WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Türkiye'nin Otomobili Girişim Grubu Sanayi Ve Ticaret Anonim Şirketi and TOGG Europe GmbH v. Papyrus Verlag

Case No. DEU2021-0020

1. The Parties

The Complainants are Türkiye'nin Otomobili Girişim Grubu Sanayi Ve Ticaret Anonim Şirketi, Turkey (the “First Complainant”) and TOGG Europe GmbH, Germany (the “Second Complainant”). The Complainants are referred to collectively as the “Complainant”.

The Respondent is Papyrus Verlag, Germany, internally-represented.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <togg.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is 1&1 IONOS SE.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2021. On June 14, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On June 21, 2021, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 24, 2021. In accordance with the ADR Rules, Paragraph B(3)(a), the due date for Response was July 24, 2021. One Response and one amended Response were filed with the Center on July 1, 2021. In reply to two notifications by the Center that the Response was administratively deficient, the Respondent filed a second amended Response on July 12, 2021.

The Center verified that the Response together with the amended Response and second amended Response satisfied the formal requirements of the ADR Rules and the Supplemental Rules.

The Center appointed Jane Seager as the sole panelist in this matter on July 22, 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 ADR Rules, Paragraph B(5).

4. Factual Background

Incorporated on June 28, 2018, the First Complainant is a Turkish automotive company, specialized in the development of electric vehicles. For use in connection with its production of electric vehicles, the Complainant is the owner of a number of trademarks, including the following:

- Turkish Trademark Registration No. 2018 99812, TOGG TÜRKİYE'NİN OTOMOBİLİ GİRİŞİM GRUBU (semi-figurative), registered on March 8, 2019;
- Turkish Trademark Registration No. 2018 99818, TOGG TURKISH AUTOMOBILE INITIATIVE GROUP (semi-figurative), registered on March 8, 2019;
- Turkish Trademark Registration No. 2019 133793, TOGG (and design), registered on September 4, 2020;
- Turkish Trademark Registration No. 2019 136466, TOGG, registered on December 2, 2020;
- European Union Trade Mark No. 1473795, TOGG TÜRKIYE'NIN OTOMOBILI GIRISIM GRUBU (semi-figurative), registered on February 11, 2019; and
- European Union Trade Mark No. 018212709, TOGG (semi-figurative), registered on July 2, 2020.

The Complainant is also the registrant of the domain name <togg.com.tr>, registered on July 16, 2018, from which it operates its corporate website.

The disputed domain name was registered on November 5, 2019. The disputed domain name resolves to a parking page displaying sponsored links to various goods and services. The web page to which the disputed domain name resolves includes a link stating “Buy this domain”, under which it states “The owner of togg.eu is offering it for sale for an asking price of 19000 EUR!” Upon clicking on the link, Internet users are redirected to “www.sedo.com”, where the disputed domain name is listed for sale. The description on Sedo.com listing states “TOGG Lithium Ions, the future is electric!”

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the TOGG trademark. The Complainant submits that the disputed domain name is identical to its TOGG trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant notes that the Respondent is offering the disputed domain name for sale for EUR 19,000, and argues that this is evidence that the Respondent is attempting to capitalize on the valuable reputation and goodwill associated with the Complainant’s TOGG trademark. The Complainant asserts that the Respondent is not commonly known by the disputed domain name, having acquired no trademark rights in “togg”. The Complainant further submits that the Respondent is not making a legitimate and non-commercial or fair use of the disputed domain name.

The Complainant submits that the disputed domain name was registered in bad faith. The Complainant notes that the disputed domain name has not been used since its registration, and asserts that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant, who is the owner of the TOGG trademark. The Complainant submits that its TOGG trademarks have acquired worldwide reputation, inferring that the Respondent knew of the Complainant’s trademark at the time of registering the disputed domain name. The Complainant notes that its earliest trademark application was filed on November 7, 2018, and although the Complainant’s brand was officially launched on December 27, 2019, the Complainant had already acquired reputation in the TOGG brand since its incorporation on June 28, 2018. The Complainant asserts that its TOGG trademarks had appeared in the press before and extensively after the official brand launch on December 27, 2019.

The Complainant requests transfer of the disputed domain name.

B. Respondent

The Respondent requests that the Panel deny the remedies requested by the Complainant.

The Respondent submits that it registered the disputed domain name in November 2019, at which time “TOGG” was not an official brand of the Complainant. The Respondent submits that at that time, the official brand of the Complainant’s cars was to be decided at a later date. The Respondent asserts that the Complainant’s intention to use the brand “TOGG” was announced via Twitter on July 18, 2020, and in the media on August 7, 2020. The Respondent denies any bad faith, as the Complainant’s trademark TOGG was announced months after the Respondent’s registration of the disputed domain name.

6. Discussion and Findings

6.1. Procedural Matter: Consolidation of the Complainant

Neither the Commission Regulation (EC) No. 874/2004 (the “Regulation”), nor the ADR Rules expressly contemplates the possibility of an ADR complaint filed jointly by multiple complainants.

Prior panels, making reference to analogous prior decisions rendered under the similar Uniform Domain Name Dispute Resolution Policy (“UDRP”), have held that in certain circumstances, multiple complainants may be justified in jointly bringing an ADR complaint against a single respondent.¹ See in this regard WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.11.1.

