WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dap Yapi Insaat Sanayi ve Ticaret Anonim Sirketi v. Kaan San

Case No. D2015-2203

1. The Parties

The Complainant is Dap Yapi Insaat Sanayi ve Ticaret Anonim Sirketi of Istanbul, Turkey, represented by Net Koruma Danismanlik Hizmetleri, Turkey.

The Respondent is Kaan San of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <dapyapi.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 December 4, 2015. On December 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2016.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on January 15, 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.

4. Factual Background

The Complainant is one of Turkey’s largest cunstruction project production companies which started operations in 1999 under the name Dap Yapı İnş. San. Tic. Ltd. Şti.

The Complainant owns and uses the trademark DAP YAPI and has registered a number of trademarks incorporating the term “dap yapı” as evidenced in the annexes to the Complaint. The first DAP YAPI trademark (No. 2005 46464) was applied for before the Turkish Patent Institute on October 27, 2005 and registered on January 29, 2007 in Nice class 37. Since then the Complainant has registered numerous DAP YAPI trademarks in various classes.

The Complainant also registered the domain name <dapyapi.com.tr> in 2004.

The disputed domain was originally created on May 26, 2004. The Complainant has provided evidence of prior WhoIs record of November 9, 2005 showing the disputed domain name was registered in the name of Hamza Sarı and the next record date of January 6, 2008 showing the Respondent as the registrant, illustrating that the Respondent registered the disputed domain name sometime between November 2005 and January 2008. The Panel visited the disputed domain name on February 4, 2016, and observed that the disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 4(i) of the Policy, the Complainant requests that the disputed domain name be transferred to it. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.

Identical or Confusingly Similar

The Complainant submits that it has numerous trademarks incorporating its trademark DAP YAPI registered in 2007 and that it is the owner of the domain name <dapyapi.com.tr> registered in 2004, as evidenced in the annexes of the Complaint.

The Complainant claims that the disputed domain name is identical to the Complainant’s trademark as it wholly incorporates “dapyapı” and that the disputed domain name likely originates from the Complainant’s trademark DAP YAPI which the Complainant has been continuously using since 1999.

Rights or Legitimate Interests

The Complainant asserts that the Respondent does not have any rights or legitimate interests regarding the disputed domain name. The Complainant has not given the Respondent any license to register its trademark in a domain name. Further, the Complainant asserts that the Respondent has not realized any legal and legitimate use from the year 2008 onwards and has only continued to passively hold the disputed domain name.

Registered and Used in Bad Faith

The Complainant contends that the Respondent purchased and is using the disputed domain name to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks. The Complainant states the Respondent previously used the disputed domain name to publish the page of an organization developing construction and architectural projects with the logo “Işıksalan Mimarlık”.

The Complainant states that the Respondent after registering the disputed domain name in 2008 has not realized any use in terms of products and services which show material and well intending use.

The Complainant further contends that the Respondent previously published an offer for sale at the disputed domain name.

B. Respondent

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

6. Discussion and Findings

As the Respondent has not filed a response, the Panel may decide the dispute based on the Complaint and may accept all reasonable factual allegations as true. The Panel may also draw appropriate inferences from the Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

According to paragraph 4(a) of the Policy, the following three elements must be proven by the Complainant, to merit a finding that the disputed domain name be transferred to the Complainant:

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

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

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

A. Identical or Confusingly Similar

The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark DAP YAPI as evidenced in the annexes to the Complaint and Turkish Patent Institute records. Further, while not dispositive under the first element, the Panel notes the Complainant has registered a domain name, which has been in use since 2004, incorporating its trademark DAP YAPI.

In relation to the identity and confusing similarity, it is clear that the disputed domain name fully incorporates the Complainant’s trademark and the only difference between the disputed domain name and the Complainant’s trademark is the addition of the “.com” extension. The Panel finds that the addition of the “.com” extension is generally irrelevant when determining whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark, PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2009-0009. It has been stated in several decisions by other UDRP panels that the incorporation of a trademark in its entirety into a domain name may 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. The Panel recognizes the Complainant’s rights and concludes that the disputed domain name is identical to the Complainant’s DAP YAPI trademark.

The Panel finds that the requirements in paragraph 4(a)(i) of the Policy are fulfilled, consequently, the Panel finds for the Complainant on the first element of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. Once the Complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the Respondent. The Policy at paragraph 4(c) provides various ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant claims that it has never granted the Respondent a license or permission to use or to register a domain name incorporating DAP YAPI; the Respondent is not associated with or permitted by the Complainant to use its mark; the Respondent has not been commonly known by the disputed domain name; the Respondent does not have any trademarks or service marks in the disputed domain name. The Complainant alleges the Respondent’s reason for registering the disputed domain name is either to confuse Internet users for its own benefit and profit or to sell the disputed domain name to the Complainant for commercial gain. The Complainant further claims that it could not register the disputed domain name because of the unavailability and that the Respondent was fully aware of the Complainant’s rights in DAP YAPI at the time of registration of the disputed domain name.

The Panel finds that there is no evidence to suggest that the Respondent has any rights in any trademarks or service marks which are identical, similar or related to the disputed domain name. The Panel accepts that the Respondent is not commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights.

The Panel visited the disputed domain name on February 3, 2016, and found that the disputed domain name does not resolve to an active website. The disputed domain name previously resolved to a website promoting services in the Complainant’s field or that may compete with the Complainant. Therefore, the Panel finds that the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name.

There is no evidence that the Respondent has made any effort or has any intention to use the disputed domain name for any purpose or legitimate activity consistent with having rights or legitimate interests. Therefore, the Panel infers that there is no intention of legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers.

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent did not submit a response and therefore the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

The requirements of 4(a)(ii) of the Policy are fulfilled and consequently the Panel finds in favor of the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

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

The Complainant has been using its trademark DAP YAPI since 1999 and has registered numerous DAP YAPI trademarks since 2005. Further, the Complainant is well known and widely recognized in Turkey.

While it is unclear from the record excatly when the Respondent gained control of the disputed domain name, the Panel notes that the Complainant has been operating for at least eight years by January of 2008, the earliest date in which the Respondent could have gained control of the disputed domain name. Further, given that the Complainant has been operating its website at its domain name nearly identical to the disputed domain name since 2004 and that its trademark rights date back to 2005, the Panel is of the opinion that it is highly unlikely that the Respondent was unaware of the Complainant’s trademark DAP YAPI at the time the disputed domain name was registred to the Respondent. Thus, the Panel finds that the Respondent was likely aware of the Complainant’s trademark at the time of registration. The Panel is of the opinion that knowledge of the Complainant’s trademark at the time of registration of the disputed domain name is to be considered as an inference of bad faith.

Furthermore, the Panel finds that the Respondent’s failure to respond to the Complaint reinforces the inference of bad faith registration and bad faith use, The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915.

The Panel visited the disputed domain name on February 3, 2016, and observed that the disputed domain name does not resolve to an active website. Further, the Complainant has provided evidence that the Respondent used the disputed domain name to resolve to a website promoting activities in the similar field as the Complainant. In light of the facts that (i) the Complainant’s trademark has a strong reputation and is widely known in Turkey, (ii) the disputed domain name was registered well after the Complainant has obtained rights in its trademark, (iii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name, and that (iv) the Respondent did not respond to the Complaint, the Panel is of the opinion that the current passive holding of the disputed domain name and its prior use by the Respondent amounts to bad faith use by the Respondent, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

After examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favor of the Complainant on the third element of the Policy.

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 <dapyapi.com> be transferred to the Complainant.

Gökhan Gökçe
Sole Panelist
Date: February 4, 2016