WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nutricia International B.V. and N.V. Nutricia v. Hasan Bilgi Gumus

Case No. D2018-0253

1. The Parties

The Complainants are Nutricia International B.V. of Luchthaven Schiphol, Netherlands and N.V. Nutricia of Zoetermeer, Netherlands (together referred to as the “Complainants”), represented by Dreyfus & associés, France.

The Respondent is Hasan Bilgi Gumus of Antalya, Turkey.

2. The Domain Names and Registrars

The disputed domain names <aptamilmama.com>, <aptamil1.com>, <bebelacmama.com>, <prematil.com>, <conformil.com>, <milupamama.net> and <preaptamil.com> are registered with Nics Telekomünikasyon Ticaret Ltd. Sti. The disputed domain names <aptamilar.com> and <aptamilconformil.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com. The disputed domain name <aptamilha.com> is registered with Domain.com, LLC. The disputed domain name <pregomin.com> is registered with Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji (cumulatively referred to as the “Registrars”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2018. On February 6, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 6, 7 and 13, 2018, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.

Pursuant to the Complaint submitted in English and the registrar verifications sent by the Registrars Nics Telekomünikasyon Ticaret Ltd. Sti. and Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji stating that Turkish is the language of the registration agreements of the relevant disputed domain names, on February 13, 2018, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On February 14, 2018, 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 February 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2018.

The Center appointed Kaya Köklü as the sole panelist in this matter on March 26, 2018. 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, both based in the Netherlands and belonging to the same group. They are active in the field of developing and providing age-appropriate specialized nutrition, such as starting milks for babies.

The Complainants are the owner of a large number of trademarks, which are registered in various jurisdictions, such as:

BEBELAC, International Trademark Registration No. 766285, registered on July 9, 2001, for goods in classes 5, 29, 30 and 32;

PREMATIL, International Trademark Registration No. 874288, registered on December 2, 2005, for goods in class 5;

PREGOMIN, International Trademark Registration No. 500107, registered on February 5, 1986, for goods in class 5;

CONFORMIL, European Union Trademark No. 001247600, registered on October 25, 2000, for goods in classes 5 and 29;

MILUPA, International Trademark Registration No. 1049523, registered on August 23, 2010, for goods in classes 5 and 29;

APTAMIL, European Union Trademark No. 007203813, registered on October 21, 2010, for goods in classes 5, 29, 30 and 32;

APTAMIL 1, International Trademark Registration No. 521571, registered on February 17, 1988, for goods in class 5;

APTAMIL HA, International Trademark Registration No. 633114, registered on February 13, 1995, for goods in classes 5 and 29.

Furthermore, the Complainants own and operate various domain names, including their trademarks, such as:

<aptamil.com> registered on October 26, 1999;

<aptaclub.co.uk> registered on February 20, 2012;

<milupa.ch> registered on November 5, 1996.

The creation dates of the disputed domain names are as follows:

<aptamilconformil.com>, registered on February 18, 2016,

<aptamilar.com>, registered on July 20, 2016,

<milupamama.net>, registered on June 3, 2012,

<aptamilmama.com>, registered on May 18, 2009,

<aptamil1.com>, registered on June 18, 2011,

<preaptamil.com>, registered on May 14, 2009,

<bebelacmama.com>, registered on May 18, 2009,

<prematil.com>, registered on May 21, 2009,

<conformil.com>, registered on May 18, 2009,

<pregomin.com>, registered on April 29, 2012,

<aptamilha.com>, registered on April 24, 2017.

The Respondent is an individual from Antalya, Turkey.

According to the provided documents by the Complainant, the Respondent is using or at least used most of the disputed domain names for an online shop offering the Complainants’ nutrition products in Turkish language. The provided screenshots show that the Respondent prominently uses the Complainants’ trademarks to promote nutrition products without publishing any visible disclaimer describing the non-existent relationship between the Parties.

As evidenced in the Complaint (cf. Annex 30 and 31), the disputed domain name <aptamil1.com> resolves to a website where the domain name is offered for sale.

At the time of the Decision, some of the disputed domain names were not active anymore.

According to the uncontested information provided in the case file, the Respondent did not reply to a letter previously sent by the Complainants on January 8, 2018, asking for a voluntary deletion of the disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainants request the transfer of the disputed domain names.

The Complainants are of the opinion that the disputed domain names are confusingly similar to their trademarks.

Furthermore, the Complainants argue that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainants believe that the Respondent was fully aware of the Complainants’ trademarks, when registering the disputed domain names. The Complainants are further of the opinion that the Respondent apparently tries to mislead Internet users and to gain illegitimate benefits by freeriding on the goodwill of the Complainants’ trademarks.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1. Procedural Issues

A. Language of the Proceeding

The Panel determines in accordance with the Complainants’ request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be English. Although the language of the registration agreement of some of the disputed domain names is Turkish (with the remaining disputed domain names having English registration agreements), the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Complaint or respond to the Center’s communication about the language of the proceedings, even though communicated in Turkish and in English. The Panel notes that the Respondent was given the opportunity to respond in Turkish. Consequently, the Panel is convinced that the Respondent will not be prejudiced by a Decision being rendered in English.

