WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Derimod Konfeksiyon Ayakkabı Deri Sanayi ve Ticaret A.Ş. v. Appleton, Chase, Cohen & London

Case No. D2015-0941

1. The Parties

The Complainant is Derimod Konfeksiyon Ayakkabı Deri Sanayi ve Ticaret A.Ş. of Istanbul, Turkey, represented by Başpınar & Partners Law Firm, Turkey.

The Respondent is Appleton, Chase, Cohen & London of Philadelphia, United States of America ("United States").

2. The Domain Name and Registrar

The disputed domain name <derimod.com> is registered with eNom (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 4, 2015. On June 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on June 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 1, 2015.

The Center appointed Steven A. Maier as the sole panelist in this matter on July 9, 2015. 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 joint stock company which was incorporated in 1975 and has been listed on the Istanbul Stock Exchange since 1991. It is a retailer of fashion products including leather shoes, jackets and accessories and operates 90 retail stores in Turkey.

The Complainant is (or has been) the proprietor of various trademark registrations for or including the mark DERIMOD. Those registrations include:

- Turkey trademark registration number 73454 for DERIMOD registered in Classes 18 and 25 on December 31, 1992 with protection from May 12, 1992 to May 12, 2002.

- Turkey trademark registration number 2003 02045 for DERIMOD registered in Classes 5, 18, 25 and 35 on May 14, 2004 with protection from January 28, 2003.

- Turkey trademark registration number 2011 96493 for DERIMOD registered in Class 35 on March 18, 2013 with protection from November 22, 2011.

- United States trademark registration number 4416513 for DERIMOD registered in Class 18 on October 5, 2013 with a filing date of May 3, 2012.

The disputed domain name was registered on June 23, 1997.

According to evidence submitted by the Complainant, on June 4, 2015 the disputed domain name resolved to a website at "www.businesspower.com". The home page of the website was headed "BusinessPower.com Solutions by Business Power" and appeared to offer a range of e-commerce products and services.

5. Parties' Contentions

A. Complainant

The Complainant submits that it is a pioneering company in the fashion sector with emphasis in particular on leather styles. In addition to its many outlets in Turkey it also has a store in Beverly Hills, California, United States as well as stores in the Russian Federation, Saudi Arabia and Northern Cyprus¹. It registered the domain name <derimod.com.tr> in 2000 and has actively used that website for the promotion of its business. It has undertaken numerous promotional activities including projects involving the models Linda Evangelista and Mila Jovovich and has also organized fashion shoots abroad. The Complainant submits evidence that its mark DERIMOD has been accorded the status of a well-known mark by the Turkish Patent Office.

The Complainant submits that the disputed domain name is identical to a trademark or service mark in which the Complainant has rights, namely its trademark DERIMOD. The Complainant relies on its trademark registrations including those referred to above and states that the term "derimod" has no dictionary meaning in Turkish.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent registered the disputed domain name without having any authority to operate on behalf of the Complainant. The Complainant further submits that the Respondent has never been known by the disputed domain name and that the Respondent has never used the disputed domain name otherwise than to redirect to "www.businesspower.com". The Complainant states that the Respondent is a property tax consultant and has no legitimate interest in holding the disputed domain name.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith. In particular, the Complainant contends that the Respondent's only interest is in selling the disputed domain name and exhibits email correspondence between the Complainant's representative and the administrative contact for the disputed domain name provided in the WhoIs information, Mr. Cagatay, in April 2015. In that correspondence the Complainant states that the Respondent is not actively using the disputed domain name and has no legitimate interest in it and offers to purchase the disputed domain name for a reasonable price. The Respondent replies:

"… The domain name was acquired prior to your client's application for a trademark. Your client's application to USPTO was only made back in 2013. The above mentioned domain name was acquired 18 years ago for a drug named 'Derimod' (Mometasone Furoate 0.1%) which is sold in many [E]uropean countries as well as South America (Argentina).

In 2005, we had entered into discussions with OXA Pharma for this domain name. However, we could not come to an agreement on the price.

Please let us know what you had in mind as far as the price is concerned. I will get back to you as soon as possible."

The Complainant's representative replied asking to know the Respondent's expectation in terms of the price for the disputed domain name but the correspondence did not then proceed further.

The Complainant submits that, based on publicly-available company records, Mr. Cagatay is the sole owner of the Respondent. The Complainant states that it is of the opinion that Mr. Cagatay is most likely a Turkish speaker and/or citizen. The Complainant points to four other domain names registered by the Respondent which appear to have Turkish connections, namely:

- <kralfm.com>. The Complainant states that Kral FM is a national Turkish radio station.

