WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GS Yuasa Corporation v. Engin Ulubas, ACDC Elektronik Sistemler Dan. San. ve Tic. Ltd. Sti.
Case No. D2016-0178
1. The Parties
The Complainant is GS Yuasa Corporation of Kyoto, Japan, represented by Sanderson & Co., the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Engin Ulubas, ACDC Elektronik Sistemler Dan. San. ve Tic. Ltd. Sti. of Istanbul, Turkey.
2. The Domain Names and Registrar
The disputed domain names <yuasa-aku.com>, <yuasaaku.com>, <yuasabatteries.net>, <yuasabattery.org>, <yuasa-tr.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 28, 2016. On January 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 28, 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 February 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 25, 2016.
The Center appointed Adam Taylor as the sole panelist in this matter on March 3, 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, incorporated in Japan, has supplied batteries and related products under the name "Yuasa" since 1913. As of March 2015, the Complainant employed over 14,500 people worldwide with consolidated net sales of over JPY 369 billion for the preceding year.
The Complainant owns many trade marks worldwide for its name including Japanese trade mark No. 579338, filed November 19, 1958, in class 2 and Turkish trade mark No. 113959, filed August 11, 1989, in class 9, both for the stylized word "YUASA".
The disputed domain names were registered on the following dates:
May 21, 2003: <yuasa-tr.com>
February 6, 2004: <yuasaaku.com>
March 18, 2004: <yuasabattery.org>
July 30, 2004: <yuasa-aku.com>
October 9, 2012: <yuasabatteries.net>
The Respondent has used the disputed domain names for websites offering batteries for sale. The sites were branded with the name and logo of the Complainant and included links to the websites of the Complainant's competitors.
5. Parties' Contentions
The Complainant has extensively promoted its mark since 1913. The Complainant can therefore rely on common law rights as well as its registered trade marks.
The disputed domain names are all confusingly similar to the Complainant's trade mark. In each case they comprise the trade mark, which is the main part of the name, plus an additional descriptive term in English or Turkish or an indication of geographical location.
The public would readily associate the disputed domain names with the Complainant.
The Complainant has not authorised the Respondent to use its mark.
The disputed domain names were all registered long after the Complainant's mark was first used.
There is no evidence of bona fide use of the disputed domain names. Even if the products sold are genuine, the websites are designed to confuse users into thinking there is a connection between the Complainant and the Respondent. The Complainant's investigations have uncovered no relevant trade mark registrations or evidence that the Respondent has been commonly known by any of the disputed domain names. Use of the disputed domain names is neither legitimate nor noncommercial.
The disputed domain names have been registered and used in bad faith.
The Respondent was clearly aware of the Complainant as its websites offer the specific goods supplied by the Complainant and the term "Yuasa" is neither descriptive nor generic.
Use of the disputed domain names generates commercial gain for the Respondent by creating a likelihood of confusion with the Respondent. Deliberate creation of confusion is sufficient to establish use in bad faith, even if visitors ultimately realise that the website is not that of the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the mark YUASA by virtue of its registered trade marks.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
Paragraph 1.9 of WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Here, the Complainant's distinctive trade mark is undoubtedly the dominant component of each of the disputed domain names. Two of the disputed domain names add the descriptive words "battery" and "batteries". Another two of the dispute domain names add the terms "-aku" and "aku" respectively; "aku" is Turkish for battery. The final disputed domain name adds the term "-tr"; this term denotes Turkey as ".tr" is the country code suffix for Turkish domain names.
In the Panel's view, the addition of the various terms to the Complainant's trade mark within the disputed domain names is insufficient to avert a finding of confusing similarity.
B. Rights or Legitimate Interests
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent set out to impersonate the Complainant in order to create a likelihood of confusion. Such use of the disputed domain name could not be said to be bona fide. In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, the panel stated that:
"… use which intentionally trades on the fame of another can not constitute a 'bona fide' offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy."
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In the Panel's view, it is obvious that the Respondent registered the disputed domain names with the Complainant's distinctive trade mark in mind.
Not only was the Complainant's business long-established by the dates of registration of the disputed domain names, the Respondent thereafter used the disputed domain names to offer exactly the same goods as the Complainant via the websites at the disputed domain names which set out to impersonate the Complainant by prominent use of the Complainant's name and logo. The websites also linked to the Complainant's competitors.
By using the disputed domain names in this manner, the Respondent has intentionally attempted to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant's trade mark in accordance with paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 names, <yuasa-aku.com>, <yuasaaku.com>, <yuasabatteries.net>, <yuasabattery.org>, <yuasa-tr.com>, be transferred to the Complainant.
Date: March 17, 2016