WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eclisse S.r.L. v. Domain Admin, Privatewhois Biz, Yahya Kemal Yildirim

Case No. D2020-3155

1. The Parties

The Complainant is Eclisse S.r.L., Italy, represented by Dr. Modiano & Associati S.p.A., Italy.

The Respondents are Domain Admin, Privatewhois Biz, Turkey and Yahya Kemal Yildirim, Turkey.

2. The Domain Names and Registrars

The disputed domain name <eclisse.club> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com, the disputed domain name <ieclisse.com> is registered with Reg2C.com Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2020. On November 25, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On November 25 and 30, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 1, 2020, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 1, 2020.

The Registrar Reg2C.com Inc. also indicated that the language of the Registration Agreement was Turkish. The Center sent an email communication in English and Turkish, to the Parties on December 1, 2020, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of the proceeding, a Complaint translated into Turkish, or a request for English to be the language of the proceeding. The Complainant filed a request for English to be the language of the proceeding on December 2, 2020. The Respondents did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on December 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 29, 2020.

The Center appointed Kaya Köklü as the sole panelist in this matter on January 14, 2021. 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 company with its registered seat in Italy. It is active in the field of sliding and pocket doors, door frames, and locksmiths’ goods of metal, particularly for sliding doors and windows. It has 30 representative offices and 2,000 distributors in Italy as well as 10 subsidiaries worldwide.

The Complainant is the owner of the ECLISSE trademark. For example, the Complainant is the registered owner of the International Trademark Registration No. 576896, registered on October 22, 1991, covering trademark protection in many jurisdictions (including Turkey) for “door frames and locksmiths’ goods of metal, particularly for sliding doors and windows” (Annex 8c to the Complaint).

The Complainant further holds and operates various domain names like <eclisse.it>, <eclisse.us> and <eclisseworld.com>.

The Respondents are composed of an individual person from Turkey (“first Respondent”) and a domain name privacy service (“second Respondent”). Whenever appropriate, both Respondents are jointly referred to in the following as the “Respondent”.

The disputed domain names <eclisse.club> and <ieclisse.com> were registered on January 28, 2020 and October 31, 2019, respectively. Both disputed domain names resolve to identical websites of a Turkish company, offering sliding doors and services under the brand “Royal”.

There was a collaboration and supply agreement between the Complainant and a Turkish company from January 23, 2012 until March 11, 2016 (Annexes 10 and 11 to the Complaint). At that time, the Turkish company was represented by the first Respondent. After the termination of the collaboration agreement between the Complainant and the Turkish company, the first Respondent registered various domain names, all of them incorporating the Complainant’s ECLISSE trademark. For this reason, the first Respondent has already been subject to a previous UDRP decision decided in favour of the Complainant, transferring the respective domain names. Eclisse S.r.L. v. Ugur Kemal Yildirim / Yahya Kemal Yildirim, WIPO Case No. D2019-0694.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain names.

The Complainant is of the opinion that the disputed domain name <eclisse.club> is identical and <ieclisse.com> is confusingly similar to its ECLISSE trademark.

Furthermore, the Complainant argues that the Respondents have no rights or legitimate interests in respect of the disputed domain names.

Finally, it is argued that the Respondents have registered and are using the disputed domain names in bad faith. The Complainant particularly argues that the Respondents were well aware of the Complainant’s trademark, when registering and using the disputed domain names.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

The Panel determines in accordance with the Complainant’s 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 the disputed domain name <ieclisse.com> is Turkish (with the other disputed domain name having an English registration agreement), 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 Center’s communication about the language of the proceedings, even though communicated in Turkish and in English. The Panel particularly notes that the Respondent was given the opportunity to respond in Turkish and that this opportunity remained unused.

Consequently, the Panel is convinced that the Respondents will not be prejudiced by a decision being rendered in English.

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 Complainant has 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. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the WIPO Overview 3.0.

A. Identical or Confusingly Similar

The Panel notes that the Complainant has satisfied the threshold requirement of having trademark rights in ECLISSE. As evidenced in the Complaint, the Complainant is the owner of various ECLISSE trademarks, which, according to the case file (Annex 8 to the Complaint) are registered in various jurisdictions, including in Turkey, where the first Respondent is located.

The disputed domain name <eclisse.club> is, in view of the Panel, identical to the Complainant’s ECLISSE trademark as it incorporates the Complainant’s trademark in its entirety without any additions or amendments.

Further, the disputed domain name <ieclisse.com> is, in view of the Panel, confusingly similar to the Complainant’s ECLISSE trademark as it fully incorporates the Complainant’s respective trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other letters or terms would generally not prevent a finding of confusing similarity. The mere addition of the letter “i” within the disputed domain names does not, in view of the Panel, serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s ECLISSE trademark.

The generic Top-Level Domains (“gTLDs”) “.com” and “.club” may, as a general principle, be disregarded when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP decisions concerning the use of a gTLD within a domain name. See V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054).

In view of the finding above, the Panel is satisfied that the Complainant has 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 Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name 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 Complainant has 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 Complainant has provided uncontested prima facie evidence that the Respondent has no rights (particularly no license) or legitimate interests to use the Complainant’s trademark ECLISSE.

There is also no indication in the current record that the Respondent is commonly known by the disputed domain names. In the absence of a response, the Respondent has also 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 names.

In addition, the Panel notes that also the nature of the disputed domain names carries the risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0.

As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In the Panel’s view, the Respondent has registered and is using the disputed domain names in bad faith.

The Panel is convinced that the Respondent must have had the Complainant’s trade name and its ECLISSE trademark 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 a misleading association with the Complainant and its sliding door products.

After having reviewed 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 target the Complainant’s business and generate traffic by misleading Internet users to its own website with its competing business. There is no need to discuss in detail that registering a domain name comprising a competitor’s company name and trademark constitutes bad faith under the Policy. It is obvious to the Panel that the Respondent in a bad faith attitude tries to trade-off the goodwill and reputation of the Complainant’s trademark rights for illegitimate commercial purposes, even though the collaboration between the parties was terminated well before the registration date of the disputed domain names.

Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop.

The Panel therefore concludes that the disputed domain name was registered and is used in bad faith and that the Complainant has 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 <eclisse.club> and <ieclisse.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: January 28, 2021