WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Michelin Recherche et Technique S.A v. Whoisprotection Biz / Suhel Senturk
Case No. D2016-0903
1. The Parties
The Complainant is Michelin Recherche et Technique S.A of Granges-Paccot, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Whoisprotection Biz of Istanbul, Turkey / Suhel Senturk of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <rikenlastik.com> is registered with FBS Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2016. On May 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 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 May 10, 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 amended Complaint on May 13, 2016.
On May 10, 2016, the Center notified the parties in both English and Turkish that the language of the Registration Agreement for the disputed domain name was Turkish. On May 11, 2016, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.
The Center verified that the Complaint together with the amended 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 proceeding commenced on May 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2016. The Respondent sent emails to the Center on June 7 and 8, 2016. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on June 20, 2016.
The Center appointed Selma Ünlü as the sole panelist in this matter on July 1, 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, Michelin Recherche et Technique S.A. with a long-standing past, is one of the Turkey’s leading tire companies and is active in Turkish market since 1936. The Complainant manufactures and sells tires for many different types of vehicles including airplanes, farm equipment, bicycles and trucks.
The Complainant owns the registered RIKEN trademarks in several classes around the world, as well as in Turkey.
As the Panel examined the registrations of the Complainant on the date of July 18, 2016, it has been noted that the Complainant has registered the trademark RIKEN in 1994.
The disputed domain name is inaccessible and there was no content provided, when the Panel visited the Respondent’s web site on July 18, 2016.
The Respondent has chosen not to submit any formal Response to the contentions raised in the Complaint but has merely sent two emails to the Center.
The disputed domain name <rikenlastik.com> was registered on February 9, 2015.
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 the grounds listed in paragraph 4(a) of the Policy.
In summary, the Complainant contends the following:
Identical or Confusingly Similar
The Complainant states that it owns registered RIKEN trademarks and that the subject trademark is amongst the most popular tire brands in Turkey. The Complainant is one of the largest tire companies in Turkey, operating all over the country.
The Complainant asserts that the disputed domain name comprises of the word “riken” followed by the generic Top-Level Domain (“gTLD”) “.com” and a descriptive word “lastik” meaning “tire” in Turkish associated with the main activity field of the Complainant, which is with its overall impression confusingly similar to its registered RIKEN trademarks.
Rights or Legitimate Interests
The Complainant alleges that the Respondent is not and has never been one of the Complainant’s licensees, nor is it 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 RIKEN 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 RIKEN is a popular mark throughout the world including Turkey. It further claims that the Respondent must have been aware of the Complainant and its marks at the time that it chose the Complainant’s trademark and registered the disputed domain name.
Moreover, the Complainant claims that the disputed domain name was active before the date the Complainant had sent a cease and desist letter to the Respondent to solve the matter amicably. The previous version of the web site was containing photos of tires and links redirecting towards other web sites related to tires.
Further, the Complainant alleges that holding the web site currently inactive after the receipt of cease and desist letter is also an indication of bad faith. The Complainant emphasizes that the current status of “being an inactive domain name” does not remove the infringement as determined by many UDRP decisions stating that passive holding of a trademark also constitutes bad faith.
Lastly, the Complainant claims that registering the disputed domain name through a privacy shield service is showing the aim to hide the identity and contact details of the Respondent in bad faith.
The Respondent did not submit any formal Response to the contentions raised in the Complaint but has merely sent two emails to the Center. In the first email dated June 7, 2016, the Respondent claimed that on the basis of the first come first served principle, the first person to register a domain name with legitimate grounds should have rights on such domain name and there is no registered trademark for “riken lastik”. In this email, the Respondent requested that the disputed domain name be returned to itself. On June 8, 2016, the Respondent further noted it does not have any other responses.
6. Discussion and Findings
6.1. Language of the Proceeding
The disputed domain name’s Registration Agreement is in Turkish 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 proceeding shall be the language of the Registration Agreement. 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 Complainant has submitted its Complaint in English and supporting evidence in English and Turkish and, therefore, if the Complainant were required to submit all documents in Turkish, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. 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 an 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 the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of the administrative proceeding in this 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 Complainants must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to the 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 registrations of the RIKEN trademark.
Although the disputed domain name contains the Complainant’s trademark in its entirety, it is coupled with a descriptive word “lastik”, which means “tire” in Turkish. The Panel is of the opinion that the addition of the generic word “lastik” does not negate the confusing similarity with the Complainant’s trademark.
In similar cases Sanofi-Aventis v. Gideon Kimbrell, WIPO Case No. D2010-1559; Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak, WIPO Case No. D2010-0010; Greenbrier IA, Inc. v. Moniker Privacy Services/Jim Lyons, WIPO Case No. D2010-0017; and Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green, WIPO Case No. D2010-0024, the respective UDRP panels found that adding descriptive words does not remove the likelihood of confusion between a trademark and a domain name incorporating the said trademark.
The Panel further finds that the addition of the gTLD “.com” 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 RIKEN trademarks. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy are satisfied.
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.
In light of the evidence submitted in the case file, e.g., trademark registrations etc., it is clear to the Panel that the Complainant has earlier and lawful rights in the RIKEN trademarks. The Complainant has not granted the Respondent any right or license to use the RIKEN trademarks. There is no indication that the Respondent is commonly known by the disputed 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.
Consequently, in the absence of a response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the RIKEN trademark in the disputed domain name. Hence, as the Complainant has made out its unrebutted 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 web site 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 web site or location or of a product or service on the respondent’s web site or location.
By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the RIKEN trademark, as well as its extensive and intensive usage, the Respondent, who appears to be located in Turkey where the Complainant has a recognition, was aware of the Complainant and its RIKEN 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 formal response;
(ii) the Complainant’s trademark has a strong reputation and is well-known in Turkey;
(iii) the Complainant has put forward that the disputed domain name was initially active before the Complainant sent a cease and desist letter and it contained photos of tires and links directing towards other related web sites; and
(iv) the disputed domain name currently leads to an inactive web site.
In light of the submitted evidence, the Panel is convinced that the Respondent had initially used the disputed domain name with the intention of attracting Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark. Yet, for the time being, the Respondent is passively holding the disputed domain name and is engaging in no activity. “Passive holding” has also been accepted as a sufficient bad faith indicator in a number of UDRP cases. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Additionally, the Panel is of the opinion that transferring the web site to an inactive position after receiving the Complainant’s cease and desist letter is also an indication of bad faith showing that the Respondent was aware of the RIKEN trademark and also indicative of the lack of the Respondent’s legitimate interest in the disputed domain name.
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 <rikenlastik.com> be transferred to the Complainant.
Date: July 18, 2016