B. Consolidation of multiple complainants filing against a single respondent

Pursuant to paragraph 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, the consolidation of multiple complainants filing a joint complaint against a single respondent is subject to the discretion of the appointed panel.

In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, the appointed panel should take into account whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.

Having this in mind, the Panel notes that the Complainants in the present administrative proceeding are members of the same company group. Their Complaint is based on the same set of facts against the same Respondent. The Panel believes that it would be equitable and efficient to permit the consolidation.

Consequently, the Panel allows the Complainants to jointly proceed with their Complaint. The Panel will therefore, for the purpose of this decision, hereinafter refer to “the Complainants”, whenever appropriate.

6.2. 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 Complainants have 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. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A. Identical or Confusingly Similar

To begin with, the Panel confirms that the Complainants have satisfied the threshold requirement of having trademark rights in BEBELAC, PREMATIL, PREGOMIN, CONFORMIL, MILUPA, APTAMIL, APTAMIL 1 and APTAMIL HA. As evidenced in the Complaint, these trademarks are registered in many jurisdictions for many years, including in Turkey.

The Panel further finds that the following disputed domain names are identical to the Complainants’ trademarks as they comprise the Complainants’ trademarks in their entirety without any amendments or additions:

<aptamil1.com>,

<preaptamil.com>,

<prematil.com>,

<conformil.com>,

<pregomin.com>,

<aptamilha.com>.

With regard to the remaining disputed domain names below, the Panel finds that they are confusingly similar to the Complainants’ trademarks.

These confusingly similar disputed domain names fully incorporate at least one of the Complainants’ trademarks in its entirety. The addition of dictionary terms like “mama”, meaning “baby food” in Turkish, or “pre” or the combination with a second trademark of the Complainant does in view of the Panel not create a new distinctiveness of the disputed domain names in relation to the Complainants’ registered trademarks.

In view of the above, the Panel is satisfied that the Complainants have met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names.

While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainants are 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 names in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainants have satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain names according to the Policy, paragraphs 4(a)(ii) and 4(c).

In its Complaint, the Complainants have provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainants’ trademarks in a confusingly similar or even identical way within the disputed domain names.

There is also no indication in the current record that the Respondent is commonly known by the disputed domain names. Furthermore, the Respondent has 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.

The Panel particularly notes that the Respondent’s websites linked to the disputed domain names do not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainants, thus creating the false impression that the Respondent might be an official and authorized agent for the Complainants’ products in Turkey, particularly due to the prominent use of the Complainants’ trademarks. In view of the Panel, this takes the Respondent out of any conceivable safe harbour for purposes of the second element.

As a conclusion, the Panel finds that the Complainants have 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 names in bad faith.

The Panel notes the reputation and wide recognition of the Complainants’ trademarks, also in Turkey. The Panel is convinced that the Respondent must have had these involved trademarks in mind when registering the disputed domain names.

It even appears that the Respondent has registered the disputed domain names solely for the purpose of creating an association with the Complainants. After having reviewed the Complainants’ screenshot of the websites linked to the disputed domain names, the Panel is convinced that the Respondent has intentionally registered the disputed domain names in order to generate traffic to its own website. The Panel notes that the Respondent has not published any visible disclaimer on the website linked to the disputed domain name to explain that there is no existing relationship between the Respondent and the Complainants. Quite the opposite, the design of the website linked to the disputed domain names and the prominent use of the Complainants’ trademarks is sufficient evidence in view of the Panel that the Respondent intentionally tries to attract, for commercial or any other illegitimate gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of its website. In the Panel’s view, the Respondent is misrepresenting itself as the trademark owner without being entitled to do so.

Another strong indication for the Respondent’s bad faith intentions is in view of the Panel the Respondent’s attempt to sell the disputed domain name <aptamil1.com> (see Annex 30 and 31).

Furthermore, the Panel finds that the Respondent’s failure to respond to the Complaint also supports the conclusion that it has registered and is using the disputed domain names in bad faith. The Panel believes that, if the Respondent did in fact have legitimate purposes in registering and using the disputed domain names, it would have probably responded.

In view of the Panel, all this strongly indicates the Respondent’s bad faith intentions to gain illegitimate benefit by freeriding on the notoriety and goodwill of the Complainants’ trademarks.

The fact that some of the disputed domain names are currently inactive does not change the Panel’s findings in this respect.

The Panel therefore concludes that the disputed domain names were registered and are used in bad faith and that the Complainants have also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

7. Decision

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 <aptamilmama.com>, <aptamil1.com>, <prematil.com>, <conformil.com>, <milupamama.net>, <preaptamil.com>, <aptamilar.com>, <aptamilconformil.com>, <aptamilha.com>, <pregomin.com> be transferred to the Complainant Nutricia International B.V. and the disputed domain name <bebelacmama.com> be transferred to the Complainant N.V. Nutricia.

Kaya Köklü
Sole Panelist
Date: April 4, 2018