WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CBN Lojistik Depolama Ve Dağıtım Anonim Şirketi v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd
Case No. D2016-1227
1. The Parties
The Complainant is CBN Lojistik Depolama Ve Dağıtım Anonim Şirketi of Istanbul, Turkey, represented by June Intellectual Property Services Inc., Turkey.
The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Host Master Transure Enterprise Ltd of Wilmington, Delaware, United States of America.
2. The Domain Name and Registrar
The disputed domain name <40ayak.net> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2016. On June 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 21, 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 June 21, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 22, 2016.
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 proceedings commenced on June 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 26, 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 August 1, 2016, the Complainant submitted a purported Supplemental Filing.
4. Factual Background
According to the Complaint, the Complainant was established in 2010. Since then, it has been providing a range of distribution services to the domestic and international logistics industries including land transport, storage, micro-distribution solutions for the fast moving consumer goods sector and maritime transport services. It has a fleet of 150 vehicles serving the Marmara region, mainly in Istanbul.
The Complainant has a website at “www.40ayak.com”. It has a 40Ayak mobile app which can be downloaded from both the iOS App Store and the Android Play Store.
The Complainant says it owns many trademark registrations in Turkey. It provides evidence of Turkish Trademark Registration No. 2015 58267 for 40AYAK. The application for registration was made on July 8, 2015, and the trademark was registered on April 13, 2016. It is registered for a range of services in International Classes 35, 39 and 42.
It appears that the second respondent, Transure Enterprise Ltd (hereafter the “Respondent”), registered the disputed domain name on July 18, 2011.
The print out included in Annex 6 to the Complaint shows that just before the Complaint was filed the disputed domain name resolved to a website which featured a heading “Buy this domain”. It then set out a series of “related links” in Turkish. According to the Complaint, these terms translate in English to fields related to the Complainant’s field of activity including “moving” and “transportation”. A statement at the bottom states:
“The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois).”
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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.
No response has been filed. The amended Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Supplemental Filing
Before proceeding to the substance of the dispute, the Panel needs to rule on the admissibility of the Complainant’s Supplemental Filing.
Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the Parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response.
Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that the Parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) empowers the Panel to determine the admissibility, relevance materiality and weight of the evidence.
The proposed Supplemental Filing argues that the Respondent’s failure to file a Response is in effect an admission that the Respondent does not have a defence to the Complaint. The failure of the Respondent to file a Response, however, does not relieve the Complainant from the burden of demonstrating that the requirements of the Policy have been made out. In these circumstances, the purported Supplemental Filing does not add anything useful and so it is not admitted into the record.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the trademark or service mark in which the Complainant has rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of Turkish Trademark Registration No. 2015 58627 for “40AYAK”.
The Panel notes that the Complainant’s trademark was not registered until July 8, 2015, after the date the Respondent apparently registered the disputed domain name. The Complainant had been using its trademark since 2010, before the date the disputed domain name was registered. In any event, the time the rights were registered or acquired is not a relevant consideration at this stage of the inquiry. It may be relevant, however, in relation to the second or third elements under the Policy: see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.4.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks: WIPO Overview 2.0, paragraph 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the “.net” generic Top-Level Domain (“gTLD”), the disputed domain name is identical to the Complainant’s trademark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See WIPO Overview 2.0, paragraph 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with the Complainant in any way. The disputed domain name is plainly not derived from the Respondent’s name. Nor is there any evidence in the record to support a finding that the Respondent is or was commonly known as AYAK or 40 AYAK.
The disputed domain name was registered before the Complainant registered its trademark in Turkey. However, the Complainant had started using its trademark much earlier, in 2010 which was before the disputed domain name was registered.