- <basbakan.com>. The Complainant states that "Basbakan" is Turkish for "Prime Minister".

- <seniseviyorum.com>. The Complainant states that "seni seviyorum" means "I love you" in Turkish.

- <davetiye.com>. The Complainant states that "davetiye" is Turkish for "invitation".

The Complainant submits that, in view of Mr. Catgay's Turkish connections, the Respondent should have been aware of the Complainant's stores all over Turkey and its well-known trademark. In the light of this, and of the facts that the Respondent has not actively used the disputed domain name and has been holding it only for the purpose of sale, it is clear that the Respondent has acted in bad faith.

The Complainant seeks a transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Even in a case such as this where the Respondent has failed to file a Response, the Complainant must nevertheless show that all three of the above elements are present.

A. Identical or Confusingly Similar

The Complainant has established that it has longstanding registered trademark rights in a number of territories for the mark DERIMOD. The disputed domain name is identical to the Complainant's trademark but for the generic Top-Level Domain (gTLD) ".com" which is typically ignored for the purpose of comparison. The Panel accepts that the word "derimod" has no dictionary meaning in Turkish and there is no evidence before the Panel of any such meaning in any other language. Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel accepts the Complainant's contentions, which the Respondent has not disputed, that it did not authorize the Respondent to use its mark DERIMOD for the purpose of the disputed domain name, that the Respondent has never been known by the disputed domain name and that the Respondent has not used the disputed domain name for the purpose of any business corresponding to that name. The Complainant has, therefore, established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In these circumstances, the burden shifts to the Respondent to show that it has any such rights or legitimate interests, whether in the circumstances set out under paragraph 4(c) of the Policy or otherwise.

While the Respondent has not participated in this proceeding, the Complainant has exhibited its correspondence with the Respondent in which the Respondent states that it registered the disputed domain name in connection with a drug named "Derimod". However, the Panel has no evidence concerning the drug "Derimod" and the ownership of any rights in that name, and in the absence of any participation by the Respondent, there is insufficient evidence concerning this matter to establish that the Respondent has any rights or legitimate interests in respect of the disputed domain name. In the circumstances, the Panel must conclude that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

In connection with bad faith, the Complainant refers to the Respondent's use of the disputed domain name, which redirects to the ""www.businesspower.com" website, and also to the Respondent's registration and holding of the disputed domain name apparently with a view to the sale of the disputed domain name.

In the view of the Panel, in order to establish registration and use of the disputed domain name in bad faith, the Complainant must demonstrate on the balance of probabilities that the Respondent registered and has used the disputed domain name in the knowledge of the Complainant's trademark rights and with the intention of taking unfair advantage of the Complainant's goodwill in those rights.

The disputed domain name was registered some 18 years ago, in 1997, at which time the Complainant had a Turkey trademark but not a United States trademark, which as the Respondent has pointed out in correspondence was not obtained until 2013. However, it appears that the Complainant opened a Beverly Hills, California store in 1982.

The Panel also takes account of the Complainant's evidence of the Respondent's four other domain name registrations, all of which have Turkish connections. The Panel notes (based on a WhoIs search) that one of these, <seniseviyorum.com>, was in fact registered on the same day as the disputed domain name, June 23, 1997. The Panel accepts the Complainant's evidence that it has operated numerous stores in Turkey for many years and that its DERIMOD mark has the status of a well-known trademark in that territory. It being clear that the Respondent has registered several other domain names having Turkish connections, the Panel finds that the Respondent was likely to have been aware of the Complainant's mark at the date of registration of the disputed domain name.

The Respondent has not participated in this proceeding and has not, therefore, directly addressed the Complainant's contentions. While it has stated in correspondence with the Complainant that it was targeting the "Derimod" drug name, it has failed to submit evidence concerning this matter such as might satisfy the Panel of its bona fides in this regard. In particular, the fact that the Respondent may have been in correspondence with a pharmaceutical company in 2005 about the disputed domain name does not of itself establish that the Respondent registered the domain name with the relevant drug and/or that company in mind.

The Panel further infers that that the Respondent is using the disputed domain name with the intention of taking unfair advantage of the Complainant's goodwill in its DERIMOD mark, for its own commercial gain by redirecting the disputed domain name to a website promoting its consulting business and by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website, products or services (paragraph 4(b)(iv) of the Policy). Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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 <derimod.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: July 22, 2015

¹ While the Complainant does not specify the date on which the Beverly Hills store was opened, this appears from its website to have been 1982.