WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Raks Teknoloji Enerji Yatırımları Sanayi ve Ticaret A. Ş. v. Domain Privacy Service FBO Registrant, Domain Privacy Service FBO Registrant / Adalet Sertan Ayhan, Adalet Sertan Ayhan Case No. D2016-1752
1. The Parties
The Complainant is Raks Teknoloji Enerji Yatırımları Sanayi ve Ticaret A.Ş. of Izmir, Turkey, represented by Türkekul Law Firm, Turkey.
The Respondent is Domain Privacy Service FBO Registrant, Domain Privacy Service FBO Registrant of Burlington, Massachusetts, United States of America / Adalet Sertan Ayhan, Adalet Sertan Ayhan of Istanbul, Turkey, self-represented.
2. The Domain Name and Registrar
The disputed domain name <rakscorp.com> is registered with Domain.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 26, 2016. On August 26, 2016, 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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on September 7, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to the said email and a notification by the Center that the Complaint was administratively deficient, the Complainant filed its first amended Complaint on September 12, 2016. The Complainant filed the second amended Complaint on September 28, 2016.
The Center verified that the Complaint together with the first and second amended Complaints satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Disput, e 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 September 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2016. The Response was filed with the Center on October 18, 2016.
On October 25, 2016, the Center received a Supplemental Filing from the Complainant. The Center acknowledged its receipt, and informed the parties that it would be forwarded to the Panel, once appointed, who would have the discretion to accept or reject it.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on October 26, 2016. 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 November 9, 2016, due to exceptional circumstances, the Panel extended the due date for rendering its decision until November 16, 2016.
4. Factual Background
The Complainant is a Turkish technology company based in Izmir, Turkey.
The Complainant owns several trade and service mark registrations in Turkey including the element "RAKS" covering goods and services in classes 3, 7, 8, 9,11,12, 16, 21, 35, 37, 38, 40, 41 and 42, the earliest of which dates back to 2013 (e.g., RAKS TV, trademark No. 2012 68317). The Complainant is the owner of the domain name <raks.com.tr> since August 4, 1996.
The Respondent is the owner of 99.7 per cent shares and Chairman of Executive Board of Raks Müzik Prodüksiyonları Sanayi ve Ticaret A.Ş. founded in 1995 and is the founder chairman of "Raks Music Culture and Art Academi Foundation".
The disputed domain name was registered on December 9, 2013 and currently resolves to a registrar parking page.
5. Parties' Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant's RAKS trademarks and the addition of the descriptive word "corp" which refers to "corporation" is reinforcing the association of the disputed domain name with the Complainant's mark.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark RAKS.
Moreover, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant argues that the Respondent, being ex-employee of the Complainant, has been well aware of the Complainant's trademark at the time of the registration.
Furthermore, the Complainant submits that the trademark applications for "therakscorp", "rakssoft", "rakspetroleum" "raks energy", "raks ag", "raks corner", "raksmedia", and "raks digital" filed by the Respondent's companies were all rejected by the Turkish Patent Institute.
Finally, the Complainant states that the website with the disputed domain name gives a vague explanation as to the field of activity of the Respondent where on the "About Us" section of the website, it is mentioning that "RaksCorp is developing […] technology since 1985". Therefore, the Complainant contends the Respondent is competing with the Complainant's products and services.
The Respondent asserts that:
- the Complainant does not possess a registered trademark for RAKSCORP;
- the Respondent has created and used the brand "Rakscorp" for several years;
- there are several brands registered in the name of "EMC Radyo ve Telekomünikasyon Yayınları A.Ş." and "RAKS Müzik Prodüksiyonları Sanayi ve Ticaret A.Ş.";
- RAKSCORP is part of the trade name for the Respondent;
- the fact that the Respondent is the shareholder of the Raks Müzik Prodüksiyonları Sanayi ve Ticaret A.Ş has been approved by the Court;
- there are several registered trademarks including the term "raks" in the Turkish Patent Institute (such as HABERAKS, RAKSET, RAKSLIGHT, RAKSONY, RAKSTEKS, RAKSPARIS, SARAKS, SITRAKS, SERAKS,STORAKS) and the Complainant did not take an action against these trademarks;
- the term "raks" means "oriental dance" in Turkish whereby "rakscorp" which has no Turkish meaning and is an independently created word;
- there is no risk of confusion between "raks" and "rakscorp", since their fonts and designs are different and they are distinguishable;
In the view of the above, the Respondent requests the rejection of the Complainant's Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, the Complainant holds several registrations for RAKS trademark.
The disputed domain name <rakscorp.com> integrates the Complainant's RAKS trademark in its entirety. The disputed domain name differs from the registered RAKS trademark by the additional "corp" element and the generic Top-Level Domain ("gTLD") ".com".
The additional "corp" element does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark, as it is a descriptive and commonly known abbreviation that directly relates and refers to "corporation".
Several UDRP panels have ruled that the mere addition of a descriptive element does not sufficiently differentiate a disputed domain name from a complainant's registered trademark. Moreover, it is the Panel's view that in using such a descriptive word together with a registered trademark rather strengthens the impression that the disputed domain name is in some way connected to the Complainant's trademarks.
As regards the gTLD, it is typically disregarded under the confusing similarity test.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and satisfied the first requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent lacks any right or legitimate interest in the disputed domain name.
In the Panel's view, the Complainant has made out its prima facie case under this element of the Policy.
It is clear from the submissions of the parties that the Respondent was an employee and a shareholder of the Complainant for a very long time. However, being a shareholder of the Complainant's company does not give rise to any right or legitimate interest to the Respondent with respect to the use of the Complainant's trademark. Furthermore, the Respondent's trademark application for "therakscorp" has been rejected by the Turkish Patent Institute and this decision had not been challenged by the Respondent.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
At the time of registration of the disputed domain name, it is undisputed that the Respondant, being an ex-employee and a shareholder the Complainant, was well aware of the Complainant's trademark RAKS.
Accordingly, the Panel is persuaded that the disputed domain name is registered and used in bad faith in the absence of any plausible explanation from the Respondent. In the overall circumstances of this case, the more likely reason for the registration of the disputed domain name must have been the intent to exploit, for commercial gain, the Complainant's reputation.
Therefore, in the view of cumulative circumstances, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).
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 <rakscorp.com> be transferred to the Complainant.
Emre Kerim Yardimci
Date: November 17, 2016