark registrations in Turkey and abroad, including Turkish Registration No. 127688 for the trademark VITRA, registered on May 23, 1991 covering sanitary products and furniture in classes 6, 11, 19 and 21. The same registration was declared a well-known trademark by the Turkish Patent Institute in 1997.
The disputed domain name was created on October 25, 2015. According to the current WhoIs record, the Respondent is an individual domiciled in Istanbul, Turkey.
The Panel visited the disputed domain name on February 29, 2016, and observed that the disputed domain name did not at that date resolve to an active website. The Complainant alleges that the disputed domain name formerly resolved to a website offering unauthorized repair services for Vitra and Geberit bathroom products (Geberit being a competitor of the Complainant).
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark VITRA and that the addition of the descriptive word “servisi” – which means “service” in Turkish –reinforces the association between the disputed domain name and the Complainant’s trademark. The Complainant further asserts that inclusion of a highly recognizable third party trademark in the disputed domain (GEBERIT) name does not eliminate the visual impression that the disputed domain is associated with the Complainant’s trademark.
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 VITRA. For this reason, the Complainant further asserts that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent is not commonly known by the disputed domain name.
Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent is well aware of the Complainant’s well-known trademark in the related sanitary sector where the Respondent operates as well. Furthermore, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark.
The Respondent did not reply to the Complainant’s contentions. Beyond his brief communication stating that he had “cancelled” the disputed domain name, he has not taken part in this proceeding.
6. Discussion and Findings
Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
As there are no exceptional circumstances for the failure of the Respondent to submit a Response, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.
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 trademark registration 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 VITRA trademark.
The disputed domain name <geberitvitraservisi> integrates the Complainant’s VITRA trademark in its entirety.
The disputed domain name differs from the registered VITRA trademark by the additional descriptive word “servisi” and the third party trademark GEBERIT.
As pointed out by the Complainant, the existence of the third party trademark in the disputed domain name does not eliminate the visual impression that the disputed domain name is associated with the Complainant’s trademark, in accordance with several UDRP panel decisions in this regard. See Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793; F. Hoffmann-La Roche AG v. Bob, WIPO Case No. D2006-0751.
The descriptive word “servisi” 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 products 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 using such a descriptive word together with a registered trademark strengthens the impression that the disputed domain name is in some way connected to the Complainant’s trademark (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; and Swarovski Aktiengesellschaft v. www.swarovski-outlet.org, WIPO Case No. D2013-0335).
As regards the generic Top-Level Domain (gTLD) “.com”, 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 on the Complainant to make out at least 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 be known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the disputed domain name, and has no consent from the Complainant to use its trademark.
The use of a domain name incorporating a complainant’s trademark to offer repair services for the goods of one of the complainant’s competitors cannot be considered a “bona fide offering of goods or services” (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088). Accordingly, the claimed former use of the disputed domain name (a claim the Respondent has not rebutted) does not give rise to any rights or legitimate interests.
Likewise, the current passive holding of the disputed domain name does not give rise to any rights or legitimate interests.
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 rebut it. Accordingly, the Complaint succeeds in relation to the second element of the Policy.
C. Registered and Used in Bad Faith
At the time of registration of the disputed domain name the Complainant’s trademark VITRA was a well-known trademark. As the Complainant submits, it is inconceivable that the Respondent would not have known of the Complainant’s mark at that time.
It appears from the Complainant’s unrebutted contentions that the disputed domain name formerly resolved to a website offering repair services for sanitary products competitive with the Complainant’s products.
The Panel is persuaded that the Respondent’s use of the disputed domain name for redirecting Internet users, particularly customers and potential customers of the Complainant, for monetary gain and for the purpose of marketing the products of a competitor (or the repair thereof) constitutes bad faith use.
More importantly, the juxtaposition of very well-known trademarks within the disputed domain name is itself a bad faith use where the only purpose is to maximize Internet traffic. As stated in the decision Hofmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793:
“Put simply, in order to maximize Internet search exposure, and thereby increase its commercial gain, Respondent has fused together several trademarks that belong to different owners and represent different reservoirs of goodwill. These different trademark owners would never consent to such an amalgamation of their marks in the real world and there is no reason to allow it in the cyberworld. This reckless disregard for the confusion caused by the hyphenated fusion of unaffiliated trademarks for the purpose of maximizing Internet traffic constitutes bad faith.”
Under the totality of the circumstances, the Panel finds the Respondent’s registration and use of <geberitvitraservisi.com> to be 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 <geberitvitraservisi.com> be transferred to the Complainant.
Emre Kerim Yardimci
Date: February 29, 2016