WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Quintaz B.V., Hoooked B.V. v. Domain Admin, whoisprotection.biz / Ahmet Erbey, Ertek Ithalat Ihracat Tekstil Sanayi ve Tic. Ltd. Sti.
Case No. D2016-2635
1. The Parties
The Complainants are Quintaz B.V. and Hoooked B.V. of Den Haag, Netherlands, represented by The Legal Group, Netherlands.
The Respondent is Domain Admin, whoisprotection.biz of Istanbul, Turkey / Ahmet Erbey, Ertek Ithalat Ihracat Tekstil Sanayi ve Tic. Ltd. Sti. of Tekirdag, Turkey, represented by Osman Eler, Turkey.
2. The Domain Name and Registrar
The disputed domain name <spagettiyarn.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 December 29, 2016. On December 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 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 January 17, 2017 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 January 19, 2017.
Pursuant to the Complaint submitted in English and the registrar verification dated December 30, 2016 stating that Turkish is the language of the registration agreement of the disputed domain name; on January 17, 2017, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On January 19, 2017, the Complainant submitted its request for English to be the language of the proceeding; whereas on January 22, 2017, the Respondent submitted its request in Turkish for Turkish to be 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 of the Complaint, and the proceedings commenced on January 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2017. Upon request of the Respondent submitted on February 10, 2017, the Response due date was extended until February 16, 2017, in accordance with paragraph 5(b) of the Rules. The Response in Turkish was filed with the Center on February 16, 2017.
The Center appointed Kaya Köklü as the sole panelist in this matter on February 23, 2017. 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 composed of two companies, a holding company, which owns all intellectual property rights and another company, which exploits these rights (both of them jointly referred to as “the Complainant” in the following decision).
The Complainant is a leading provider of textile yarns, which are made from recycled materials. It is present in 30 countries with a specific distribution network for its products.
It is the owner of the word mark ZPAGETTI and the figurative trademark HOOOKED ZPAGETTI, which are both registered in various jurisdictions. For instance, the Complainant is the owner of the European Union (“EU”) Trademark Registration No. 010071959 for ZPAGETTI, registered on October 25, 2011 and No. 009598566 for HOOOKED ZPAGETTI, registered on May 20, 2011. On January 3, 2017, the Complainant also applied for International trademark protection (Application No. 010071959) for Russia and Turkey on the basis of its registered EU word mark ZPAGETTI. At the time of the decision, the application was according to the current record still pending. The registered and applied trademarks of the Complainant claim protection for yarns and threads for textile use.
The Complainant also operates various domain names, which fully include the trademark ZPAGETTI, such as <zpagetti.com> and <zpagettiyarn.com>.
The Respondent is composed of a domain name privacy registration service from Istanbul and a company from Tekirdag, Turkey (both of them jointly referred to as “the Respondent” in the following decision).
Like the Complainant, the Respondent is also active in the field of providing textile yarns. It is the owner of the Turkish word and figurative trademark SPAGETTI YARN, Registration No. 2014 50342, registered on May 6, 2015. It actively uses the disputed domain name to offer and sell yarns and threads made of recycled materials. Users of the website have the choice between two language versions, namely Turkish and English.
On its website linked to the disputed domain name, the Respondent adopted the Complainant’s product names in an identical or at least highly similar way (cf. Annex 8 to the Complaint), e.g., “Ribbon” (Respondent) vs. “RibbonXL” (Complainant), “Barbante” (Respondent) vs. “Eco Barbante” (Complainant) or “Medium Spagetti Yarn” (Respondent) vs. “Medium Zpagetti Yarn” (Complainant).
As evidenced in the Complaint (cf. Annex 7 to the Complaint), the Respondent also uses source codes for its website, which are at least partly copied from the Complainant’s website. These source codes contain parts in Dutch language, which are used by the Complainant and apparently have no active function for the Respondent’s website, particularly not in the Dutch language.
In March 2013, the Respondent approached the Complainant by email communication and asked if the Respondent could become a supplier for the Complainant in Turkey (cf. Annex 12 to the amended Complaint), however the Parties never reached an agreement in this regard. On December 19, 2016, the Complainant asked the Respondent to cease and desist from trademark infringement (cf. Annex 11 to the Complaint), without achieving the requested outcome.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant believes the disputed domain name is confusingly similar to its ZPAGETTI and HOOOKED ZPAGETTI trademarks.