The Second Complainant is a wholly-owned German subsidiary of the First Complainant. In light of the nature of the corporate relationship between the two entities, the Panel considers that both entities have a common grievance against the Respondent. Particularly in the absence of any objection on the matter of consolidation of the Complainant, the Panel accepts the Complaint as filed by multiple Complainants. See Skyscanner Limited and ExperienceOn Ventures S.L. v. Rehman Abdur, WIPO Case No. DEU2021-0006, and cases cited therein.

Unless explicitly stated otherwise, both Türkiye'nin Otomobili Girişim Grubu Sanayi Ve Ticaret Anonim Şirketi and TOGG Europe GmbH are referred to jointly as the “Complainant”.

6.2. Substantive Matters

In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of Paragraph B(11)(d)(1) of the ADR Rules:

(i) the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a Member State and/or European Union law and; either

(ii) the disputed domain name has been registered by the Respondent without rights or legitimate interests in the name; or

(iii) the disputed domain name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law

The Panel finds that the Complainant has established rights in the trademark TOGG, including a registered European Union Trade Mark, the registration details of which are provided in the factual-background section above.

The disputed domain name comprises the Complainant’s TOGG trademark in its entirety, without addition or alteration, under the country code Top-Level Domain (“ccTLD”) “.eu”. The Panel finds that the Complainant’s TOGG trademark is immediately recognizable in the disputed domain name. The ccTLD “.eu” may be disregarded; see Disney Enterprises, Inc. and The Walt Disney Company Limited v. James West, Travel West, WIPO Case No. DEU2020-0011.

The Panel finds the disputed domain name to be identical to the Complainant’s TOGG trademark. The Complainant has satisfied the requirements of Paragraph B(11)(d)(1)(i) of the ADR Rules.

B. Rights or Legitimate Interests

There is no relationship between the Parties. The Complainant has not provided any authorization for the Respondent to make use of its TOGG trademark, in a domain name or otherwise. To the Panel’s knowledge, there is no apparent descriptive meaning that can be ascribed to the disputed domain name, in English, German, or Turkish (the Complainant states it to be an acronym of its group).

In the circumstances of the present case, the Panel finds that the Respondent’s use of the disputed domain name to resolve to a parking page displaying sponsored links, and the listing of the disputed domain name for sale for EUR 19,000, does not amount to a bona fide offering of goods or services, as contemplated by Paragraph B(11)(e)(1) of the ADR Rules. Rather, as explained in further detail in the element below, the Panel finds that the Respondent is more likely than not to have had knowledge of the Complainant at the time of registering the disputed domain name, and did so with a view to capitalizing on the reputation and goodwill associated with the Complainant’s TOGG brand. The Panel further finds that the Respondent is not commonly known by the disputed domain name pursuant to Paragraph B(11)(e)(2) of the ADR Rules, nor is the Respondent making a legitimate and noncommercial or fair use of the disputed domain name under Paragraph B(11)(e)(3) of the ADR Rules.

Based on the Complainant’s assertions, as set out in detail above, the Panel finds that the Complainant has established a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Having considered the Respondent’s assertions and supporting evidence, the Panel finds, on balance, that the Respondent has failed to rebut the Complainant’s prima facie case. The Panel therefore finds that the Complainant has satisfied the requirements of Paragraph B(11)(d)(1)(ii) of the ADR Rules.

C. Registered or Used in Bad Faith

The First Complainant, was incorporated on June 28, 2018. The Complainant’s TOGG trademark is an acronym of the words “Türkiye'nin Otomobili Girişim Grubu”. Notwithstanding the official launch of the TOGG brand of cars on December 27, 2019, the Complainant has provided evidence of its public-facing use of the TOGG brand in connection with its corporate activities, dating from as early as March 2019. In addition, the Complainant went on to apply for and secure trademark registrations whose leading and dominant feature consists of “TOGG”, also dating from March 2019. The Panel finds the Respondent’s claim that the TOGG brand was adopted by the Complainant in July 2020 to be misguided.

The Panel further notes the description on the Sedo.com listing, which states “TOGG Lithium Ions, the future is electric!” In light of the Complainant’s focus on lithium-ion powered electric vehicles, the Panel infers that the Respondent had knowledge of the Complainant and registered the disputed domain name opportunistically. As noted above, the Respondent has not sought to make any use of the disputed domain name in connection with a bona fide offering of goods or services, independent from the Complainant’s reputation in the TOGG name and trademark or otherwise. Rather, the Respondent has simply parked the disputed domain name, listing it for sale for EUR 19,000.

Based on the evidence on record, the Panel accepts the Complainant’s assertion that the disputed domain name was registered primarily for the purpose of selling or otherwise transferring the disputed domain name to the Complainant, in bad faith pursuant to Paragraph B(11)(f)(1) of the ADR Rules.

The Panel finds that the Complainant has satisfied the requirements of Paragraph B(11)(d)(1)(iii) of the ADR Rules.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <togg.eu> be transferred to the Second Complainant, TOGG Europe GmbH, which being located in Germany, satisfies the general eligibility criteria for registration of the disputed domain name set out in Paragraph 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) No 2019/517.

Jane Seager
Sole Panelist
Date: August 12, 2021

¹ Noting the procedural and substantive similarities between the ADR Rules and the UDRP, the Panel has made reference to prior decisions rendered under the UDRP, including as expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), where relevant.