WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Assa Abloy Entrance Systems AB v. Murat Kara
Case No. D2019-0122
1. The Parties
The Complainant is Assa Abloy Entrance Systems AB of Landskrona, Sweden, represented by Zacco Sweden AB, Sweden.
The Respondent is Murat Kara of Los Gatos, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <mockdoor.com> is registered with GKG.NET, Inc (formerly GK Group LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2019. On January 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2019, 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 29, 2019 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 amendment to the Complaint on January 29, 2019. On the same day, the Respondent sent an email to the Center asking for information regarding the present procedure.
The Center verified that the Complaint together with the amendment to 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 January 29, 2019. On February 4, 2019, the Respondent sent an email to the Center offering to transfer the disputed domain name to the Complaint in exchange for a donation to a humanitarian association. The Complainant wished for the proceedings to continue to the appointment of the Panel.
In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on February 19, 2019.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on February 25, 2019. 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 designs and installs large automatic doors such as aircraft hangar doors. The Complainant is based in Sweden, employs over 10,000 people, and had sales of EUR 2 billion in 2017. Its presence is international with authorised distributors and service technicians in more than 50 countries.
On June 3, 2016, the Complainant purchased the assets of the bankrupt Finnish design and engineering company “Mock Doors Oy” (hereafter, “Mock Doors”), which since 1990 had made large doors and fabric door systems for hangars and for shipyard use. The purchase included any possible trademark rights and the designation “Mock Doors”, and also the trade name “Mock Doors Ltd” and the domain names <mockdoors.fi> (registered in 1997) and <mockdoors.us>.
The Complainant holds the following trademarks or applications:
MOCKDOORS, with design, Turkish trademark, filed April 21, 2017, registered October 30, 2018, registration number 2017/36943, class 9;
MOCKDOORS, with design, Turkish trademark, filed April 21, 2017, registered August 8, 2018, registration number 2017/122952, classes 6, 7, 19;
MOCKDOORS, with design, applied for at the United States Patent and Trademark Office (“USPTO”), principal register, filed December 22, 2016, serial number 87278674, classes 6, 9, 19.
The constitution of the Respondent will be expanded upon below, but its business is the installation of large and in particular flexible hangar and similar doors. The disputed domain name was registered on November 29, 2016 and has resolved to a page that announced the liquidation of “The MOCK DOORS hangar door company”. The website invited clients of that company requiring service and maintenance to visit the website address of the “Shipyarddoor company”, which may or may not be a company per se, but will be referred to hereafter as “Shipyarddoor”.
The Shipyarddoor website at “www.shipyarddoor.com” provides a Turkish address and advertises large scale flexible doors and curtains.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Disregarding the generic Top-Level Domain (“gTLD”) “.com”, the only difference is the omission of the letter “s” from the disputed domain name, which should not amount to a distinguishing difference from the Complainant’s trademark. The disputed domain name is a confusing misspelling of the Complainant’s trademark, which remains clearly recognisable.
The Complainant also claims to have acquired rights in the unregistered trademark MOCK DOORS that pre-date the registration of the disputed domain name.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorised the use of its trademark by the Respondent, which has no business relationship with the Complainant and is not a dealer in the Complainant’s products.
The Complainant says that according to its research of United States registered company records, it is highly likely that the entity previously identified in the WhoIs record as the registrant organisation, i.e., Mock Door, of the United States, does not exist. The Complainant says it sent a cease and desist letter dated December 15, 2016 to the Turkish company Shipyarddoor, to which visitors to the disputed domain name were directed, and received a reply making clear that Shipyarddoor held the disputed domain name and was in a position to transfer it under certain conditions. The footer of the reply also provided the information that “Shipyarddoor® is registrited trade mark of IKS CONSTRUCTION GROUP COMPANY”.
On the basis of the foregoing, the Complainant contends that the Respondent cannot claim to be commonly known by a name corresponding to the disputed domain name. The Respondent is attempting to trade off the Complainant’s trademark and is not using the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant says that the Respondent cannot assert trademark rights of its own in MOCKDOOR. The company IKS Yapi Insaat Taahhüt Otomasyon Bilisim Sanayi Ve Ticaret Limited Sirketi, which the Complainant says appears to be a company connected to IKS Construction Group Company, filed a Turkish trademark application number 2016/102778 for MOCKDOOR and device on December 16, 2016. The application was successfully opposed by the Complainant and the application was furthermore declared by the Turkish Patent and Trademark Office to have been filed in bad faith. The rejection was upheld on appeal.
The Complainant says that in any case, the possession of a trademark, particularly if obtained to circumvent the application of Policy, would not automatically confer rights or legitimate interests in the disputed domain name upon the Respondent.
