WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Franke Technology and Trademark Ltd v. Domain Admin Domain Admin, whoisprotection biz / Ramazan Arican
Case No. D2016-1880
1. The Parties
The Complainant is Franke Technology and Trademark Ltd of Hergiswil, Switzerland, represented by BrandIT GmbH, Switzerland.
The Respondent is Domain Admin Domain Admin, whoisprotection biz of Istanbul, Turkey / Ramazan Arican of Antalya, Turkey.
2. The Domain Name and Registrar
The disputed domain name <franke-servisantalya.com> is 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 September 15, 2016. On September 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 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 and noting that the language of the Registration Agreement is Turkish. The Center sent an email communication to the Complainant on September 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 amended Complaint on September 22, 2016.
Pursuant to the Complaint submitted in English and the Registrar's confirmation that Turkish is the language of the Registration Agreement, on September 22, 2016, the Center requested that the Parties submit their comments on the language of the proceeding. On September 22, 2016, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any comment on the language of the proceeding.
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 in English and Turkish of the Complaint, and the proceedings commenced on September 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 19, 2016.
The Center appointed Selma Ünlü as the sole panelist in this matter on October 24, 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, Franke Technology and Trademark Ltd, has entered into Turkish market in 1999 and since then it has been operating actively in the kitchen appliances industry through its Turkish subsidiary Franke Mutfak ve Banyo Sistemleri San.ve Tic. A.Ş in Turkey.
The Complainant has registered the word and figurative trademark FRANKE in several classes in many jurisdictions, including in Turkey. The first FRANKE trademark in Turkey was registered in 1992 which is before many years from the registration of the disputed domain name. The Complainant's FRANKE trademark is considered as a well-known trademark as proved by the annexes to the Complaint and as accepted within the prior UDRP decisions in relation to the FRANKE trademark.
The Complainant has registered domain names under generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD") containing the trademark FRANKE, e.g., <franke.com> , <franke.net> and <franke.com.tr>. The registration date of these domain names shows that these were held long before the registration of the disputed domain name as the first domain name of the Complainant (i.e., <franke.com>, was created on March 18, 1996) according to the WhoIs records provided by the Complainant.
Pursuant to the WhoIs records and the Registrar verification, the domain name <franke-servisantalya.com> was registered on April 16, 2016.
When the Panel visited the website under the disputed domain name on November 6, 2016, it was seen that the disputed domain name is still active. At the website under the disputed domain name, the Respondent provides maintenance service for the FRANKE branded kitchen appliances. Also, the Panel noted that the FRANKE trademark is used dominantly on the left up corner of the website with the logo of the Complainant's trademark.
As evidenced by the Complainant, the Respondent did not reply to the Complainant's cease-and-desist letter to solve this dispute between the parties amicably before starting the present administrative proceeding.
5. Parties' Contentions
Pursuant to paragraph 4(i) of the Policy, the Complainant requests that the disputed domain name be transferred to the Complainant. The Complainant submits the grounds for these proceedings 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 the registered and well-known trademark FRANKE on its behalf in many countries including Turkey. The Complainant alleges that the disputed domain name
<franke-servisantalya.com> directly and entirely incorporates the Complainant's well-known and registered FRANKE trademark along with the element "servis", meaning "service" in Turkish, and the geographical term "Antalya", which is a city in Turkey. The Complainant claims that the subject additional word elements do not add distinctiveness to the disputed domain name, but instead, create association with the Complainant's business field.
The Complainant further asserts that the addition of the gTLD ".com" does not have any impact on the assessment of confusing similarity between the Complainant's trademark and the disputed domain name.
Rights or Legitimate Interests
The Complainant asserts that it did not find anything that would suggest that the Respondent has been using the trademark FRANKE in any other way that would give it any legitimate rights in the disputed domain name.
The Complainant states that no permission has been given to the Respondent to register its trademark as a domain name.
The Respondent's sole reason in using the disputed domain name is to mislead the public into believing that the Respondent's business at the disputed domain name is associated with and/or authorized by the Complainant, which is not true as the Complainant emphasizes that the Respondent is not an authorized repair center.
Registered and Used in Bad Faith
The Complainant indicates that the disputed domain name has been registered and is being used in bad faith.
The Complainant initially claims that the identity of the Respondent was hidden through an identity protection service provider in order to make it impossible to be contacted which indicates the bad faith of the Respondent in registering the disputed domain name.
The Complainant asserts that it tried to contact the Respondent on August 9, 2016 by a cease-and-desist letter to request a voluntary transfer of the disputed domain name. However, the Respondent did not reply to the Complainant's cease-and-desist letter.
By using the disputed domain name, the Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's FRANKE trademark as to the source, sponsorship, afﬁliation, or endorsement of the Respondent's website or the services being offered on the Respondent's website.
The Respondent did not reply to the Complainant's contentions.
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. However, the Complainant submitted arguments along with the Complaint as to why the proceeding 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 Center also notified the Parties that the authority to decide the language of the proceeding lay with the Panel to be appointed. The Center thereafter proceeded to issue its case-related communications to the Parties both in English and Turkish.
The Respondent did not reply to the Complainant's request, therefore it did not express in any way that it cannot answer the allegations since it does not understand English.
