WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Derimod Konfeksiyon Ayakkabi Deri Sanayi ve Ticaret Anonim Şirketi v. Jan Everno, Name Management Group
Case No. D2019-0327
1. The Parties
The Complainant is Derimod Konfeksiyon Ayakkabi Deri Sanayi ve Ticaret Anonim Şirketi of Istanbul, Turkey, represented by Grup Ofis Marka Patent Inc., Turkey.
The Respondent is Jan Everno, Name Management Group of Grandville, Michigan, United States of America.
2. The Domain Name and Registrar
The disputed domain name <derimod.com> is registered with NamePal.com #8004 (the “Registrar”).
3. Procedural History
The Complaint was filed in Turkish with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2019, the Registrar transmitted by email to the Center its verification response, confirming that the language of the Registration Agreement is English. On February 13, 2019, the Center sent an email in English and Turkish to the Parties regarding the language of the proceeding. The Complainant requested Turkish to be the language of the proceeding on February 14, 2019. The Respondent did not comment on the language of the proceeding by the specified due date. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 14, 2019.
The Center verified that the Complaint together with 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2019.
The Center appointed Kaya Köklü as the sole panelist in this matter on March 20, 2019. 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 company established in 1974 in Turkey. It is internationally active in the field of leather fashion, including foot wear.
The Complainant owns various trademark registrations for its DERIMOD mark, such as Turkish Trademark Registration No. 2003 02045, registered with the Turkish Patent and Trademark Office on May 5, 2004.
The Complainant also owns and operates various domain names, such as <derimod.com.tr>.
The Respondent is apparently an individual from the United States of America.
The disputed domain name was created on September 7, 2017.
At the time of the decision, the disputed domain name resolves to a pay-per-click website. As evidenced by the Complainant (cf. Annex 7), the disputed domain name has been offered for sale for a certain period of time.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is identical to its DERIMOD trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link with the Complainant.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of Proceedings
The language of the registration agreement of the disputed domain name is the English language. The Complainant, however, filed its Complaint in the Turkish language.
As there is no specific agreement between the Parties to conduct the proceedings in Turkish, the website at the disputed domain name is in English, and there are no other indications that the Respondent is knowledgeable of Turkish, the Panel determines in accordance with the Rules, paragraph 11(a), that the language of these administrative proceedings shall be English.
As regards the Complaint, which was filed by the Complainant in Turkish language, the Panel believes that it would be unnecessary to request a costly and time consuming translation of the Complaint into the English language, while the Respondent has failed to raise any objection, or even to respond to the Complaint or respond to the Center’s communication about the language of the proceedings, even though communicated in Turkish and in English.
Given the circumstances of this case, the Panel (who is familiar with the Turkish language) accepts the Complaint filed in Turkish, while continuing the administrative proceedings in English.
6.2. Substantive Issues
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Yet, it is noted that an independent search by visiting the Internet site linked to the disputed domain name has been performed by the Panel. The competence of the Panel to perform such independent search is undisputed and in line with previous UDRP decisions, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038.
Further, it is stated that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
A. Identical or Confusingly Similar
The Panel notes that the Complainant has satisfied the threshold requirement of having relevant trademark rights in DERIMOD.
The disputed domain name is identical to the Complainant’s DERIMOD trademark as it incorporates the Complainant’s trademark in its entirety without any additions or amendments.
In the Panel’s view, the mere addition of a generic Top-Level Domain (“gTLD”) like “.com” may, as a general principle, be disregarded when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP panels concerning the use of a gTLD within a domain name, cf. V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054).
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to rebut the Complainant’s arguments and/or demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s DERIMOD trademark within the disputed domain name.
The Panel rather believes that the Respondent has used the disputed domain name, being identical to the trademark of the Complainant, in order to attract Internet users to the Respondent’s website by creating a misleading impression that it is the Complainant, or associated with the Complainant. Such use cannot be regarded as bona fide use of the disputed domain name within the meaning of the Policy.
As brought forward by the Complainant, the pay-per-click links compete with and capitalize on the reputation and goodwill of the Complainant’s trademark. The use of a domain name to host a parked page comprising such pay-per-click links does not represent a bona fide offering. See in this regard section 2.9 of the WIPO Overview 3.0.
In the absence of a substantial Response by the Respondent, there is also no indication in the record that the Respondent was or is commonly known by the disputed domain name.
As a conclusion, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel notes the reputation and wide recognition of the Complainant’s DERIMOD trademark in Turkey. The Panel is accordingly convinced that the Respondent must have had the Complainant’s trademark (which has no dictionary meaning) in mind when registering the disputed domain name.
In the Panel’s view, it even appears that the Respondent has registered and used the disputed domain name for the purpose of creating an association with the Complainant. By registering and using the disputed domain name, which is identical to the DERIMOD trademark of the Complainant, the Respondent targets the diversion of Internet traffic from the Complainant’s site to the Respondent’s site (currently a pay-per-click website). Noting that the Respondent lacks any rights or legitimate interests in the disputed domain name, the use of the disputed domain name incorporating the identical trademark and redirecting Internet users to a pay-per-click page for commercial gain, is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See in this regard WIPO Overview 3.0, section 3.5.
The Panel finds this a valid indication for bad faith registration and use under paragraph 4(b)(iii) of the Policy.
Furthermore, the Panel finds that the Respondent’s failure to respond substantively to the Complaint also supports the conclusion that it has registered and is using the disputed domain name in bad faith. The Panel believes that, if the Respondent did in fact have legitimate purposes in registering and using the disputed domain name, it would have probably responded.
The Panel concludes that the disputed domain name was registered and is used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, 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, <derimod.com> be transferred to the Complainant.
Date: April 2, 2019