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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mr. Yunus Gönen v. WhoiGuard Protected, WhoisGuard, Inc. / Nguyen Cong Thinh, Y5cafe

Case No. D2020-2780

1. The Parties

The Complainant is Mr. Yunus Gönen, Turkey, represented by June Intellectual Property Services Inc., Turkey.

The Respondent is WhoiGuard Protected, WhoisGuard, Inc., Panama / Nguyen Cong Thinh, Y5cafe, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <seeklogo.net> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2020. On October 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 22, 2020, 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.

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 November 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2020.

The Center appointed Nick J. Gardner as the sole panelist in this matter on December 9, 2020. 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 Turkish individual who runs a website (the “Complainant’s Website”) linked to the domain name <seeklogo.com>. That website in effect provides a database of corporate logos and it provides free downloadable vector brand images of the logos in question. It has operated since 2008.

The Complainant owns a Turkish registered trademark no. 71248886 for the term “seeklogo”, which was registered on January 31, 2017 (the “SEEKLOGO trademark”).

The Disputed Domain Name was created on October 2, 2013. The filed evidence shows it has been linked to a website (the “Respondent’s Website”) providing a service substantially the same as that offered by the Complainant. The Respondent’s Website is also similar in terms of layout and stylistic elements to the Complainant’s Website.

The Respondent was previously the second respondent in Mr. Yunus Gönen v. Yuan Yuan, WhoisGuard Protected / Nguyen Cong Thinh WIPO Case No. D2019-0615. That case concerned the Disputed Domain Name and two other domain names. In that case the panel considered it was not appropriate to proceed as a consolidated case and instead proceeded only in respect of the other two domain names. The panel indicated the Complainant was at liberty to file a further complaint as to the Disputed Domain Name. The present Complaint is that complaint.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows.

The Disputed Domain Name is identical to the SEEKLOGO Trademark.

The Respondent has no rights or legitimate interests in the term “seeklogo”.

The Disputed Domain Name was registered and is being used in bad faith. The Complainant says the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website. The Respondent has unfairly tried to take advantage of the SEEKLOGO trademark. The Respondent could have chosen a domain name adequately reflecting both the object and independent nature of its site, but did not do so. It says it is not possible to imagine any plausible future active use of the Disputed Domain Name by the Respondent that would be legitimate.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Preliminary Matters

The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

The Panel also notes this is a case where one Respondent (“WhoisGuard Protected, WhoisGuard, Inc.”) appears to be a privacy or proxy service.

The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:

“Panel discretion

In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.

Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”

In the present case, the Panel considers the substantive Respondent to be Nguyen Cong Thinh and references to the Respondent are to that person.

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Complainant has rights in the SEEKLOGO trademark. The Panel finds the Disputed Domain Name is identical to this trademark. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.net”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use SEEKLOGO trademark. The Complainant has prior rights in the SEEKLOGO trademark, which precede the Respondent’s acquisition of the Disputed Domain Name. See also Section C below, regarding the look and feel of the Parties’ respective websites. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).

The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

In the present circumstances the Panel concludes that the Respondent chose to register a domain name comprising the Complainant’s trademark in order to facilitate a business where the Respondent’s website could provide a service directly competing with that offered by the Complainant. Manifestly, the choice of name was not coincidental.

Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:

(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 web site or location or of a product or service on your web site or location.

In the present circumstances the Panel agrees with the Complainant that factor (iv) applies as the Respondent was seeking to attract customers who were confused by creating a likelihood of confusion with the complainant's SEEKLOGO trademark. The fact the Respondent’s Website is in design terms similar to the Complainant’s Website is further evidence of an intention to confuse. In the words of the Complaint: “The Respondent uses the same layout and designs for its website. In addition, each website contains the same visual effect. The chosen design scheme on each webpage creates an aesthetic feeling to a third party that the webpages are related.” This, coupled with the composition of the Disputed Domain Name itself, leads to the conclusion, unrebutted, that the Respondent sought to trade on the Complainant’s business.

The Panel also notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists.

Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.

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 Name <seeklogo.net> be transferred to the Complainant

Nick J. Gardner
Sole Panelist
Date: December 23, 2020

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