WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eregli Demir Ve Çelik Fabrikalari Türk Anonim Sirketi v. Cuneyt Zencirci
Case No. D2014-2066
1. The Parties
The Complainant is Eregli Demir Ve Çelik Fabrikalari Türk Anonim Sirketi of Istanbul, Turkey, represented by Ofo Ventura, Turkey.
The Respondent is Cuneyt Zencirci of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <erdemirsteel.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2014. On November 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2014, 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 amended Complaint on December 2, 2014.
The Center verified that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 31, 2014.
The Center appointed Brigitte Joppich, Dilek Ustun Ekdial and Ian Lowe as panelists in this matter on January 20, 2015. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
The Complainant was founded in 1960 and is today the largest flat steel manufacturer of Turkey. The Complainant’s shares are amongst the blue chip shares listed with Borsa Istanbul (BIST).
The Complainant is registered owner of numerous trademarks for ERDEMÍR, inter alia Turkish trademark registration no. 2006 34191 ERDEMÍR, registered in multiple classes (hereinafter referred to as the “ERDEMÍR Mark”). The Complainant provides information on its products and services on the Internet inter alia at “www.erdemir.com.tr”.
The disputed domain name was registered on July 1, 2014 and is used in connection with a website stating “This website will be online in a few days. Please check later.”
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is confusingly similar to the Complainant’s highly distinctive and well-known ERDEMÍR Mark as neither the top-level-domain “.com” nor the additional generic word “steel” is sufficient to avoid a finding of confusing similarity.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as, to the Complainant’s best knowledge, the Respondent has not used, or made any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services but uses it in connection with a website stating “This website will be online in a few days. Please check later.”; as the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name; as the Complainant has no relationship or connection with the Respondent and has not authorized the Respondent to use the ERDEMÍR Mark; and as the Respondent has not been known under the disputed domain name as an individual or business and holds no rights in a corresponding trademark application or registration.
(3) The disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant argues that the ERDEMÍR Mark has been used by the Complainant since 1960, has been subject to trademark registrations in the name of the Complainant before TPI since 1992, is an invented, highly distinctive word, and is a well-known mark according to the criterion of the Paris Convention and Article 16 of TRIPS Agreement. With regard to bad faith use, the Complainant contends that, even though the Respondent currently does not use the disputed domain name, the disputed domain name will most likely disrupt the Complainant’s business by diverting Internet traffic from the Complainant’s website to the Respondent’s site in the event of an active use. Furthermore, the Complainant states that the disputed domain name was used in connection with fraud activities, namely email, and that the Complainant has filed a complaint before the Republic of Turkey Ministry of Economy and a criminal complaint before the Istanbul Anatolia Office of the Chief Public Prosecutor.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 disputed domain name fully incorporates the Complainant’s highly distinctive and widely known ERDEMÍR Mark and is confusingly similar to such marks. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for the purposes of the Policy despite the addition of additional generic terms, such as “steel”.
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not provide any evidence with regard to rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In fact, the disputed domain name is not used in connection with an active website.
Accordingly, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Since the Complainant is a well-established and widely known company in Turkey, it is inconceivable from the Panel’s point of view that the Respondent (being also located in Turkey) was unaware of the Complainant and its rights in the ERDEMÍR Mark at the time of the registration of the disputed domain name. Such finding is supported by the fact that the disputed domain name clearly targets the Complainant’s business by combining the Complainant’s ERDEMÍR Mark with the term “steel”, which describes the Complainant’s main field of business.
As the disputed domain name is not actively used by the Respondent, the Panel has to decide whether or not the Respondent’s (non-)use of the disputed domain name is to be considered as bad faith use under the Policy.
It is the consensus view that the lack of an active use of a domain name does not as such prevent a finding of bad faith. In such cases the panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include a complainant having a well-known trademark, no response to the complaint, concealment of identity, and the impossibility of conceiving a good faith use of the domain name (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).
The Panel is confident that, based on its longstanding use, the Complainant’s ERDEMÍR mark is well-established at least in Turkey. Furthermore, the Respondent failed to provide evidence of any actual good faith use. In the view of the Panel, any use of the disputed domain name by the Respondent would render the false impression that the disputed domain name is somehow related to the Complainant and its products, and the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith. The Panel is therefore convinced that, even though the disputed domain name has not yet been actively used, the Respondent’s non-use of the disputed domain name equals use in bad faith.
The Panel is therefore satisfied that the Respondent also used the disputed domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements 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 disputed domain name <erdemirsteel.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Date: January 30, 2015