WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kibar Holding Anonim Şirketi, a.k.a. Kibar Group and Assan Panel Sanayi Ve Ticaret Anonim Şirketi, a.k.a. Assan Panel v. Chen Xiaojie, Whois Privacy Protection Service / POSTE RESTANTE Novak Jan

Case No. D2013-2229

1. The Parties

The Complainants are Kibar Holding Anonim Şirketi, a.k.a. Kibar Group and Assan Panel Sanayi Ve Ticaret Anonim Şirketi, a.k.a. Assan Panel of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

The Respondent is Chen Xiaojie, Whois Privacy Protection Service of Shanghai, China / POSTE RESTANTE Novak Jan of Bratislava, Slovakia.

2. The Domain Name and Registrar

The disputed domain name <assanpanel.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2013. On December 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 2, 2014, 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 Complainants on January 7, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on January 10, 2014.

On January 7, 2014, the Center transmitted the language of the proceedings document to the parties in both English and Slovak. On January 10, 2014, the Complainants requested English to be the language of the proceedings. The Respondent did not submit any comments.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 13, 2014. On January 13, 2014, the Center informed the parties that, given the provided submissions and circumstances of this case, it had decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Slovak; 3) appoint a Panel familiar with both languages mentioned above, if available. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2014.

The Center appointed Ladislav Jakl as the sole panelist in this matter on February 7, 2014. 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 first Complainant, established in 1984, Kibar Holding Anonim Şirketi a.k.a. Kibar Group, is a leading manufacturer of various industrial products such as automotive, iron and steel, galvanized and aluminum sheets as well as packaging materials and food. Kibar Holding started industrial production with Kartal Sheet Processing Unit in 1972. Along with its group of companies with Assan group name, Kibar Holding has played a major role in all the relevant business sectors they operate.

The second Complainant, Assan Panel Sanayi Ve Ticaret Anonim Sirketi, a.k.a. Assan Panel, is a subsidiary of the Kibar Group of Companies. The second Complainant started its operations in 1990, with the production of polyurethane filling sandwich panel, single layer corrugated sheet coverings and the accessories and complimentary materials by Assan Demir ve Sac Sanayi., as one of the entities of Kibar Holding. The Continuous Production Line was established in order to produce more duality and faster production to meet the needs of growing market and demand. The production of the first and real sandwich panel presented to the sector was started with the name “Master Panel”. The Prefabricated Construction Materials department established to provide material sales and application services was converted into a company “Assan Prefabrik Yapı Elemanları Pazarlama ve İnşaat A.Ş.” in 1994 (Annex 3a to the Complaint). In 2004, the company name has been changed to its current name, Assan Panel Sanayi Ve Ticaret Anonim Sirketi, a.k.a. Assan Panel, which includes its main operating subject, the generic word “panel” directly in its own name. In the same year, the production has been started in Iskenderun Organized Industry Zone in 2004 and Balikesir Organized Industry Zone in 2009. The total annual sandwich panel production capacity has reached 9,500,000 square meters. Polyurethane polyisocyanurate and rockwool-filled sandwich panels are manufactured at the Balikesir facility. Growing every year to become the leader in its sector, in 2001 Assan Panel acquired the Dilovası Paint facility, which specializes in painted metals used in the manufacture of sandwich panels.

The ASSAN trademark has been first registered on December 31, 1981 with Nos. 68965 and 69293 before the Turkish Patent Institute (TPI) in class 06, in the name of the first Complainant’s subsidiary company Assan Demir ve Sac San. (Annex 6 to the Complaint). Also the same company registered ASSAN trademark on February 18, 1991 with No. 123634, in class 06. These trademarks were not renewed in 2001. A new trademark application has been filed in 2001 for ASSAN DEMIR VE SAC SANAYİ A.Ş. trademark by the Complainants’ subsidiary companies Assan Alüminyum Sanayi ve Ticaret Anonim Şirketi and Assan Demir ve Sac Sanayi A. Ş. (Annex 7a to the Complaint). The Panel also notes the Complainants’ subsidiary company Assan Demir ve Sac Sanayi A. Ş. has registered the ASSAN trademark on March 2, 2007 (Annex 7b to the Complaint). The second Complainant has also registered on May 12, 2011 the International trademark ASSANPANEL, No. 1093231 (Annex 9 to the Complaint). The same trademark ASSANPANEL was registered in 2011 in the United Arab Emirates, Jordan and Iraq (Annex 9 to the Complaint).

