WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TNT International Express Tasimacilik Ticaret Limited Sirketi v. Unknown / Olaoluwa Babs, Kernel Multimedia

Case No. D2016-0312

1. The Parties

The Complainant is TNT International Express Tasimacilik Ticaret Limited Sirketi of Istanbul, Turkey, represented by AYDIN & AYDIN Law Firm, Turkey.

The Respondent is Olaoluwa Babs, Kernel Multimedia of Abeokuta, Nigeria, self-represented and Unknown of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <tntexpressdelivery.com> is registered with The Registry at Info Avenue, LLC d/b/a Spirit Telecom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2016. On February 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2016, 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 February 22, 2016 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 February 24, 2016.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2016. Further to the Notification of the Respondent’s default, the Center received email communications from the Respondent on March 29, 2016 and email communications from the Complainant on April 4, 2016.

The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on April 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

TNT is a transport company that was founded in Australia in 1946. Throughout the years it became a global company, well known and with a strong reputation.

In 2010, TNT announced that the company would be split up into two independent entities: TNT Express and TNT Post, renamed PostNL.

TNT Express has, currently, local operations in 61 countries, including Turkey, and employs around 56,000 people.

Its official website is under the domain name <tnt.com>, registered on October 3, 1996.

The official website for each local operation adds to the domain name the term “/express/” and the local country code. The Turkey website is under the domain name <tnt.com/express/tr_tr>.

The trademark TNT was registered in Turkey on February 13, 1998 by TNT Holdings B.V. The Complainant has submitted a trademark licensing agreement between TNT Holdings B.V. and the Complainant. The Complainant is a “delegate” of TNT Holdings B.V. in Turkey.

The disputed domain name <tntexpressdelivery.com> was created on June 15, 2015.

When the Complaint was filled, the Complainant declared that the website at the disputed domain name was active. The Complainant has submitted screenshots appearing to show that the disputed domain name formerly resolved to a website claiming to offer transportation and shipping services based in Turkey. Currently it is inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met:

1. The disputed domain name is identical or confusingly similar to the Complainant’s TNT trademark. The Complainant argues that the mark TNT is a well-known mark in Turkey, registered before the Turkish Patent office. The Complainant claims that the distinguishing part on the disputed domain name <tntexpressdelivery.com> is the Complainant’s mark TNT and that the website at the disputed domain name offers transportation services. Thus, the Complainant alleges that using the Complainant’s mark TNT and offering similar services will cause confusion to consumers.

2. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant declares that the Respondent has no relation with the Complainant or its trademarks and claims that it is not commonly known by the disputed domain name. The Complainant alleges to have prior rights regarding the use of the mark TNT, given that TNT trademarks have been in use since 1946. This makes it highly unlikely that the Respondent was not aware of the Complainant’s rights over the TNT trademarks and its strong reputation by the time it created the disputed domain name in 2015 and thus, the registration of the disputed domain name has been in bad faith.

3. The Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Respondent is making an improper use of the mark TNT. The mark TNT is a registered mark and thus protected by law and is a well-known mark. Despite these facts, the Respondent is using it as the main distinguishing part of the disputed domain name <tntexpressdelivery.com>. This improper use gives rise to confusion with the well-known mark TNT and is likely to create the misleading impression of affiliation or relation between the Respondent and the Complainant. The Complainant further alleges that the Respondent is offering transport services and that the use of the mark TNT on the website at the disputed domain name constitutes a clear attempt to trade upon the Complainant’s reputation and fame, as it clearly suggests the Respondent intends to mislead Internet users to its website for commercial gain.

B. Respondent

The Respondent did not submit a response to the Complainant’s contentions by the specified due date. However, further to the Notification of the Respondent’s default, the Center received email communications from the Respondent in which it alleged not being the owner of the disputed domain name and displaying an uncooperative posture.

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii).