The Complainant says the disputed domain name was registered and is being used in bad faith. An exception should be made to the principle that a finding of bad faith is not generally made if the disputed domain name was registered prior to the registration of the Complainant’s trademark, because the circumstances here are extraordinary. According to information received from a lawyer acting on behalf of the estate of the bankrupt Mock Doors, Shipyarddoor made an unsuccessful offer for the estate in March 2016, being about 7 or 8 months prior to the registration of the disputed domain name. Consequently, Shipyarddoor was fully aware that Mock Doors and the associated rights were in the process of being acquired by a competitor in the industry.
The Complainant says the Turkish trademark application number 2016/102778 for MOCKDOOR was filed by the Respondent on December 16, 2016, being the day after the cease and desist letter was sent to the Respondent on December 15, 2016. The reply to the cease and desist letter, which came from Shipyarddoor / IKS Construction Group Company, claimed among other matters that the “mock door trademark and website is under protection of international trademark according to Madrid Convention”. The Complainant says that, as far as it is aware, the Respondent has not registered any trademarks through the Madrid Protocol system.
The Complainant says that the website to which the disputed domain name resolves, by referring Mock Doors clients who may require service or maintenance to the website “www.shipyarddoor.com”, has been registered primarily for the purpose of disrupting the business of a competitor. The Respondent’s website is framed against an extract from the website “www.mockdoors.us”, the purchase of which, including its content, by the Complainant was specifically recorded in the Bill of Sale for the estate of Mock Doors.
The Complainant says the Respondent offered to sell the disputed domain name to the Complainant for USD 58,500, and refers to the reply to its cease and desist letter. The reply asserts purported costs of almost USD 58,500 for the set up of the disputed domain name and website and asks for a donation to specified humanitarian relief companies in return for the disputed domain name.
The Complainant contends that the Respondent has intended to attract visitors by confusion with the Complainant’s trademark for commercial gain.
The Complaint has cited previous cases under the Policy that it considers to be supportive of its case.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not submit a formal reply to the Complainant’s contentions.
An informal email to the Center and to the Complainant from Shipyarddoor dated February 6, 2019, asked that an email sent previously should be taken as a formal answer to the Complaint. The following points may be summarised from the previous email, dated February 4, 2019:
- the disputed domain name was registered during negotiations for the purchase of the Mock Doors estate;
- the disputed domain name website cost Shipyarddoor almost USD 58,500 to set up; the company is built around integrity and morality, it meant no wrong, and in response to the cease and desist letter, was prepared to transfer the disputed domain name for a donation to nominated humanitarian relief organisations;
- Shipyarddoor would be prepared to go to court to preserve its right.
Later emails from Shipyarddoor essentially repeated the above points and intimation of court action in increasingly strong terms.
6. Discussion and Findings
A. Procedural Matters
Paragraph 1 of the Rules states that “the holder of a domain-name registration against which a complaint is initiated” is the Respondent. According to a WhoIs record supplied by the Complainant, the disputed domain name is registered with the following incomplete contact details: Registrant Organization: Mock Door; Registrant State/Province: 214; Registrant Country: US. The Registrar disclosed the registrant name to be Murat Kara with a California, United States street address and an email address at “[…]@iksyapi.com”. The Respondent is therefore appropriately identified in the Complaint for the purpose of this proceeding.
The Registrar also disclosed a billing contact with a street address in Turkey and an email address also at “[…]@iksyapi.com”. The first acknowledgement of receipt of the Complaint came from a lawyer “Responsible of IKS Yapi Law Depertment” with an email address also at “[…]@iksyapi.com”, dated January 29, 2019. The email of February 4, 2019 setting out the Respondent’s position and the expectation of a donation came from an email address at “[…]@shipyarddoor.com” and was copied to the “[…]@iksyapi.com” email addresses alluded to above. Notably, the same named individual who replied from “[…]@shipyarddoor.com” on February 4, 2019, replied from an “[…]@iksyapi.com" email address on February 7, 2019. The reply to the Complainant’s cease and desist letter provided the information that SHIPYARDDOOR is a registered trademark of IKS Construction Group Company. The rejected application for the trademark MOCKDOOR was filed in the name of IKS Yapi Insaat Taahhüt Otomasyon Bilisim Sanayi Ve Ticaret Limited Sirketi.
On the totality of the evidence, the Panel finds it inescapable that Mock Door, Murat Kara, Shipyarddoor, IKS Construction Group Company and IKS Yapi Insaat Taahhüt Otomasyon Bilisim Sanayi Ve Ticaret Limited Sirketi are so closely interrelated that references hereafter to the Respondent shall apply to any or all of these Parties interchangeably as appropriate.