The Complainant argues that the main difference between the disputed domain name and the Complainant’s trademarks is that the disputed domain name additionally comprises the descriptive term “yarn” and uses an “s” for “spagetti” instead of a “z” for ZPAGETTI. The Complainant is of the opinion that these differences are marginal and do not negate the confusing similarity with its ZPAGETTI and HOOOKED ZPAGETTI trademarks.
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 it has never granted a permission or license to the Respondent to use its ZPAGETTI or HOOOKED ZPAGETTI trademark. The Complainant further alleges that the Respondent has never used and does not intend to use its trademark in connection with a bona fide offering of goods and services or any other legitimate interest.
Quite the opposite, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant believes that the Respondent was fully aware of the Complainant’s trademarks, when registering the disputed domain name. The Complainant is further of the opinion that the Respondent apparently tries to mislead Internet users who are searching for yarn products of the Complainant and to gain illegitimate benefits by jeopardizing the goodwill of the ZPAGETTI trademark.
The Respondent requests the denial of the Complaint.
It argues that “Spagetti” has become a descriptive term for yarns with no distinctiveness.
Furthermore, the Respondent argues that the Complainant so far has no registered trademark rights in Turkey. Quite the opposite, the Respondent argues to have a right to use the disputed domain name as it owns registered trademark rights for SPAGETTI YARN in Turkey since 2014.
The Respondent asserts to actively use the disputed domain name since July 2016.
It also asserts that it had more than 30.000 visitors on the website linked to the disputed domain name between end of November 2016 and end of January 2017.
It alleges that it has never sold products out of Turkey and that the English language version of its website linked to the disputed domain name is only part of an acquired package, which is intended to be used in future in relation to another trademark and website specifically for customers outside of Turkey.
The Respondent admits that there are visitors of the website from outside of Turkey, but assumes that a large part of these persons may still be Turkish citizens using VPN clients and virtual access points in third countries.
Additionally, the Respondent argues that the Complainant is not yet active in Turkey and that the disputed domain name was registered nearly a year before the Complainant registered its domain name <zpagettiyarn.com>.
In the Respondent’s view, a transfer of the disputed domain name would be unjustified as the Complainant would illegitimately benefit from the alleged goodwill and acquired customer base of the Respondent in Turkey.
All in all, the Respondent sees no legal basis for the transfer of the disputed domain name. Quite the opposite, the Respondent believes that the Complainant acts in bad faith and hence, requests a finding on Reverse Domain Name Hijacking (“RDNH”).
6. Discussion and Findings
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 the English language.
Although the language of the registration agreement of the disputed domain name is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request costly and time consuming translations of documents by the Complainant. The Panel notes that the Respondent was given the opportunity to respond in Turkish, what it did. Furthermore, the Panel is convinced that the Respondent is capable to read and understand the English language, particularly as it provides an English language version of its online shop linked to the disputed domain name. Additionally, the Respondent himself provided email communication with its customers in English language. Finally, it was the Respondent who approached the Complainant in March 2013 by email in English enquiring the options for a supplier agreement.
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
According to paragraphs 14(a) and 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 Complainant 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 bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not 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. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the ZPAGETTI trademark of the Complainant.
To begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in ZPAGETTI. As evidenced in the Complaint, the Complainant is the owner of various ZPAGETTI and HOOOKED ZPAGETI trademarks, which are registered in some jurisdictions since at least 2011.
In contrast to the Respondent’s assertions, the Panel is of the opinion that the Complainant’s ZPAGETTI trademark has at least average distinctiveness in relation to the protected goods. In view of the Panel, the ZPAGETTI trademark is well suitable to distinguish the Complainant’s yarn and other textile products from yarn and textile products of other companies.
