WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
XT Holdings Group and Ofer Investments Limited v. Alper Gunay / Domain Admin, C/O ID#10760, Privacy Protection Service Inc d/b/a PrivacyProtect.org
Case No. D2017-0400
1. The Parties
The Complainants are XT Holdings Group of Haifa, Israel and Ofer Investments Limited of Herzliya, Israel, represented by Osborne Clarke, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Alper Gunay of Istanbul, Turkey / Domain Admin, C/O ID#10760, Privacy Protection Service Inc d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Names and Registrar
The disputed domain names <ofergayrimenkul.com> and <ofergroup.com> are registered with FBS Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2017. On March 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same date 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 March 2, 2017.
Pursuant to the Complaint submitted in English and the registrar verification dated March 1, 2017 stating that Turkish is the language of the registration agreement of the disputed domain names; on March 1, 2017, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On March 2, 2017, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not reply to the Complainant’s request or to the Center’s communication.
The Complainant filed a corrected amended Complaint on March 15, 2017.
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 March 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2017.
In response, the Respondent sent two emails to the Center on April 7, 2017.
The Center appointed Kaya Köklü as the sole panelist in this matter on April 11, 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.
On April 12, 2017, the Complainant filed a supplementary submission with the Center. In response to the Complainant’s additional filing, the Respondent filed a supplementary submission on April 12, 2017. In response to the Respondent’s additional filing, the Complainant filed another supplementary submission on April 13, 2017. In response to the Complainant’s additional supplementary submission, the Respondent also filed another supplemental filing on April 14, 2017. The Center acknowledged receipt of the supplemental filings from both parties, and forwarded them to the Panel for its consideration.
4. Factual Background
The Complainant is composed of two companies, a holding company, which was founded in 1956 and is active inter alia in the fields of shipping, media and communication, real estate and aviation, and another company with close relations to the first Complainant, which is also mainly active in the field of real estate investments.
The first Complainant is the owner of the Israeli Trademark Registration no. 210855 for OFER, registered on April 14, 2010 in class 35.
The second Complainant is a family business run by members of the family Ofer.
The Panel finds it appropriate to refer to both Complainants jointly as the “Complainant” in the present decision.
The Respondent is composed of domain name privacy registration services and an individual person apparently from Istanbul, Turkey (both of them jointly referred to as the “Respondent” in the present decision).
The disputed domain name <ofergayrimenkul.com> was created on January 6, 2016. The disputed domain name <ofergroup.com> was first created on February 24, 2005 and, based on the current record, subsequently transferred to the Respondent around September 2016.
At the time of the decision, the disputed domain name <ofergayrimenkul.com> did not resolve to an active website. The disputed domain name <ofergroup.com> resolved to a website allegedly promoting “Orchestral Fantastic Ejeutante Reccords”. According to the case file, the provided content on the website linked to the disputed domain name <ofergroup.com> was not active at the time of filing of the Complaint with the Center.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain names.
The Complainant is of the opinion that the disputed domain names are confusingly similar to the Complainant’s OFER trademark.
The Complainant argues that the main difference between the disputed domain names and the Complainant’s trademark is that the disputed domain names additionally comprise generic terms, namely “gayrimenkul” (which means “real estate” in the Turkish language) and “group”. The Complainant is of the opinion that the addition of these terms does not negate the confusing similarity with its OFER 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 Complainant has never granted a permission or license to the Respondent to use its OFER 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 or services or any other legitimate interest.
Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant believes that the Respondent must have known the Complainant’s companies and its OFER trademark, when registering the disputed domain names. The Complainant is further of the opinion that the Respondent apparently tries to attract Internet users for illegitimate and even illegal purposes.
Further contentions are made in the Complaint and the provided annexes.
The Respondent did not formally reply to the Complainant’s contentions.
However, after expiration of the deadline for a Response, the Center received several email communications in the Turkish language.
Concerning the disputed domain name <ofergayrimenkul.com>, the Respondent indicated that he would be prepared to cancel it or transfer it to the Complainant.
With regard to the disputed domain name <ofergroup.com>, the Respondent however argues that he is an artist, who has allegedly just started to use the disputed domain name with friends who are interested in music education. The Respondent believes that this noncommercial kind of use does not endanger any rights of the Complainant. Although, the Respondent did not file a formal request, he made clear that he is not willing to transfer this disputed domain name voluntarily.
6. Discussion and Findings
6.1. Language of the administrative proceedings
Although the language of the registration agreement of the disputed domain names 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, while the Respondent failed to raise any objection to the Center’s communication regarding the language of the proceedings, although communicated in English and Turkish. The Panel notes that the Respondent was given the opportunity to respond in Turkish, but preferred not to oppose to the Complainant’s language request or even reply to the Complaint within the deadline. Furthermore, the received emails by the Respondent indicate that the Respondent can fully read and understand the English language.