Since April 22, 2004, Assan Panel is the legal owner of the domain name <assanpanel.com.tr> and is still using this domain name legally (Annex 10 to the Complaint). “Assan” is the trade name of the first Complainant’s subsidiaries. Furthermore, “Assan Panel” is the trade name of the second Complainant since April 20, 2004 (Annex 3 to the Complaint).

The disputed domain name <assanpanel.com> was registered on July 1, 2006.

5. Parties’ Contentions

A. Complainant

The Complainants introduce that the disputed domain name <assanpanel.com>, fully incorporates the Complainant’s distinctive collective ASSAN trademark and trade name, and that it is identical and confusingly similar to the trademarks in which the Complainants have rights. The ASSAN trademark has first been registered on December 31, 1981 with Nos. 68965 and 69293 before the TPI in class 06, in the name of the first Complainant’s subsidiary company Assan Demir ve Sac San. The same company registered ASSAN trademark on February 18, 1991 with No. 123634, in class 06 (Annex 6 to the Complaint). However, these trademarks were not renewed in 2001 and a new trademark ASSAN application has been filed in 2001 as a collective trademark together with Assan Alüminyum Sanayi ve Ticaret Anonim Şirketi (Annex 7 to the Complaint). The trademark ASSAN DEMİR VE SAC SANAYİ A.Ş. No. 2001 12179 was registered on November 28, 2002. The Complainants further argue that the disputed domain name is a combination of two separate words, namely “assan” and “panel”.. The word “assan” is the Complainants’ main trademark. ASSAN is a collective registered and unregistered trademark of Kibar Group of Companies. The ASSAN trademark has been first used by Kibar Group, through their subsidiary “Assan Aluminium” in 1988 (registered to trade registry in 1981). Kibar Group has following constituent subsidiaries with the trade name of ASSAN, which all are well-known and one of the largest companies in each industry, in Turkey, which all have ASSAN trademarks in related classes of their businesses. Their all trading operations, advertisements and promotions are conducted under the mark ASSAN. The second word in the disputed domain name is “panel”, which also means the same in English, is a generic Turkish term, a dictionary word, which also refers to the business activity of the second Complainant. Moreover, the Complainants argue that they have used the collective mark ASSAN in connection with a wide variety of goods and services. As a consequence, the public has come to perceive goods and services that are offered under the ASSAN mark or a variation of the same as emanating from or being endorsed by or affiliated with the Complainants. All Complainants’ trading operations, advertisements and promotions are conducted under the trademarks ASSAN and ASSAN PANEL which have been used continuously since 1990 (and even since 1981 for the first use of the ASSAN trademark by the subsidiaries). In that sense, the Respondent creates a likelihood of confusion in the minds of the consumers, who expect the disputed domain name <assanpanel.com> to resolve to websites owned by, operated by or affiliated with the Complainants. The Complainants refer to several UDRP decisions according to which incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark (Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002; Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199). Accordingly, the Complainants conclude that they satisfy the first factor under paragraph 4(a) of the Policy.