In light of this pre-assessment, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s ZPAGETTI trademark as it nearly fully incorporates the respective mark. It differs only by the replacement of the letter “z” by the phonetically similar letter “s” and the addition of the descriptive term “yarn”. The Panel believes that replacing the letter “z” by “s” might be a targeted misspelling of the Complainant’s trademark. In any case, it is the view of the Panel that these minor differences are negligible and do not create a new distinctiveness of the disputed domain name in relation to the Complainant’s registered trademark ZPAGETTI. Quite the opposite, the Panel believes that the nearly full inclusion of the Complainant’s trademark in combination with the descriptive term “yarn”, which is directly linked to its provided products, even enhances the false impression that the disputed domain name is officially related to the Complainant. The Panel concludes that the disputed domain name is likely to confuse Internet users into their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
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 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 prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license to use the Complainant’s ZPAEGTTI trademark in a confusingly similar way within the disputed domain name.
The Panel finds that, based on the Panel’s findings and discussion below and further under the third element, that the Respondent does not have a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
The Respondent’s assertion that the term “spagetti" is used descriptively within the disputed domain name is in the Panel’s view not substantiated. The Complainant and the Respondent are using respectively the marks ZPAGETTI and SPAGETTI YARN, and seemingly not in a descriptive way. The Panel further notes that it is the Respondent itself who asserts to have obtained registered trademark rights in Turkey for SPAGETTI YARN.
Even though a finding of respondent’s rights and legitimate interests may be found in certain circumstances where the respondent has obtained a trademark registration for a disputed domain name, here the Respondent’s argument to have a right to use the disputed domain name on the basis of its own Turkish trademark registration of 2015 for SPAGETTI YARN does not convince the Panel due to the Panel’s findings below.
The Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or provide any other evidence of a right or legitimate interest in the disputed domain name. Particularly, the Panel finds on the available record that the disputed domain name was intended to be used in connection with offering of goods or services in bad faith, merely with clear intention to freeride on the Complainant’s goodwill. The Respondent was aware of the Complainant’s ZPAGETTI trademark, its business and its yarn products long before registering and using the disputed domain name. There is no indication in the case file that the Respondent made any effort to avoid confusion between its products and the ones of the Complainant. Quite the contrary, the Panel believes that the Respondent deliberately has chosen the disputed domain name (and the respective product names listed on the Respondent’s website) in order to cause confusion with the Complainant’s trademark and its products among Internet users. Even if the Respondent may have spent efforts and money into its business, the Panel does not see sufficient basis for assessing a bona fide offering of goods or services by the Respondent.
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 deliberately attempted to create a likelihood of confusion among Internet users and/or to freeride on the goodwill of the Complainant’s ZPAGETTI trademark, apparently for illegitimate commercial gain, particularly for the following reasons.
The Panel is of the opinion that the Respondent was aware of the Complainant’s ZPAGETTI trademark when it registered the disputed domain name on June 4, 2014. At the date of registration of the disputed domain name, the Respondent knew of the Complainant’s ZPAGETTI trademark and its yarn and textile products. This has been evidenced by the Complainant by way of providing email communications between the parties from 2013.
The Panel further believes that the Respondent has chosen a confusingly similar misspelling of the Complainant’s trademark in the disputed domain name in order to intentionally attract and mislead Internet users in their believing that the disputed domain name is somehow affiliated with the Complainant. Deliberately using a confusingly similar misspelling of this nature is, in the Panel’s view, strong indication of bad faith.
Additionally, the Respondent’s website linked to the disputed domain name indicates the Respondent’s bad faith. It is in view of the Panel not a surprise that the Respondent alleges to have significant numbers of visitors only a few weeks after going online with its website linked to the disputed domain name. The Panel finds that the visitor figures provided by the Respondent may rather rely on the notoriety of the Complainant’s trademark and mislead Internet users who were searching for products of the Complainant.
The Panel further finds that, copying the source code from the official website of the Complainant, at least in part, into the website linked to the disputed domain name additionally indicates the Respondent’s bad faith intentions.
Bad faith registration and use is also indicated by the fact that the Respondent is using product names for its yarns which are identical or at least highly similar to the product names of the Complainant.
All in all, the Panel concludes that the disputed domain name was registered and is 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.
D. Reverse Domain Name Hijacking (RDNH)
As to the findings above, the Panel does not see any legal and actual basis to assess a RDNH by the Complainant.
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 <spagettiyarn.com> be transferred to the Complainant.
Date: March 3, 2017