WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VDA Verband der Automobilindustrie e.V. v. Ersin Erbas
Case No. D2019-1590
1. The Parties
The Complainant is VDA Verband der Automobilindustrie e.V., Germany, represented by KROHER‑STROBEL Rechts- und Patentanwalte PartmbB, Germany.
The Respondent is Ersin Erbas, Turkey.
2. The Domain Name and Registrar
The disputed domain name <adblueistanbul.com> (the “Domain Name”) is registered with Nics Telekomunikasyon A.S. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2019. On July 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 10, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 12, 2019. On July 17, 2019, the Center requested from the Respondent further clarification on the deficiency. On July 18, 2019, the Respondent submitted the clarification.
The Registrar also indicated that the language of the Registration Agreement was Turkish. The Center sent an email communication in English and Turkish to the Complainant on July 11, 2019, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into Turkish, or a request for English to be the language of proceeding. The Complainant filed a request for English to be the language of proceeding on July 12, 2019. No comment was received from the Respondent.
The Center verified that the Complaint together with the amendments 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 in English and Turkish, and the proceedings commenced on July 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2019. On July 26, 2019, the Center received an email communication in Turkish from the Respondent, in response to which it sent to the Parties an email regarding possible settlement on July 29, 2019. On July 31, 2019, the Center received further communication from the Respondent. On August 1, 2019, the Complainant requested suspension of the proceeding. On the same day, the proceeding was suspended until August 31, 2019, by the Center. On August 21, 2019, the Complainant requested the suspension period to be extended. Accordingly, the Center extended the suspension period to September 30, 2019. On September 27, 2019, the Complainant requested the reinstitution of the proceeding. On September 30, 2019, the proceeding was reinstituted and the due date to submit a response was extended to October 13, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it was proceeding to panel appointment on October 14, 2019.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on October 23, 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 is a German interest group i.e., the German Association of the Automotive Industry or “VDA” (Verband der Automobilindustrie e.V.) representing the German automobile industry for both automobile manufactures and automobile component suppliers.
The Complainant represents carmakers but also counts foreign suppliers and foreign-owned carmakers among its members.
The Complainant’s trademark ADBLUE relates to the requirements for reduction of nitrogen oxide emissions.
The Complainant is the holder of numerous trademarks for ADBLUE, registered for goods and services in classes 1, 4, 6, 7, 9, 12, 20, 35, 37, and 42 including the following:
- European Union registration No. 003945938 for ADBLUE (word) in classes 1, 4, 12, 37, and 42 (filed on July 22, 2004, and registered on February 6, 2006);
- European Union registration No. 008526717 for ADBLUE (word) in classes 6, 7, 9, 20, 35, and 42 (filed on September 3, 2009, and registered on March 8, 2010);
- International trademark registration No. 1042880 for ADBLUE (word) in classes 7, 9, 12, and 39 (registered on May 18, 2010);
- International trademark registration No. 811899 for ADBLUE (word) in class 1 (registered on August 8, 2003).
The Domain Name was registered on March 13, 2019, and does not currently resolve to an active website however; was resolving, at the time the Complaint was filed, to a website in Turksh linking to the Domain Name what seems to offer the Complainant’s products.
5. Parties’ Contentions
The Complainant has registered trademark rights in ADBLUE. The Complainant submits that the Domain Name is confusingly similar to the Complainant’s ADBLUE trademark. The Complainant states that the addition of the geographic term “Istanbul” reinforces the confusing similarity with the Complainant’s ADBLUE trademarks.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent is unable to demonstrate rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainant to make any use of its trademarks.
The Complainant argues that the Respondent had knowledge of the Complainant and its solutions at the time of registration of the Domain Name. The Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered ADBLUE trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on his website or location. It constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
6.1. Language of the Proceeding
Although the language of the Registration Agreement of the Domain Name is Turkish, the Panel determines in accordance with the Rules, paragraph 11(a) that the language of this administrative proceeding shall be English.
Noting the Complainant’s submission on the language of the proceeding and the Respondent’s fail to raise any objection with regard to the language of the proceeding, or to respond in any way to the Complaint.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Domain Name <adblueistanbul.com> contains the Complainant’s trademark ADBLUE with the geographic term “Istanbul”. The addition of this term does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The generic Top-Level Domain (“gTLD”) extension “.com” is generally not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the Domain Name.
Therefore, the Panel finds that the Domain Name is confusingly similar to the trademark ADBLUE in which the Complainant has rights, satisfying the condition of the Policy, paragraph 4(a)(i)
B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name.
It is clear that the Respondent has not demonstrated any bona fide offering of goods and services for its use of the Domain Name, nor has the Respondent shown that it has been commonly known by the Domain Name. Rather, the evidence of the Complainant suggests that the Respondent has used the Domain Name in an attempt to trade off the goodwill associated with the Complainant’s trademark.
The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the Domain Name or otherwise.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Taking into account the composition of the Domain Name and the Respondent’s use of the Domain Name, the Panel concludes that the Respondent was aware of the Complainant and its business when the Respondent registered the Domain Name.
The Respondent has attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. By reproducing the Complainant’s trademark in the Domain Name and on the web page, the Respondent’s website suggested the Complainant or an affiliated dealer as the source. This is supported by the Respondent’s offer of ADBLUE products on the website to which the Domain Name resolved.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of 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 Domain Name <adblueistanbul.com> be cancelled.
Dilek Ustun Ekdial
Date: November 8, 2019