As to rights or legitimate interests in respect of the disputed domain name, the Complainants essentially contend that, even if the Respondent was not under an obligation to search for Turkish national trademarks at the time of registration, he should have had carried out a basic Google search in respect of the ASSAN or ASSAN PANEL trademark. Then these would have yielded obvious references to the Complainants and their use of the name as trade/service trademarks. Since the disputed domain name could not be said to be a commonly used word, it was all the more relevant to carry out searches before registration. The Complainants argue that registration and use of a domain name incorporating the trademark of famous complainants is necessarily in bad faith. The Respondent knew at the time of the registration that he could not make any actual use of the disputed domain name without infringing on the trademark owner’s rights. The Complainants have not licensed or otherwise permitted the Respondent to use the trademarks ASSAN or ASSAN PANEL, or to apply for or use any domain name incorporating that trade/service marks. The Respondent has no relationship with or permission from the Complainants for use of their trademarks. The Complainants have prior rights in that trade/service mark, which precede the Respondent’s registration of the disputed domain name. The only interest which can be imagined for a person, not having an apparent particular connection to the trademarks ASSAN and ASSAN PANEL, in registering the disputed domain name <assanpanel.com> is to somehow create a connection to the Complainants and their trademarks, or to derive unjust profit. The Respondent does not use (commercially or noncommercially) the disputed domain name. The Respondent has not been commonly known by the disputed domain name. The Respondent has acquired no trademark or service mark rights and, there is no common knowledge (as an individual, business, or other organization) that he is known by this domain name. The disputed domain name is not a mark by which the Respondent is commonly known. The Respondent registered the disputed domain name because of the unavailability. The Complainants could not register the disputed domain name in their own name. The Respondent was fully aware that the Complainants had established rights in the ASSAN trademarks at the time it registered the disputed domain name. The Complainants further argue that the disputed domain name is not a mark by which the Respondent is commonly known. The Respondent has never been licensed or granted permission from the Complainants to use their mark and therefore he has no rights or legitimate interests in respect of the disputed domain name (Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020).

Furthermore, the Complainants essentially argue that the disputed domain name is also being used in bad faith, as it was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark for valuable consideration in excess of the domain name registrant’s out-of-pocket costs and by using the domain name until it is sold, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainants’ trademarks as to the source or affiliation of the website or of a product or service on the website. The disputed domain name is offered to sale through WhoIs search results page of different registrars, indicating that the disputed domain name is in auction and the current price is USD 4,750, which is way too much exceeding the out-of-pocket costs of the disputed domain name registration. It is clear that the Respondent has registered the disputed domain name to derive benefits from the Complainants for huge consideration in excess of the domain name’s out-of-pocket registration costs. Moreover, the Complainants refer that the Respondent is using the disputed domain name to divert Internet users to websites related with “panels”, particularly with “sandwich panels”. The website at “www.assanpanel.com” is used to earn pay-per-click (“PPC”) revenues for redirecting Internet users to third parties’ websites and thus capitalizing on the Complainants’ trademarks. The website available at the disputed domain name contains links and ads referring to competitors of the Complainant. The Complainants further argue that the Respondent registered the disputed domain name in order to prevent the owner of the mark from reflecting its mark in a corresponding domain name and from offering online services through said domain name. The Complainants refer to previous UDRP decisions according to which the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400) and that the Respondent’s passive holding of the disputed domain name suggests that it registered the disputed domain name for the purpose of selling it to the Complainants for profit (Florists’Transworld Delivery, Inc. v. DomainSource.com a/k/a Domain Source, Inc., NAF Claim No. 105882). The Complainants conclude that the Respondent has registered and used the disputed domain name in bad faith according to paragraph 4(b) of the Policy.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

On the question of the language of the proceedings, the Registrar confirmed that the language of registration agreement is Slovak. Paragraph 11(a) of the UDRP provides, considering the circumstances of the proceeding, that the Panel may determine that the language of this proceeding may be different than the language of the registration agreement. The Complainants requested for English to be the language of the administrative proceedings. The Respondent did not comment on the language of the proceedings by the specified due date. The Complainants introduce that legal policy and privacy policy on the website at the disputed domain name <assanpanel.com> is in English language and that this proves the Respondent’s English knowledge, which also makes it legitimate for English to be the language of the proceedings. The Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein, decides that the language of the administrative proceedings be English (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836; F. Hoffmann-La Roche AG v. Onotole Vasermane, WIPO Case No. D2010-2074; F. Hoffmann-La Roche AG v. Nikolay Fedotov, WIPO Case No. D2011-1636).