As a preliminary matter, noting the Respondent’s contention that it is not in fact the owner of the disputed domain name, as the Registrar has confirmed “Olaoluwa Babs, Kernel Multimedia” as the registrant of the disputed domain name, the Panel finds that “Olaoluwa Babs, Kernel Multimedia” is properly named as a Respondent in this dispute.

A. Identical or Confusingly Similar

TNT Express is a globally well-known company with a solid reputation, including in Turkey, with more than 50 years in the industry of transportation.

The Complainant, on the back of its licensing agreement, has sufficient rights in the mark TNT for the purposes of the UDRP. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.8.

The disputed domain name comprises the mark TNT and the generic terms “express” and “delivery”. The Panel accepts that TNT is a distinctive mark and that according to OLX, B.V. v. Kumud, G. / Whois Agent, Whois Privacy Protection Service, Inc, WIPO Case No. D2015-0218 “by using the trademark as a dominant part of the Domain Name, the Respondent exploits the goodwill and fame of the trademark, for its own commercial gain”.

The Panel’s understanding is that that the generic word “express” is part to the Complainant’s company name and that the word “delivery” is related to the services offered by the Complainant.

Consistent with previous UDRP decisions, the addition of generic terms, in this case the words “express” and “delivery”, as well as the generic Top-Level Domain (gTLD) “.com”, is insufficient to distinguish a disputed domain name from a complainant’s mark. In this case, the Panel finds that not only are the generic terms insufficient to distinguish the disputed domain name from the Complainant’s mark but they even strengthen the confusion that is likely to arise and thus mislead consumers into believing the disputed domain name is somehow connected to the Complainant.

In light of the above, the Panel finds that the first element of the Policy has been satisfied.

B. Rights or Legitimate Interests

In order for a complainant to prove that a respondent has no rights or legitimate interests in a disputed domain name, previous UDRP panels have consistently held that it is sufficient for a complainant to make a prima facie case (see, amongst others, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown by the complainant, the burden of production shifts to the respondent to produce evidence of its rights or legitimate interests in a disputed domain name to the panel.

The Panel finds that the Complainant holds rights on the mark TNT and that the Respondent is not commonly known by the disputed domain name.

Additionally, the Respondent has not presented any proof or argument that could lead this Panel to conclude that the Respondent could have any rights or legitimate interests in the disputed domain name. In the absence of a Response to the Complaint (the Respondent’s post Notification of Default correspondence being essentially non-substantive), the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.

Therefore, the Panel accepts that the Complainant has made an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thus finds that the second element of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The Panel found that the disputed domain name is currently inactive. Nevertheless, the Panel understands that the circumstances of creating the disputed domain name per se, making an improper use of the well-known mark TNT, strongly suggests bad faith. In terms of inactive domain names, the WIPO Overview 2.0 paragraph 3.2 provides: “The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the disputed domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”

The Panel finds that the mark TNT has turned throughout the years into a globally well-known mark, including in Turkey, making it highly unlikely that the Respondent was not aware of it by the time the disputed domain name was created in 2015. Even considering, for the sake of argument, that the Respondent was not aware, as previous UDRP panels have stated, a quick TNT trademark search would have revealed to the Respondent the existence of the trademark. The Respondent’s failure to do so is a contributory factor to its bad faith (Accor, So Luxury HMC v. Youness Itsmail, WIPO Case No. D2015-0287; Lancôme Parfums et Beauté & Cie, L'Oréal v. 10 Selling, WIPO Case No. D2008-0226).

The Panel finds that the Respondent did not reply to the Complainant’s contentions by the specified due date and that afterwards it did communicate by email, adopting an uncooperative posture and claiming not to know the owner of the disputed domain name. The Panel understands that this fact strongly suggests the Respondent acted in bad faith, once he received the notifications and chose not to reply them within the proper time frame but just to appear afterwards alleging not having a relation with the case.

In light of the above, the Panel finds that the third element of the Policy has been satisfied.

7. Decision

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, <tntexpressdelivery.com> be transferred to the Complainant.

Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: April 25, 2016