WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stig Bundgaard, Mette Lykkegaard and Natulique ApS v. Mustafa Sert
Case No. D2016-1131
1. The Parties
The Complainants are Stig Bundgaard, Mette Lykkegaard and Natulique ApS of Aarhus, Denmark, internally-represented.
The Respondent is Mustafa Sert of Istanbul, Turkey, self-represented.
2. The Domain Names and Registrar
The disputed domain names <natulika.com> and <natulika.net> are registered with FBS Inc. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2016. On June 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 8, 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 (transmitted in both Turkish and English), the Complainant submitted its request for English to be the language of the proceeding on June 22, 2016. The Respondent submitted its request for Turkish to be the language of the proceeding on June 23, 2016.
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 Turkish and English, and the proceeding commenced on June 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2016. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on July 18, 2016. Subsequently, on the same day, the Respondent sent an email communication to the Center.
The Center appointed Kaya Köklü as the sole panelist in this matter on July 25, 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.
On July 26, 2016, the Panel requested confirmation from the Complainant concerning the requested remedy in the proceedings. The Complainant confirmed the same day that it requests the transfer of both disputed domain names.
On August 9, 2016, in response to Administrative Panel Procedural Order No. 1 in both Turkish and English sent to the Parties on August 8, 2016, the Complainant provided a further submission to the Center. The Respondent replied on August 18, 2016.
4. Factual Background
There are two individuals and one company initiating these administrative proceedings jointly. Mette Lykkegaard is the registered owner of the relevant trademark rights and together with her husband Stig Bundgaard the owner the Danish company Natulique ApS. All of them are hereinafter jointly accepted and referred to as the “Complainant”, unless otherwise indicated.
The Complainant is selling organic and natural hair products.
The Complainant is the owner of various international trademark registrations for the mark NATULIQUE since August 20, 2008, including but not limited to trademark protection in Turkey since 2010.
The Complainant also owns and operates the domain name <natulique.com> in many language variations.
The Respondent is an individual from Turkey. The disputed domain names <natulika.com> and <natulika.net> were both registered on May 19, 2014.
In 2013, the Complainant granted the Respondent a right to distribute products under the trademark NATULIQUE.
According to the provided evidence, the Complainant successfully brought legal action against the Respondent in Turkey. Upon a request by the Complainant, the 3rd Istanbul Civil Court of Intellectual and Industrial Property Rights rendered a preliminary injunction decision against the Respondent on June 1, 2016, prohibiting the use of the Complainant’s trademark NATULIQUE.
At the time of the decision, the disputed domain name <natulika.net> did not resolve to an active website. The disputed domain name <natulika.com> resolved to a website offering products that compete with those of the Complainant.
5. Parties’ Contentions
The Complainant requests the transfer of both disputed domain names, as confirmed in its email communication to the Center of July 26, 2016.
The Complainant is of the opinion that the disputed domain names are confusingly similar to the Complainant’s NATULIQUE trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. In particular, the Complainant states that the Respondent was never granted permission or a license to produce and sell similar products to those of the Complainant. The Complainant further alleges that the Respondent has never used and does not intend to use the disputed domain names in connection with a bona fide offering of goods or services.
Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith.
The Complainant is of the opinion that the Respondent has registered and is using the disputed domain names to illegitimately benefit from the reputation of the Complainant.
The Respondent did not formally reply to the Complainant’s contentions.
As noted above, on June 23, 2016, the Respondent filed a request for Turkish to be the language of the proceeding. The Center received two further email communications from the Respondent on July 18, 2016 and August 18, 2016.
In his first email of July 18, 2016, the Respondent asserts that neither the case as such nor the role of the Center is clear to him. He further argues that there is not sufficient documentation provided by the Complainant and hence, requests the denial of the Complaint.
In his second email of August 18, 2016, the Respondent mainly argues that he is the legitimate owner of the Turkish word and figurative trademark NATULIKA, which apparently has been registered by the Turkish Patent Institute in February 2016. Furthermore, he argues that the Complainant’s trademark NATULIQUE and the figurative trademark NATULIKA are neither identical nor confusingly similar. In this regard, the Respondent refers to some expert opinion concerning the validity of the trademark registration for NATULIKA, allegedly prepared for a pending invalidity case in Ankara, Turkey. The Respondent did not submit the opinion itself nor any other evidence to the Center in support of its contentions.
6. Discussion and Findings
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.
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 names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not formally replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.
A. Other Legal Proceedings
Paragraph 18 of the Rules states that, in case of other legal proceedings between the Parties, it is the Panel’s discretion to decide whether to suspend or terminate the administrative proceedings or to proceed to a decision.