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. Consideration of Supplemental Filings
The Panel notes that the Center received additional submissions by the Complainant and the Respondent respectively on April 12, 13 and 14, 2017.
Paragraph 12 of the Rules unambiguously provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. There is, however, no provision in the Rules for a party to file an additional submission without an explicit request by the Panel. This is because, under the expedited process provided under the Policy and Rules, each party is given one opportunity to put forward all the material on which it wishes to rely and is expected to do so.
The Panel follows the reasoning of the panel in Viz Communications, Inc. v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905, that it is appropriate to consider the circumstances of each case before deciding whether or not to admit additional submissions.
In this case, given the fact that both parties filed Supplemental Filings and after consideration of them, the Panel decided to take both the Complainant’s and the Respondent’s additional submissions into account.
6.3. Substantive Issues
According to paragraph 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 formal 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 names are identical or confusingly similar to the trademarks 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. Identical or Confusingly Similar
To begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in the mark OFER. As evidenced in the Complaint, the Complainant is the owner of a trademark registration, which was registered in 2010 in Israel.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s OFER trademark. Each disputed domain name fully incorporates the mark OFER as the distinctive first part of the domain name. In view of the Panel, the addition of dictionary terms like “gayrimenkul” (which means “real estate” in Turkish language) or “group” does not create a new distinctiveness of the disputed domain names in relation to the Complainant’s registered trademark. The Panel moreover concludes that the disputed domain names are likely to confuse Internet users into their believing that the disputed domain names are affiliated or endorsed by the Complainant or that the use of the disputed domain names are 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 names 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 OFER trademark in a confusingly similar way within the disputed domain names.
The Panel finds that, based on its 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 names according to the Policy, paragraphs 4(a)(ii) and 4(c).
In its email communications to the Center, the Respondent does not even assert to have rights or legitimate interests in the disputed domain name <ofergayrimenkul.com>. In fact, he has offered to cancel this domain name or transfer it to the Complainant.
With regard to the disputed domain name <ofergroup.com>, the Respondent asserts that he is an artist and is using this disputed domain name for the sole purpose of providing educational services in the field of music. The Respondent, however, did not submit any documentation or evidence that would support its assertion. The Panel finds this allegation not convincing and believes that this is a self-serving assertion only, particularly as the respective website went online the very same day when the Complaint was filed with the Center.
All in all, 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 names. Particularly, the Panel finds on the available record that the disputed domain names were intended to be used in bad faith and the clear intention to freeride on the Complainant’s goodwill. The Respondent was apparently well aware of the Complainant’s trademark, its business and its provided services before registering and using the disputed domain names in 2016. The Panel is convinced that the Respondent deliberately has chosen the disputed domain names in order to cause confusion with the Complainant’s trademark and its company among Internet users. There is even an indication in the case file, that the disputed domain names were somehow involved in fraudulent activities in the past. In any case, 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 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 OFER trademark, apparently for illegitimate commercial gain and/or to disrupt the Complainant’s business, particularly for the following reasons.
At the date of registration of the disputed domain names by the Respondent in 2016, the Respondent was obviously well aware of the Complainant’s company group and its OFER trademark.
The Panel further can in fact not conceive of any good faith registration and use of the disputed domain names, in particular as they both are closely related to the Complainant and its core business fields. In particular, the disputed domain name <ofergayrimenkul.com> apparently targets the Complainant’s real estate business. With regard to the disputed domain name <ofergroup.com>, the Panel does not believe the Respondent’s allegation that this domain name was registered only for the purpose to establish a noncommercial music education platform, in particular not as the Respondent was not able to provide any convincing argument why he had also registered the disputed domain name <ofergayrimenkul.com>. Other than the apparently just recently established website linked to the disputed domain name <ofergroup.com>, the Respondent did not provide any convincing document or indication to support his allegations. The Panel rather believes that all the Respondent’s allegations are unfounded and purely self-serving only and that the website was probably established for the purpose of misleading the Panel only.
The Panel also notes that the Respondent used various privacy services when creating the disputed domain names. Although privacy services might be legitimate in many cases, it is for the Panel difficult to see in the present case why the Respondent should need to protect his identity except to make it difficult for the Complainant to protect its trademark rights. The Panel rather believes that the choice of the disputed domain names (which fully incorporate the Complainant’s trademark OFER), rather indicates that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant.
In view of the Panel, all this strongly indicates the Respondent’s bad faith intentions to gain illegitimate benefit by freeriding on the goodwill of the Complainant’s trademark and misleading Internet users and/or to disrupt the Complainant’s business.
The fact that the disputed domain name <ofergayrimenkul.com> is currently inactive does not change the Panel’s findings in this respect.
Taking all facts of the case into consideration, the Panel believes 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 <ofergayrimenkul.com> and <ofergroup.com> be transferred to the Complainant.
Date: April 25, 2017