In accordance with paragraph 4(a) of the Policy, the Complainants must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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 burden of proving that all three elements are present lies with the Complainants.

A. Identical or Confusingly Similar

There is no doubt that the disputed domain name <assanpanel.com> incorporates the Complainants’ trademark ASSAN (owned by their subsidiary company Assan Demir ve Sac Sanayi A. Ş.) and the second Complainant’s ASSANPANEL trademark.. The second word in the disputed domain name is “panel”, which also means the same in English, is a generic Turkish term, a dictionary word, which also refers to the business activity of the second Complainant. Previous UDRP panels have held that domain names are likely to be held confusingly similar to established marks if they incorporate the trademark or a variation of the trademark (Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778; Merrell Pharmaceuticals Inc. v. Daniel Laforge, NAF Claim No. 420671). Moreover, the inclusion of the generic Top-Level Domain (“gTLD”) suffix “.com” does not avoid confusing similarity of the domain name and the trademark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund, WIPO Case No. D2007-1310). Moreover, the Complainants’ and their subsidiaries’ registration and use of relevant trademarks predates the Respondent’s registration of the disputed domain name.

For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainants’ and their subsidiaries’ trademarks and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainants must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate rights or legitimate interests:

(i) before the Respondent obtained any notice of the dispute, had used or had made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that the Respondent before any notice of the dispute, had not used, or had not made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Moreover, the Panel’s accepts the Complainants’ arguments that the Respondent cannot establish rights or legitimate interests in the disputed domain name under paragraph 4(c)(i) of the Policy as it knew at the time of the registration that he could not make any actual use of the disputed domain name without tarnishing the Complainants’ trademark. The Respondent is not commonly known by the disputed domain name is not a mark by which the Respondent is commonly known. He has never been licensed or granted permission from the Complainants to use their trademarks. The Respondent was in the Panel’s view fully aware that the Complainants had established rights in the ASSAN trademarks at the time the Respondent registered the disputed domain name. The Panel also notes that the mere registration of the disputed domain name may not of itself confer rights or legitimate interests in the disputed domain name (Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg, WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). Moreover, the Panel accepts the Complainants’ arguments that the Respondent cannot establish rights or legitimate interests in the disputed domain name as the Respondent is using it to resolve to a PPC website. The Respondent’s use of the disputed domain name to intentionally trade on the well-known mark of another, in order to lure Internet users to a website unrelated to the trademark owner, cannot and does not constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainants must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.

The Panel finds that the Complainants’ arguments convincing. The Complainants have submitted evidence, unchallenged by the Respondent, that it is obvious that the Respondent knew or must have known of the Complainants’ trademarks at the time it registered the disputed domain name. Because of the unavailaibility of the disputed domain name, the Complainants could not register it in their own name. In such a way the Respondent has registered the disputed domain name in order to prevent the Complainants from reflecting the trademarks in a corresponding domain name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400). Furthermore, the Panel notes that the Respondent is using the disputed domain name to divert Internet users to websites related with “panels”, particularly with “sandwich panels”. The website at “www.assanpanel.com” is used to earn PPC revenues for redirecting Internet users to third parties’ websites and thus capitalizing on the Complainants’ trademarks. Due to the fact that the disputed domain name directs Internet users to a web page relating to the Complainants’ business, the Respondent cannot have ignored the Complainants’ business reputation at the time of registration of the disputed domain name. The Panel finds that the disputed domain name is also being used in bad faith, as it intentionally attempts, for commercial purpose, to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the products or services posted on the Respondent’s website (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049). Moreover, the Panel accepts the Complainants’ argument that the Respondent’s passive holding of disputed domain name suggests that the Respondent registered the disputed domain name for the purpose of selling it for a price in excess of the registration costs (Florists’ Transworld Delivery, Inc. v. DomainSource.com a/k/a Domain Source, Inc., NAF Claim No. 0105882).

For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 <assanpanel.com> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: February 18, 2014