WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tupras Turkiye Petrol Rafinerileri A.S. v. Gizem Sertcan
Case No. D2016-0836
1. The Parties
The Complainant is Tupras Turkiye Petrol Rafinerileri A.S. of Korfez, Turkey, represented by June Intellectual Property Services Inc., Turkey.
The Respondent is Gizem Sertcan of Ankara, Turkey.
2. The Domain Name and Registrar
The disputed domain name <tupras.xyz> is registered with FBS Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 27, 2016. On April 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 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. Further to the Center's communication regarding the language of the proceeding on May 4, 2016, the Complainant requested English to be the language of the proceeding.
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 in both English and Turkish, and the proceeding commenced on May 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 10, 2016.
The Center appointed Selma Ünlü as the sole panelist in this matter on June 15, 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 in this administrative proceeding, Tupras Turkiye Petrol Rafinerileri A.S., is one of Turkey's largest industrial enterprises. It is a petroleum company dominating the market and belonging to one of the biggest company groups in Turkey: Koç Holding.
The Complainant owns the registered TÜPRAŞ trademarks in several classes around the world, as well as in Turkey.
The Panel examined the registrations of the Complainant on June 26, 2016 and has noted that the Complainant has several trademark registrations before the Turkish Patent Institute consisting of or containing the TÜPRAŞ trademark. The Complainant's TÜPRAŞ trademark is registered as a well-known trademark in Turkey as well under the number t/02451.
The Complainant has also registered numerous domain names under generic Top-Level Domains ("gTLDs") and country-code Top-Level Domains ("ccTLDs") containing the term "tüpraş". The registration date of these domain names show that these were held long before the registration of the disputed domain name on August 14, 2015, as confirmed by the Registrar.
The website at the disputed domain name is inaccessible and there was no content provided, when the Panel visited the Respondent's website under the disputed domain name on June 26, 2016.
5. Parties' Contentions
Pursuant to paragraph 4(i) of the Policy, the Complainant requests the Panel to order the disputed domain name to be transferred to the Complainant. The Complainant submits that the grounds for the proceeding listed in paragraph 4(a) of the Policy are present.
In summary, the Complainant contends the following:
Identical or Confusingly Similar
The Complainant states that it owns numerous registered TÜPRAŞ trademarks and that this trademark is amongst the best known in Turkey. The Complainant is one of the largest petroleum companies in Turkey, operating all over the country.
The Complainant asserts that the disputed domain name includes in its entirety the word "tupras" followed by the gTLD ".xyz" and therefore is identical with its TÜPRAŞ trademarks.
No Rights or Legitimate Interests
The Complainant alleges that the Respondent is not and has never been one of the Complainant's licensees, nor is he otherwise authorized to use the Complainant's mark. The Respondent does not have any rights or legitimate interests in the disputed domain name.
Therefore, the Complainant argues that the Respondent is in no way authorized to use the Complainant's TÜPRAŞ trademarks in the disputed domain name and is not using the disputed domain name in connection with bona fide offering of goods or services.
Registered and Used in Bad Faith
The Complainant indicates that the disputed domain name has been registered in bad faith. The Complainant contends that the trademark TÜPRAŞ is a well-known mark in Turkey. It further claims that the Respondent must have been aware of the Complainant and its marks at the time that it registered the disputed domain name.
Further, the disputed domain name is inactive which also reflects that the Respondent's main purpose is to sell the disputed domain name to the Complainant for profit.
Lastly, the Complainant emphasizes that, as determined by many UDRP decisions, passive holding of a domain name containing a well-known trademark also constitutes bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of the Proceedings
The disputed domain name's Registration Agreement is in Turkish in this case and pursuant to the Rules, paragraph 11, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement. However, the Complainant submitted arguments as to why the proceedings should proceed in English. The purpose of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties' level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
The Panel finds that, if the Complainant was to submit all documents in Turkish, the proceeding would be unduly delayed and the Complainant would have had substantial translation expenses.
Despite the Center notifying the Complaint both in Turkish and English, the Panel notes that no objection was made by the Respondent to the Complaint being in English nor any request made that the proceeding be conducted in Turkish, the language of the Registration Agreement. The Respondent had ample opportunity to raise objections or make known its preference, but it did not. See SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400.
Therefore, in consideration of the above circumstances and in accordance with paragraph 11 of the Rules, the Panel hereby decides that English shall be the language of the administrative proceeding in the present case.
6.2. Substantive Elements of the Policy
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all these requirements are fulfilled.
A. Identical or Confusingly Similar
The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of several registrations of the TÜPRAŞ trademark.
The Panel finds that the addition of the gTLD ".xyz" is irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant's trademark, PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189. It has been stated in several previous UDRP decisions that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark.
The Panel is of the opinion that Internet users will fall into a false impression that the disputed domain name is an official domain name of the Complainant. The Panel recognizes the Complainant's rights and concludes that the disputed domain name is confusingly similar with the Complainant's TÜPRAŞ trademarks. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy are provided.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above circumstances, demonstrate rights or legitimate interests in the disputed domain name.
Nothing in the case file suggests that the Respondent has any rights or legitimate interests in the disputed domain name. The Complainant has not, for example, granted the Respondent any right or license to use the TÜPRAŞ trademarks in a domain name. Therefore, the Panel finds on the current record that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of the Policy.
Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the trademark TÜPRAŞ, as well as its extensive and intensive usage, the Respondent, who appears to be located in Turkey where the Complainant is well-known, was aware of the Complainant and its TÜPRAŞ trademark at the time of registration of the disputed domain name. See, e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087. Referring to Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant's trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith registration.
Moreover, the Panel notes that:
(i) the Respondent did not submit any response and is in default;
(ii) the Complainant's trademark has a strong reputation and is well-known in Turkey; and
(iii) the disputed domain name resolves to an inactive website.
In light of the submitted evidence, the Panel is convinced that the Respondent has passively held the disputed domain name and is engaging in no activity. "Passive holding" does not, in appropriate circumstances like the current case, prevent a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element 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 disputed domain name <tupras.xyz> be transferred to the Complainant.
Date: July 1, 2016