WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trodat GmbH v. Fuat Akkus, Yonkinya
Case No. D2016-0226
1. The Parties
The Complainant is Trodat GmbH of Wels, Austria, represented by Salomonowitz | Horak, Austria.
The Respondent is Fuat Akkus, Yonkinya of Hannover, Germany.
2. The Domain Name and Registrar
The disputed domain name <trodat.world> (the "Domain Name") is registered with united-domains AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 5, 2016. On February 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 9, 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").
The Complaint was submitted in English. As confirmed by the Registrar, the language of the Registration Agreement is German. The Center sent an email communication to the Parties, in both English and German, regarding the language of the proceeding on February 10, 2016. On February 12, 2016, the Complainant filed a submission requesting that English be the language of the proceeding. The Respondent did not comment on the language of proceeding by the specific due date. The Center proceeded in English and German.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent (in English and in German) of the Complaint, and the proceedings commenced on February 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 10, 2016.
The Center appointed Andrea Mondini as the sole panelist in this matter on March 17, 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 manufacturer of stamps and is the owner of several trademarks for TRODAT, including IR 484432 TRODAT in International Class 16 with the registration date March 30, 1984 and CTM 003082773 TRODAT (word and device) in International Classes 2, 7, 9, 16, 35, 40 and 42 with the registration date May 6, 2005.
The Domain Name was registered on January 14, 2015, and is passively held.
Based on the website "www.yonkinya.de", the Respondent is active in the printing business and offers business cards, menu cards, stickers, etc.
5. Parties' Contentions
The Complainant is an Austrian company that has been manufacturing stamps since the early 20th century and is now the world market leader for self-inking stamps, delivering to customers worldwide. The Complainant contends that it has been using the trademark TRODAT for stamps since 1947 and as a company name since 1968.
The Complainant contends that that the Domain Name is identical to the work mark TRODAT, that the Domain Name creates a likelihood of confusion on the Internet, that the Respondent has no license or other rights or legitimate interest in respect of the Domain Name and that the Respondent registered and is passively holding the Domain Name in bad faith.
The Respondent did not reply to the Complainant's contentions
6. Discussion and Findings
As a preliminary matter, the Panel finds, in its discretion to do so under paragraph 11(a) of the Rules, that the language of this proceeding is English. The Respondent has not objected to the Complainant's request that English be the language of proceeding and the Complainant has submitted evidence appearing to show that, despite the Registrar's confirmation of German as the language of the Registration Agreement, at least part of the Registrar's Registration Agreement for ".world" domain names is in English.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant owns registered trademark rights in the trademark TRODAT, e.g. International Registration No. 484432 TRODAT and Community Trademark No. 003082773 TRODAT (and device).
The Domain Name is identical to the Complainant's registered trademark except for the addition of the generic Top-Level Domain ("gTLD") ".world". The gTLD ".world" is to be disregarded when assessing the similarity of a mark with a domain name (j2 Cloud Services, Inc. and j2 Global Holdings Ltd. vs. DSGS DSGS / DSGS, WIPO Case No. D2015-1830). The Panel therefore finds that the Domain Name <trodat.world> is confusingly similar to the Complainant's registered trademark TRODAT.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends, credibly, that the Respondent has no license or other rights or legitimate interests in respect of the Domain Name. In the absence of any Response, the Panel concludes that the Respondent was not authorized or licensed to use the Complainant's trademark in the Domain Name.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Considering that TRODAT is a coined mark with no apparent dictionary meaning that has been used worldwide for decades for stamps, and further considering that the Complainant and the Respondent are active in the same industry, the Panel concludes that the Respondent must have been aware of the Complainant's trademark and that it registered the Domain Name in bad faith.
The Panel also finds that the Respondent is using the Domain Dame in bad faith, since it is well-established that the passive holding of a domain name can, in cases such as this, where no plausible good faith use of the domain name presents itself, constitute use in bad faith (Telstra Corporation Limited vs. Nuclear Marshmallows, WIPO Case No. D2000-0003,).
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) 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 Domain Name <trodat.world> be transferred to the Complainant.
Date: March 22, 2016