WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Al Fakher International Co. v. Whoisguard Protected, Whoisguard, Inc. / Harun Kaptan
Case No. D2017-1780
1. The Parties
The Complainant is Al Fakher International Co. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Esin Attorney Partnership, Turkey.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama City, Panama / Harun Kaptan of Istanbul, Turkey, self-represented.
2. The Domain Name and Registrar
The disputed domain name <alfakherturkey.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 14, 2017. On September 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2017, 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 September 18, 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 September 18, 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 September 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2017. The Respondent was granted the automatic four calendar day extension for Response under paragraph 5(b) of the Rules and thus, the due date for Response was extended to October 16, 2017. The Respondent submitted on September 28, 2017 an informal communication in Turkish but did not submit any formal response. Accordingly, the Center notified the Parties that it would proceed to the Panel appointment.
The Center appointed Kaya Köklü as the sole panelist in this matter on October 19, 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 a company from the Cayman Islands, which is active in the tobacco industry since 1999. It markets its tobacco products in more than 55 countries throughout the world.
It owns word and figurative trademark registrations for AL FAKHER in many jurisdictions throughout the world, including Turkey. For instance, the Complainant is the owner of the Turkish Trademark AL FAKHER with Registration No. 2006 38296, applied for on September 4, 2006 and registered on July 31, 2007 in classes 16, 21 and 34, covering protection, inter alia, for tobacco products.
According to the current record, the disputed domain name <alfakherturkey.com> was registered on December 10, 2013.
The Respondent is composed of a domain name privacy registration service and an individual person apparently from Istanbul, Turkey (both of them jointly referred to as "the Respondent" in the following decision).
At the time of the decision, the disputed domain name resolved to a webpage with the following notice: "AL FAKHER TURKEY – WEB SITEMIZ BAKIM AŞAMASINDADIR. ANLAYIŞINIZ IÇIN TEŞEKKÜR EDERIZ", which is Turkish and means in English language: "AL FAKHER TURKEY – OUR WEBSITE IS CURRENTLY UNDER CONSTRUCTION. THANK YOU FOR YOUR UNDERSTANDING". However, the screenshots of the website linked to the disputed domain name provided in Annex 7 to the Complaint and on page 10 and 11 of the Complaint itself reveal that at least until mid September 2017 the Respondent not only prominently used the Complainant's AL FAKHER trademark in various forms, but also offered allegedly "100% genuine" products of the Complainant on its Turkish-language website.
5. Parties' Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant's trademark AL FAKHER.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name and registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
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 trademarks 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, Third Edition ("WIPO Overview 3.0") and, where appropriate, will decide consistent with the WIPO Overview 3.0.
6.1. Language of the Proceeding
The Respondent requested for Turkish to be the language of the present administrative proceeding.
As a general principle, the language of the proceeding shall be the language of the registration agreement, unless the Parties agree otherwise.
In the present case, the language of the registration agreement is English and there is no mutual consent provided by the Parties for Turkish to be the language of the proceedings.
Bearing this in mind, the Panel does not see a necessity or sufficient justification to deviate from the above mentioned general principle of language determination and to comply with the Respondent's request.
The Panel rather believes that the Respondent will not be prejudiced by a decision rendered in the English language, noting that as a courtesy the Center informed the Respondent in English and Turkish about his opportunity to provide its submissions even in Turkish. The Respondent, however, did not make use of this opportunity and preferred to remain silent on the substance of the present case.
Hence, the Panel determines in accordance with the Rules, paragraph 11(a), that the language of these administrative proceedings shall be English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the AL FAKHER trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in AL FAKHER. As evidenced in the Complaint, the Complainant is the owner of a large number of trademarks comprising the brand AL FAKHER, which are registered in many jurisdictions around the world, including Turkey.
Although not identical, the disputed domain name fully incorporates the Complainant's AL FAKHER trademark.
The disputed domain name differs from the Complainant's AL FAKHER trademark only by the addition of the country name "Turkey". In the Panel's view, the addition of "Turkey" as a country name does not negate the confusing similarity between the Complainant's trademark AL FAKHER and the disputed domain name. The Panel finds that this additional incorporation is purely descriptive and does not distinguish the disputed domain name from the Complainant's AL FAKHER trademark.
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 proving a respondent lacks rights or legitimate interests may often result in the impossible task of proving a negative, requiring information that is often 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 of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order 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.
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).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
In the absence of a formal Response, there is no indication in the current record that the Respondent 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 any other evidence of a right or legitimate interest in the disputed domain name. Also, the Panel does not see any indication in the record for assessing a bona fide offering of goods or services by the Respondent.
On the contrary, the offered products under the disputed domain name indicate that the Respondent tries to gain illegitimate commercial benefit by using a domain name which fully incorporates the Complainant's trademark AL FAKHER.
In this regard, the Panel is convinced that the Respondent cannot be assessed as a legitimate reseller or distributor of the Complainant's products, even if the offered products are genuine (which is in view of the Panel doubtful). This is because the criteria as set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 are apparently not fulfilled in the present case. The Panel particularly notes that the Respondent's website which is linked to the disputed domain name does not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant, thus creating the false impression that the Respondent is official and authorised dealer for the Complainant's products or even the Complainant itself. In view of the Panel, this takes the Respondent out of the Oki Data safe harbour for purposes of the second element.
Hence, the Panel finds that the Complainant has also 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 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. The Panel is of the opinion that the Respondent deliberately attempted to confuse Internet users in relation to the Complainant's AL FAKHER trademark, apparently for illegitimate purposes, and to free ride on the Complainant's goodwill.
The Panel is particularly convinced that the Respondent was well aware of the Complainant's AL FAKHER trademark when it registered the disputed domain name. At the date of registration of the disputed domain name, the Complainant's trademark was already registered and recognized for many years, including in Turkey. The fact that the Respondent offered the Complainant's products for sale on its website linked to the disputed domain name further indicates that the Respondent must have been fully aware of the Complainant's trademark rights when registering the disputed domain name.
Additionally, the Panel notes that the Respondent used a privacy service when registering the disputed domain name. 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 its identity except to make it difficult for the Complainant to protect its trademark against him. The Panel rather believes that the choice of the disputed domain name (which fully incorporates the Complainant's trademark) and the content as well as the design of the Respondent's corresponding website 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.
Furthermore, the Panel finds that the Respondent's failure to respond to the substance of the Complaint further supports the conclusion that it has registered and is using the disputed domain name in bad faith.
The fact that the disputed domain name seems to be currently "under construction", does not change the Panel's view in this respect.
Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop.
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.
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 <alfakherturkey.com> be transferred to the Complainant.
Date: October 30, 2017