WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toros Tarım Sanayi ve Ticaret Anonim Şirketi v. DOMAIN SALES DOMAIN SALES, DOMAIN SALES
Case No. D2021-1463
1. The Parties
The Complainant is Toros Tarım Sanayi ve Ticaret Anonim Şirketi, Turkey, represented by Gün & Partners., Turkey.
The Respondent is DOMAIN SALES DOMAIN SALES, DOMAIN SALES, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <torosgemi.com> (the “Domain Name”), 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 May 11, 2021. On May 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 11, 2021, 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 May 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2021.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 18, 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.
On June 18 and June 22, 2021, the Respondent sent two emails to the Center, which are referred to in Sections 5.B, 6.B and 6.C below.
4. Factual Background
The Complainant is a Turkish company, which was founded in 1974. It is a member of the Tefken Agri-Industry Group and is engaged primarily in the production of fertilizers. Another member company of the Tefken Agri-Industry Group is Toros Gemi Acenteliği ve Ticaret Anonim Şirketi, which was founded in 1988 and provides agency services for ships carrying raw materials for the Complainant’s fertilizer production and other commercial activities.
The Complainant is the registered proprietor of a number of Turkish trade mark registrations of or including a TOROS device mark. The device is of a shield featuring an upper case letter “T” with the name “TOROS” superimposed across the “T”. One such registration is Turkish trade mark registration no. 2005 52065 covering the shield device registered on December 1, 2006 (application filed December 2, 2005) for inter alia rope in class 22.
The Complainant operates a website connected to its <toros.com.tr> domain name, a domain name that it registered on June 30, 1997.
The Domain Name was registered on November 13, 2019 and is connected to a Sedo parking page indicating that the Domain Name is for sale at a price of USD 3,500.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its figurative TOROS registered trade marks; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.
The Respondent did not formally reply to the Complainant’s contentions, but sent an email to the Center on June 18, 2021 reading: “Hello, I object to this case. Plaintiff does not have a well-known brand named toros ship”, and sent a second email to the Center on June 22, 2021 reading: “Hello The appealing company’s Toros ship brand is only registered in Turkey and can purchase domains with the .com.tr extension. In order to win this case, they must apply for a well-known trademark. Therefore, I request that this case be closed and necessary decisions be taken.”
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The TOROS trade mark registration upon which the Complainant relies (see Section 4 above) is a figurative mark. Whether or not a figurative mark can form the basis for a complaint under the Policy depends upon the extent to which (if at all) the design elements of the mark “overtake the textual elements in prominence.” (Section 1.10 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In this case the name “toros” is the predominant element of the Complainant’s trade mark and by no means overtaken by the design elements of the mark. The Domain Name comprises the name “toros” followed by the Turkish word “gemi” (meaning “ship” in English) and the “.com” generic Top Level Domain (“gTLD”) identifier.
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The predominant feature of the Complainant’s registered trade mark is readily recognizable in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
For completeness, the Panel adds that the Respondent’s statement of the position as set out in the second of the Respondent’s emails (see Section 5.B above) is incorrect. There is no requirement for the Complainant “to apply for a well-known trademark” to succeed in this case. Proprietorship of the above-mentioned TOROS trade mark registration is sufficient for the purposes of this element of the Policy.
C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that it has no connection with the Respondent and has given the Respondent no permission to use the Complainant’s TOROS trade mark. The Complainant makes reference to the circumstances set out in paragraph 4(c) of the Policy, any of which if found by the Panel to be present shall demonstrate rights or legitimate interests for the purposes of this element of the Policy, and contends that none of them is applicable.
In the absence of any explanation from the Respondent, the Panel infers from the use that the Respondent is making of the Domain Name that the reason the Respondent registered the Domain Name was to sell it at a profit. As mentioned in Section 4 above, the Domain Name is connected to a Sedo parking page indicating that the Domain Name is for sale at a price of USD 3,500.
Registering domain names for the purpose of resale at a profit is of itself a legitimate activity and can give rise to legitimate interests for the purposes of paragraph 4(ii) of the Policy. However, such an activity will not give rise to legitimate interests where the respondent’s purpose in registering the disputed domain name was with a view to targeting the complainant.
The Domain Name comprises at the second level the name “toros” in combination with “gemi”, the Turkish word for “ship”. The use of the word “gemi” in both the Domain Name and the Respondent’s email to the Center of June 18, 2021 (see Section 5B above) makes clear that the Respondent is concerned with the Turkish language and that it is unnecessary for the Panel to consider other meanings of “toros” in other languages.
The Complainant has produced evidence to demonstrate that it is known in Turkey by the name, “Toros”, that its trade mark is well-known in Turkey in the field of agricultural fertilizers and that the group of companies of which it forms part includes a company involved in the provision of services to ships and whose name commences “Toros Gemi”. The Respondent’s sole response has been to assert that the Complainant “does not have a well-known brand named toros ship.”
The Panel is satisfied that the Complainant has made out a prima facie case under this element of the Policy, in other words a case calling for an answer from the Respondent.
The Respondent’s emails do not address the issue as to why the Respondent should be found to have any rights or legitimate interests in respect of the Domain Name. In the absence of a satisfactory answer to the Complainant’s contentions the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the Domain Name “in bad faith with an aim to obtain unfair benefits from the high reputation of TOROS Trademarks”. The Complainant cites paragraph 4(a)(iv) of the Policy stating: “… it is clear that by using the domain name, the Respondent has intentionally attempts [sic] to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website.”
The only evidence of any use of the Domain Name by the Respondent is as set out in Section 4 above, namely to connect it to a Sedo parking page indicating that the Domain Name is for sale at a price of USD 3,500.
The Panel believes that paragraph 4(b)(i) of the Policy provides a more appropriate basis for a finding of bad faith registration and use of the Domain Name: “circumstances indicating that [the respondent has] registered or [has] 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name.”
In the absence of any explanation from the Respondent the Panel finds that the Respondent registered the Domain Name, a Turkish language domain name, aware of the Complainant’s reputation and goodwill in Turkey and with a view to selling it to the Complainant or a competitor of the Complainant for USD 3,500, a sum likely to be well in excess of the Respondent’s out-of-pocket costs related to the Domain Name.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) 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, <torosgemi.com>, be transferred to the Complainant.
Date: June 23, 2021