The Complainant has submitted its Complaint in English and supporting evidence in both in English and Turkish. Moreover, the Complainant is not a Turkish entity. 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. The Respondent has not objected to the Complainant's language request and has not come forward to express any interest in this proceeding. Therefore, in consideration of the above circumstances and in the interest of fairness to both Parties, the Panel hereby decides, under paragraph 11(a) of the Rules, that English shall be the language of administrative proceeding in this case.
At this point, the Panel refers to Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989; Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679; and Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, and is of the opinion that both Parties have been given a fair opportunity to present their case and there can be no unfairness to the Respondent given the fact that the Center proceeded to issue its case-related communications to the Parties both in English and Turkish. The Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing this proceeding to be conducted in English.
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and 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 each of the following three elements:
(i) The disputed domain names registered by the Respondent are 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 names; 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 of these requirements are fulfilled.
A. Identical or Confusingly Similar
The Policy simply requires the Complainant to demonstrate that the disputed domain names are 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 for the trademark FRANKE.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant's FRANKE trademark. The disputed domain name incorporates the Complainant's FRANKE trademark in its entirety with the additional elements "servis" and "Antalya". The Panel concludes that the addition of the element "servis", meaning "service" in Turkish, and the geographical term "Antalya", which is a city in Turkey does not eliminate the confusing similarity between the Complainant's trademark FRANKE and the disputed domain name.
In similar UDRP cases (see, e.g., 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 said trademark.
In a very similar case, Aktiebolaget Electrolux v. Agustin Acosta, WIPO Case No. D2010-1968, the Panel found that the addition of the suffix "serviciotecnicomadrid" was not relevant in order to make the disputed domain name distinctive from the trademark and would not have any impact on the overall impression of the dominant part of the disputed domain name, ELECTROLUX, evaluated recognizable as a world famous trademark.
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
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 [the Respondent] of the dispute, [the Respondent's] 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) [the Respondent] (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) [the Respondent] is 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 is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. Once the Complainant has made out a prima facie case, then the Respondent may, inter alia, by showing one of the above circumstances, demonstrate rights or legitimate interests in the disputed domain names.
The Panel is of the opinion that, without express authority of the relevant trademark holder, to be an authorized technical service of that trademark holder's products would not create any right to use a domain name that is identical, or otherwise wholly incorporates the relevant trademarks. In the absence of a response, the Panel accepts the Complainant's allegations as true that the Respondent is not an authorized business partner and therefore has no authorization to use the FRANKE trademark in the disputed domain name.
The Panel also accepts that the Respondent is not commonly known by the disputed domain name, the Respondent has acquired no trademark or service mark rights, and the Respondent is not an authorized dealer or representative of the Complainant.
Moreover, as the Complainant points out, the Respondent would not meet the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and therefore shall not be considered as acting with goodwill. This is based on the fact that the web site does not accurately disclose the Respondent's relationship with the trademark owner as there is no clear explanation or disclaimer and the trademark of the Complainant is used on the top left corner of each page.
Finally, the Respondent is using the website at the disputed domain name to receive personal information from Internet users visiting the website (name, surname, phone number, etc.) through filling a form. In the Panel's opinion, if the users were not in the opinion of giving their information to the Complainant or to a party associated with the Complainant, they might not have shared their personal information since it is their valuable commodity.
In light of the evidence provided by the Complainant, notably that the Complainant has not granted the Respondent any right or license to use the FRANKE trademarks, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names for the purposes of the Policy.
Hence, as the Complainant has made out its prima facie case, and as the Respondent has not submitted any evidence to rebut the Complainant's allegations, or otherwise 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 FRANKE, the Respondent, also being located in Turkey, was aware of the Complainant and its FRANKE trademark at the time of the 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; 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 registration in bad faith.
Further, the fact that the Respondent's website uses the Complainant's trademark FRANKE in connection with an offering of services related to the Complainant's goods suggests that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Considering that the Complainant is conducting business on kitchen appliances industry and repair and maintenance services of the same are part of the Complainant's business, the addition of the subject terms to the disputed domain name is descriptive of the Complainant's services under the trademarks rather than being distinctive. See Swarovski Aktiengesellschaft v. Frank Jackie, WIPO Case No. D2013-0742. Therefore, the nature of the generic terms used would tend to reinforce consumers' conclusion that the website to which the disputed domain name resolves is somehow legitimately included in the supply and service system established by the Complainant under its FRANKE trademarks, or otherwise strengthens the risk of association with the Complainant's mark.
Although using privacy services as in this case is not accepted per se a sign of bad faith, it is found in many cases that such usage may be further indicative of bad faith. See, WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 2, WIPO Case No. D2012-0033. Also, it is noteworthy to mention that even the UDRP panels, who did not find the usage of privacy services as an indication of bad faith, accepted that "privacy services are subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere". See, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.
Moreover, the Panel believes that the Respondent's bad faith is further evidenced by its failure to include a disclaimer within the webpages, stating that the Respondent does not have any relation with the Complainant.
The Panel further notes that:
(i) the Respondent did not offer any counter-argument and remained in default,
(ii) the Respondent did not provide any evidence of good faith use; instead, at the time of the filing of the Complainant, it has actively hidden its real name and contact details by a proxy registration service.
Therefore, in light of the above-mentioned circumstances of the present case, the Panel is convinced 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) 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 <franke-servisantalya.com> be transferred to the Complainant.
Date: November 7, 2016