In the present case, the Panel notes that the 3rd Industrial Property Court in Istanbul issued a preliminary injunction against the Respondent prohibiting any further trademark infringing behavior by the Respondent.
The Panel also notes that there might be additional invalidity proceedings pending in Ankara, Turkey, against the Respondent’s Turkish trademark registration NATULIKA. The Panel believes that this does affect the present administrative proceeding, as the scope of protection of a trademark with figurative elements is to be assessed separately from a potential right to use a domain name under the Policy, which still might be assessed as confusingly similar to an already existing trademark.
Taking the circumstances of the present administrative proceeding into account, the Panel finds that the case is mature enough to render a decision under the Policy without creating prejudice as regards any pending or future court proceedings in Turkey.
Therefore, the Panel believes that it is appropriate to proceed to a decision in compliance with paragraph 18(a) of the Policy.
B. Language of the Proceedings
The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the Registration Agreement is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, and in light of the Parties’ prior contractual relationship concluded in English, to conduct the proceedings in Turkish and request a costly Turkish translation of the Complaint while the Respondent has failed to raise substantive objection or even to properly respond to the Complaint. Taking into consideration that the Parties were permitted submit their filings in both Turkish and English language, the Panel believes that the Respondent will not be prejudiced by a decision being rendered in the English language.
C. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the NATULIQUE trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint and detailed in Section 4 above, the Complainant is the owner of various NATULIQUE trademarks.
The Panel further finds that both disputed domain names are confusingly similar to the Complainant’s NATULIQUE trademark. The first distinctive part of the disputed domain names, comprising the letters “natuli”, is practically identical with the Complainant’s trademark. It is just the less distinctive end of the disputed domain names, which slightly differs by using “ka” instead of “que”. Taking into consideration that “natulique” is a fanciful term and there is a highly similar pronunciation of “natulique” and “natulika”, the Panel rather believes that this might be a targeted misspelling of the Complainant’s trademark. In any case, it is the view of the Panel that the minor differences are negligible and do not create a new distinctiveness of the disputed domain names in relation to the Complainant’s registered trademark NATULIQUE.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain names.
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain names, for instance by the circumstances listed in the Policy, paragraph 4(c).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain names.
There is no indication in the current record that the Respondent is commonly known by the disputed domain names. Furthermore, the Respondent has failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain names. In particular, the Respondent has failed to show that the disputed domain names have been or are intended to be used in connection with a bona fide offering of goods or services. The documents in the case file at least indicate that the Respondent cannot rely on any using rights based on contractual relations or any other legal basis. His allegation that the disputed domain names are dedicated to be used for marketing a large variety of hair care products with different labels, including the Complainant’s ones, does not help to establish a right to use the disputed domain names.
As noted in the distributor agreement entered into by the Parties, the Respondent did not acquire any rights to the Complainant’s trademark as a result of the agreement. The use of the Complainant’s trademark for sales and marketing was expressly excluded from the agreement, and allowed only for the sale of the Complainant’s products “via professional hair salon, beauty salons and spa’s”. The distributor agreement did not appear to permit the Respondent to register any domain names containing the Complainant’s trademark. In any event, the distributor agreement is no longer in force, and the Panel finds that the Respondent’s use of the disputed domain names, being confusingly similar to the trademark of the Complainant, to sell products that are in competition with those of the Complainant, cannot give rise to any rights or legitimate interests within the terms of the Policy.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain names in bad faith.
The Panel is of the opinion that the Respondent intentionally attempted to create a likelihood of confusion among customers and/or to otherwise take advantage of the Complainant’s trademark for illegitimate purposes.
The Panel is convinced that the Respondent was well aware of the Complainant’s NATULIQUE trademark when it registered the disputed domain names in May 2014. At the date of registration of the disputed domain name, the Complainant’s NATULIQUE trademark was already registered and recognized in Turkey. As a former distributor of the Complainant in Turkey, it is obvious that the Respondent knew the Complainant and its rights in the trademark NATULIQUE before registering the disputed domain names, and proceeded to register the disputed domain names without any permission to do so.
The Panel further believes that the Respondent has chosen a confusingly similar misspelling of the Complainant’s trademark in the disputed domain names in order to intentionally attract and mislead Internet users in their believing that the disputed domain names are somehow affiliated with the Complainant. Deliberately using a confusingly similar misspelling of this nature is, in the Panel’s view, compelling evidence of bad faith.
All in all, the Panel concludes that the disputed domain names were registered and are being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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 names <natulika.com> and <natulika.net> be transferred to the Complainant.
Date: August 19, 2016