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
B. Identical or Confusingly Similar
The Panel has perused the Complainant’s MOCKDOORS trademark registration evidence. A trademark application is insufficient and the pending application to the USPTO cannot be taken into account. The Complainant’s Turkish trademarks numbers 2017/36943 and 2017/122952, filed on April 21, 2017, are recorded as having been registered on October 30, 2018 and August 8, 2018, respectively. Paragraph 4(a)(i) of the Policy is expressed in the present tense and is not concerned with the fact that the disputed domain name was registered on the prior date of November 29, 2016. The Panel is satisfied that the Complainant has rights in the trademark MOCKDOORS.
The disputed domain name <mockdoor.com>, disregarding the gTLD “.com”, differs from the Complainant’s trademark solely by the omission of the terminal letter “s”, being expressed in the singular rather than the plural, and is found to be confusingly similar to the Complainant’s trademark. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has asserted prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name, is not authorised to use the Complainant’s trademark, and has no business relationship with the Complainant.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Although the Respondent has provided no formal Response, the disputed domain name resolves to a website that implies that former clients of Mock Doors could need servicing and maintenance of their doors, which Shipyarddoors would have the facilities to provide.
In and of itself, an offer to provide servicing to the clients of a dissolved supplier could in certain circumstances be a bona fide business activity. In the prevailing circumstances, however, the Complainant became the owner of the assets of the former Mock Doors by an agreement dated June 3, 2016. The Bill of Sale, produced in part in evidence, specifically included the transfer to the Complainant of the following: “Rights to business name ‘Mock Doors Oy’ and any possible trademark rights in relation to the business "Mock Doors Oy" and designation "Mock Doors", as well as, rights to the domain names “www.mockdoors.fi” and “www.mockdoors.us”. Included are also all rights possessed by the Estate to the contents of these webpages”. The Respondent’s registration of the disputed domain name, and its application for a MOCKDOOR trademark, happened about six months later.
In acquiring the assets of Mock Doors, the Complainant acquired the right to use any Mock Doors trademark. In fact, there is no evidence that Mock Doors had a registered trademark. Whether the company name Mock Doors constituted an unregistered trademark depends on matters such as the company’s duration and history, scale and reputation. According to the Complainant’s statements and evidence, Mock Doors built more than 200 large fabric shipyard and aircraft hangar doors since 1990. The Mock Doors website at “www.mockdoors.us”, then belonging to Mock Doors USA Inc., stated in 2016 that it had supplied large vertical lift fabric doors since 1982, had delivered over 1000 doors, and also designed and built jet engine test cells. Photographs on a Mock Doors Ltd website show its large shipyard doors installed in Germany, Canada and Iceland, and a large aircraft hangar door in France.
Without the benefit of accounts, it is nevertheless clear that Mock Doors was an engineering company of considerable scale and international presence with a history of some decades. The Panel finds sufficient evidence, for the purposes of this proceeding, that Mock Doors had unregistered rights in the corresponding trademark, which rights now belong to the Complainant, well pre-dating the registration of the disputed domain name.
In offering to provide servicing and maintenance facilities to former Mock Doors clients, the Respondent has adopted the disputed domain name, which has been found to be confusingly similar to the Complainant’s apparently unregistered MOCK DOORS trademark. Accordingly the Respondent cannot sustain a case that its use of the disputed domain name for the provision of the relevant services was legitimate. There is no evidence that the Respondent has been commonly known by the disputed domain name or that its use has been fair or noncommercial. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The screen capture of the website to which the disputed domain name has resolved reports that Mock Doors has ceased trading, and displays among other things, the invitation “The Shipyarddoor [link] company ready to solve client of Mock Door service and maintanance problem...” and “If you have any difficulty to repair and service for old mock door hangar door system, Please dont hestiate to contact with us our world wide well trained dealer web and our unlimited spare part stock...”. The website is signed prominently below with “SHIPYARDDOOR PVC FABRIC DOOR SYSTEMS” and the link “www.shipyarddoor.com”. The links lead directly to the Shipyarddoor website, which advertises an extensive range of large hangar, shipyard and other specialised doors.
The text block of the Respondent’s website is superimposed on a faded extract from the Complainant’s website “www.mockdoors.us” that includes the Complainant’s MOCKDOORS trademark and device and two other references to Mock Doors.
On the evidence, the Respondent’s intention is found to be an attempt to attract former clients of Mock Doors to the website of the disputed domain name by confusion with the Complainant’s trademark, in the expectation that at least some visitors will follow the link to “www.shipyarddoor.com” and then deal with the Respondent in place of the Complainant. The Respondent’s conduct is found to amount to an intention to attract Internet users for commercial gain by confusion within the meaning of paragraph 4(b)(iv) of the Policy, and further found likely to be disruptive to the business of the Respondent’s competitor, the Complainant, within the contemplation of paragraph 4(b)(iii) of the Policy. On the evidence and on the balance of probabilities, the Panel finds the disputed domain name to have been registered and used in bad faith under 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 <mockdoor.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: March 5, 2019