WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yildiz Holding Anonim Sirketi v. Registration Private, Domains By Proxy, LLC / Shashank Srivastava
Case No. D2019-0565
1. The Parties
The Complainant is Yildiz Holding Anonim Sirketi of Istanbul, Turkey, internally represented.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Shashank Srivastava of Bahraich, India, self-represented.
2. The Domain Name and Registrar
The disputed domain name <ulkerfinancialgroup.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2019. On March 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 15, 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 March 22, 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 amended Complaint on March 25, 2019. Following a further request by the Center in light of information provided by the Registrar, the Complainant submitted a second amended Complaint on March 26, 2019. On March 27, 2019, the Complainant submitted a further amendment to the Complaint following a request for clarification.
The Center verified that the Complaint together with the amended Complaints and the amendments (hereinafter referred altogether as 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 March 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2019. The Center received numerous emails from the Respondent in the period between March 22, and May 7, 2019. In light of the numerous emails submitted by the Respondent prior to April 18, 2019, the Center notified the Parties of the Commencement of Panel Appointment Process on April 23, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 7, 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.
On May 22, 2019, the Center received an email from a gmail account in the name of “ulker group”.
4. Factual Background
The Complainant is based in Turkey where it manufactures a range of candies, biscuits or other confectionery under a number of brands, the main one of which is ULKER.
The Complainant has numerous registrations in a number of countries around the world for the trademark ULKER. Amongst others, these include Turkish Registered Trademark No. 105547 for ULKER (stylized). This trademark has been entered in the Turkish Patent Institute’s List of Well-known Trademarks since 1996.
According to the Registrar, the Respondent registered the disputed domain name on July 14, 2018.
The disputed domain name resolves to a website which appears to provide financial planning or management services.
The disputed domain name has also been used for an email account which was used to contact a business associate of the Complainant to set up a meeting in Milan, Italy, and to communicate with the Center in connection with this proceeding. The email correspondence to the associate requested the associate’s price list and held out the potential for an order worth millions of Euros. When the associate requested some details about the Respondent and its business, mentioning that it was aware of the Complainant, the email in reply stated:
“same member family. now confirm meeting or stop to waste time.”
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Respondent’s Identity
Paragraph 1 of the Rules defines the Respondent as “the holder of a domain-name registration against which a complaint is initiated”.
The first named Respondent is the Registrar’s privacy service. The Registrar has confirmed that the disputed domain name is registered through that service by the second named Respondent.
The Center has received emails from the second named Respondent stating he is merely a “webmaster” and requesting that communications not be sent to him.
The Center has also received emails from the email account “[…]@ulkerfinancialgroup.com” in response to the Complaint.
It is not clear if the second named Respondent and the person using the “[...]@ulkerfinancialgroup.com” email account are the same or different persons. By their terms, they appear to be different persons. If they are different persons, it appears that the second named Respondent holds the disputed domain name on behalf of the person(s) using the email account. In any event, it is clear from the communications received by the Center that any defence to the Complaint turns on the position of the person(s) operating the email account. Accordingly, unless it becomes necessary to distinguish between them, the Panel will refer to the Respondent to encompass both the second named Respondent and, if different, the person(s) using the email account.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of numerous registered trademarks for a stylised version of the term ULKER, both alone and in combination with other terms such as ULKER GOLDEN, ULKER YUPO and ULKER TEMPO.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top‑Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy, e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.
The figurative element of the trademarks is very slight so it is appropriate to treat them for the purposes of this comparison as the textual element alone. See WIPO Overview 3.0, section 1.10.
Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s trademark and the descriptive expression “financial group”.
Consistently with WIPO Overview 3.0, section 1.8, therefore, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this element and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the second named Respondent’s name. There is no evidence that the Respondent owns any trademark for, or including, “ULKER”. The Respondent is not using the disputed domain name without intent for commercial gain.
The Respondent states that there are many people with the name “Ulker”. The disputed domain name was available (the Respondent says “free”) and so it registered it. On the basis of “first come, first serve”, therefore, it is entitled to it.
First, there is nothing about the website to which the disputed domain name resolves which is related specifically to people with the name “Ulker”, except for the business name “Ulker Financial Groups”. There is no information before the Panel about how or when the person(s) using the email account adopted the name Ulker Financial Groups.
The email from the account to the Complainant’s business associate stated that the principal(s) of the business were from the same family as the founders of the Complainant’s business. The Complainant specifically denies that. It is plain, however, that the Respondent was well aware of the Complainant and its trademark when the disputed domain name was registered.
The nature of the inquiry and the tone of the emails to the Complainant’s business associate do not sit comfortably with a business purporting to be a financial planner or manager and advisory service.
Further, the Complainant states that it has investigated the address at the Trump Towers in Istanbul provided on the website to which the disputed domain name resolves and used in the emails from the account. According to the Complainant, no such person is known at that address. Despite the many emails which have been sent from the Ulker Financial Groups’ email account to the Center in connection with this proceeding, the Respondent has not disputed that statement.
Indeed, the text appearing in the boxes under the three steps on the “About us” webpage, amongst other things referencing saving “£1,000s each year” appears to replicate the text appearing on the Beginner’s guide to managing your money provided by the Money Advice Service in the United Kingdom. 1
In these circumstances, the Panel is unable to find that the Respondent is using the disputed domain name in connection with a good faith offering of goods or services or that the disputed domain name is derived from a name by which the Respondent is commonly known.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of a term for its significance as a trademark owned by (usually) the complainant.
The Respondent claims to be based in Turkey where the Complainant’s trademark has been recognised officially by the Turkish Patent Institute as a well-known trademark within the meaning of article 6bis(1) of the Paris Convention. That status has been accorded to the Complainant’s trademark since 1996. In addition, as outlined in section 5C above, the Respondent claimed to be from the same family as the Complainant’s founders. So, it seems clear that the Respondent was well aware of the Complainant’s trademark when it registered the disputed domain name in July 2018.
The Complainant contends that the Respondent has used the disputed domain name in correspondence with the Complainant’s business associate to misrepresent that the Respondent is associated with the Complainant. In its communications with the Center, the Respondent (and, if different, “ulker group”) stated it was ready and willing to sell the disputed domain name for EUR 100,000. It also appeared to threaten the Complainant with some sort of “hacker attack” if its demands were not met.
This conduct, in circumstances where the Respondent has been found not to have rights or legitimate interests in the disputed domain name, constitutes use of the disputed domain name in bad faith under the Policy.
Therefore, the Panel finds the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has established all three requirements under 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, <ulkerfinancialgroup.com>, be transferred to the Complainant.
Warwick A Rothnie
Date: May 21, 2019