In this connection, the Panel notes that, according to Google Translate, “ayak” is Turkish for “foot” in English. The nature of the use the Respondent is making of the term is not related in any way, however, to the foot or feet related activities. The Panel also understands that the word “kırkayak” (or “fortyfeet” in English) is the Turkish word for “millipede”. As the Complainant has been able to register its trademark in Turkey, it appears that the relevant Turkish authorities do not regard the term 40AYAK as directly and wholly descriptive of the services which the Complainant provides. That is, the expression “40AYAK” appears to be a fanciful or allusive expression in most contexts rather than a plainly descriptive expression. Equally, there is nothing in the way that the Respondent is using the disputed domain name to suggest that the Respondent registered it for its significance as some kind of (putative) descriptive term. There is also nothing about the Respondent’s website related to millipedes or similar insects. Rather, the disputed domain name appears to have significance only because of its role as the Complainant’s trademark – at first unregistered, but subsequently registered as such.
The Panel accepts that registration of a domain name with a view to “parking” it for re-sale or to generate pay-per-click (“PPC”) revenues (even as a holding position before resale) is not illegitimate per se. Whether or not there exists a right or legitimate interest must be determined in context including a consideration of the domain name in question, the way the domain name is used and any rights that the registrant may have as well as the nature and scope of the trademarks in issue. Thus, there would usually be no grounds for complaint if a respondent registered a wholly descriptive term and used it solely in connection with what it describes. See WIPO Overview 2.0, paragraph 2.6.
The situation is different, however, where the disputed domain name has, or appears to have, been registered for its trademark significance and the “parking” is, or appears to be, intended to take advantage of that trademark significance. In such cases, UDRP panels have repeatedly found that the registrant does not have rights or legitimate interests in the domain name sufficient for the purposes of the Policy.
The website to which the disputed domain name resolves does include a “disclaimer” purporting to absolve the Respondent of responsibility for the sponsored links that appear on the website. Even putting to one side the apparent inconsistency between the second and third sentences of that disclaimer, the Respondent could not avoid an adverse finding on the basis of the disclaimer alone.
A registrant of a domain name typically has the option of choosing whether or not sponsored links are displayed on a landing page where a domain name is otherwise inactive. If the registrant chooses to avail him or herself of that functionality, it falls on the registrant to ensure it is not used to interfere with someone else’s intellectual property rights or otherwise contrary to the Policy. UDRP panels have frequently held the registrant responsible for such links whether the registrant played an active or merely passive role in the selection and placement of such links. If the Respondent were intending to contest that approach, therefore, the Respondent would have needed to assert that case positively including providing a full explanation of the circumstances that are said to result in exoneration. No such explanation has been proferred here.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The nature of the sponsored links appearing on the landing page of the website to which the disputed domain name resolves has been described above. That use is not based on any descriptive connotation that the expression “40AYAK” might have, but it is instead based on the trademark significance of the Complainant’s trademark. Accordingly, it does not qualify as use in good faith under the Policy since it is use of the Complainant’s trademark, without permission, to attract users to services that are not sourced from the Complainant, but which appear to be in competition with the Complainant’s services. In addition, the website to which the disputed domain name resolves is headed with an invitation to “Buy this domain”. A subsequent page on the website invites prospective purchasers to submit an offer. The Panel finds, therefore, that the Complainant has established that the Respondent is using the disputed domain name in bad faith.
As the disputed domain name appears to have been chosen for its significance as the Complainant’s trademark, the Panel accepts the Complainant’s contention that the disputed domain name was registered with knowledge of the Complainant’s trademark, albeit unregistered at the time, to take advantage of it for its trademark significance. This is supported by the Respondent’s offer to sell the disputed domain name to the Complainant for USD 1,200, an amount that would clearly appear to exceed the Respondent’s out-of-pocket costs associated with the disputed domain name. Accordingly, the Panel finds that the Complainant has established that the disputed domain name was registered in bad faith.
Therefore, the Complainant has succeeded in establishing that the disputed domain name was registered and used in bad faith 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, <40ayak.net>, be transferred to the Complainant.
Warwick A. Rothnie
Date: August 2, 2016