WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pirelli & C. S.p.A. v. Atakan Ersan Yuksel
Case No. D2016-2279
1. The Parties
The Complainant is Pirelli & C. S.p.A. of Milano, Italy, represented by Fasano - Avvocati, Italy.
The Respondent is Atakan Ersan Yuksel of Bursa, Turkey.
2. The Domain Name and Registrar
The disputed domain name <turkpirelli.com> is registered with FBS Inc. (the "Registrar").
3. Procedural History
The Complaint in English and Turkish was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 9, 2016. On November 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 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 and noting that the registration agreement of the disputed domain name is in Turkish.
Pursuant to the Complaint submitted in English and the Registrar's confirmation that Turkish is the language of the registration agreement, on November 10, 2016, the Center requested that the Parties submit their comments on the language of the proceeding in English and Turkish language. On November 10, 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 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 November 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 20, 2016.
The Center appointed Kaya Köklü as the sole panelist in this matter on December 22, 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 is a large and internationally well-known tyre manufacturer based in Italy. It is active throughout the world and has productions plans in 14 countries, including in Turkey. It owns trademark registrations for PIRELLI in a large number of countries since many decades, including in Turkey.
Based on the current record, the disputed domain name <turkpirelli.com> was registered on April 9, 2014 by the Respondent.
The Respondent seems to be an individual from Bursa, Turkey.
The Panel notes that at the time of the Decision, the disputed domain name was inactive and parked only.
According to the case file, the disputed domain name was together with 12 other domain names comprising the trademark PIRELLI already subject to administrative proceedings before the ADR Center of the Czech Arbitration Court (CAC), Case No. 101103. The panel of that case rejected the complaint without reaching the merits, particularly for the following procedural reason:
"The Panel finds that the present dispute has too loose connections with English to accept that the proceedings are conducted in this language, and rejects the complaint."
After that decision, all 13 domain names were unlocked by the respective registrar and deleted by the Respondent, except the disputed domain name subject to the present administrative proceeding. Given that the prior case was rejected purely on procedural grounds and no findings were reached as to the Policy elements, the Panel does not consider this case to be a refiled case.
5. Parties' Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant believes the disputed domain name is confusingly similar to the Complainant's PIRELLI trademark.
The Complainant argues that the only difference between the disputed domain name and the Complainant's trademark is that the disputed domain name additionally comprises the country indication "Turk" for or from Turkey. The Complainant is of the opinion that the addition of such country indication does not negate the confusing similarity with its PIRELLI trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its PIRELLI trademark. The Complainant further alleges that the Respondent has never used and does not intend to use its trademarks in connection with a bona fide offering of goods and services and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. In addition, the Complainant contends that the Respondent has not been commonly known by the disputed domain name.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. It is of the opinion that the Respondent must have been aware of the PIRELLI trademark when registering the disputed domain name. Furthermore, it argues that no use by the Respondent in good faith can exist, as the disputed domain name corresponds to a well-known trademark like PIRELLI.
The Respondent did not reply to the Complainant's 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 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 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.
6.1. Language of the Proceeding
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 English.
Although the language of the Registration Agreement is Turkish, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish. The Complainant has submitted the Complaint in both English and Turkish and requested English to be the language of the proceeding, while the Respondent failed to raise any objection or otherwise provide any comments in reply to the Center's communication with regard to the language of the proceedings, although communicated in English and Turkish.
In its decision on the language of the proceedings, the Panel particularly considers the fact that the Respondent deleted twelve domain names comprising the Complainant's trademark PIRELLI shortly after the dismissal of the Complaint in the above mentioned CAC ADR Case No. 101103, except the disputed domain name in question. In view of the Panel, this behavior strongly indicates that this is a typical cybersquatting case, which the UDRP was designed to time and cost efficiently stop. In any case, the Panel notes that the Respondent was notified of the Complaint in Turkish and given the opportunity to respond in Turkish, but preferred not to oppose to the Complainant's language request or reply to the Complainant's contentions.
In light of the above, the Panel comes to the conclusion that the Respondent will not be prejudiced by a decision being rendered in English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in the widely-known mark PIRELLI by a large number of national, regional and international trademark registrations for many decades.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant's registered PIRELLI trademark, as it fully incorporates the Complainant's trademark. The mere addition of the country indication "Turk" for Turkey or Turkish does not serve to distinguish the disputed domain name from the Complainant's registered PIRELLI trademark. It is even likely that the addition of the country indication may even confuse users into believing that the disputed domain name has been registered by the Complainant especially for the Turkish market.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.
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 shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant's PIRELLI trademark in the disputed domain name.
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 name according to the Policy, paragraph 4(a)(ii) and 4(c).
In the absence of a response, the Respondent failed to indicate that he is commonly known by the disputed domain name. The Respondent has also 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 name.
All in all, the Panel is of the opinion that the case file does not contain any indication that would support the assessment of a right or legitimate interest of the Respondent in the disputed domain name.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel believes that the Respondent must have been aware of the Complainant's well-known PIRELLI trademark when it registered the disputed domain name on April 9, 2014. At the date of registration of the disputed domain name, the Complainant's PIRELLI trademark was already recognized worldwide, including in Turkey, for many decades.
Further, it is the Panel's view that the Respondent has registered and is using the disputed domain name to gain illegitimate benefit by creating the disputed domain name – either by putting pressure on the Complainant to pay money for the transfer of the disputed domain name or by misleading Internet users, who are searching for official information on the Complainant in Turkey.
The fact that the Respondent preferred not to reply to the Complaint and apparently deleted 12 of his other domain names comprising the Complainant's PIRELLI trademark prior to these administrative proceedings further indicates bad faith registration and use.
As it has been the case in several previous UDRP cases, the fact that the disputed domain name is currently inactive does not prevent a finding of bad faith use and does not change the Panel's views in this respect.
All in all, the Panel is convinced that the above demonstrates a typical cybersquatting case, which the UDRP was designed to stop.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant has also 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 name <turkpirelli.com> be transferred to the Complainant.
Date: January 2, 2017