DISCUSSION AND FINDINGS
This is a mandatory administrative proceeding pursuant to Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) of the Internet Corporation for Assigned Names and Numbers (“ICANN”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the CAC Supplemental Rules.
PRELIMINARY ISSUE- LANGUAGE OF PROCEEDINGS:
The Complainant submits that if the language of the Registration Agreement of the disputed Domain Name <frankeservis.info> is a language other than English, according to the applicable Registrar(s), the Complainant makes a request that the language of the proceeding should be English. The evidence coming from the Registrar verification shows that the language of the registration agreement is Turkish. The Panel therefore proceeds on the assumption that the Complainant requests that the language of the proceeding should be English. The Complainant's request is based on the following submissions.
The Complainant submits that the Respondent has not replied to the cease and desist letter (“C&D letter”), nor responded that it did not understand the content of the letter. This conduct has a relevancy when deciding on the language of the proceeding, as it was stated on WIPO Case no. D2015-0298 where the “The Respondent did not reply to the Complainant's request, therefore it did not express in any way that it cannot answer the allegations since it does not understand English.”
The Complainant also submits that the disputed domain name includes the Complainant’s mark FRANKE. Complainant is a Swiss company whose business language is English and considering that Respondent is in the service business, it is unlikely that Respondent is not at least familiar with the English language.
In addition, the Complainant submits that Respondent has chosen to register the domain name under the Top Level domain “.info” which is the commercial TLD, and is applicable to a broader audience than merely Turkey. A more suitable TLD if only addressing the Turkish market would be the “.com.tr“ extension. The proceeding will likely be put through unnecessary trouble and delay if Turkish were made the language of the proceeding and there would be no discernible benefit to the parties or the proceeding, in the circumstances, that may be gained by maintaining the default language. In WIPO decisions D2015-1508 and D2015-0614 the Panel decided to accept the Complaint to be filed in English despite the fact that the Registrar had informed the Center that the language of the Registration Agreement was Turkish.
The Panel agrees with the Complainant's submissions and in the exercise of its discretion finds that the language of the proceeding will be English.
ADMINISTRATIVE DEFICIENCY
By notification dated January 11, 2018 and in accordance with paragraph 4 (b) of the Rules, the CAC notified the Complainant that the Complaint was administratively deficient in that the Complaint did not sufficiently identify the Respondent and directed attention to the Registrar’s verification available in the online case file in the form of a non-standard communication regarding the appropriate identification of the domain name holder.
On January 15, 2018 the Complainant filed an Amended Complaint and the CAC determined that in view of the amendments so made, the Complaint should be forwarded to the Respondent.
The Panel has reviewed all of the above matters and makes a finding that within the meaning of paragraph 4(b) of the Rules, the administrative deficiencies have been corrected and that this matter has proceeded properly to the Panel in accordance with the Policy and the Rules.
SUBSTANTIVE MATTERS
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the onus is on the Complainant to make out its case and past UDRP panels have consistently said that a complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to the FRANKE trademark. That is so for the following reasons.
First, the Disputed Domain Name consists of the entirety of the FRANKE trademark to which the Respondent has added the word "servis", which can only be taken to mean service facilities provided by the owner of the FRANKE mark for the products it makes and sells. In this regard it has long been held by UDRP panels, as the Complainant submits, that the mere addition of a generic word such as "servis" to a trademark does not eliminate confusing similarity that is otherwise present, as it is in the present case.
That principle has long been supported in UDRP decisions and the Panel will apply it in the present case. It clearly applies to the present case because internet users would naturally believe that the domain name is linked to the Complainant because its name and trademark are in the domain name and also because the word 'servis' implies that the Complainant is using the domain name and the website to which it resolves to offer servicing facilities for the products it sells under the FRANKE trademark.
In addition, it is now well established that the TLD ".info" in the Disputed Domain Name, like other TLDs, should be disregarded for the purposes of the comparison with the trademark.
The Complainant has also adduced evidence that the Panel accepts that it is the registered owner of the registered trademarks more particularly described above and hence that it is the owner of the FRANKE trademark and that as such it has rights in that trademark.
Accordingly, the Disputed Domain Name is confusingly similar to the Complainant’s FRANKE trademark and the Complainant has thus shown the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to a respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue
Thus, if a respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
It is also well-established that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests and that when such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent cannot do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Panel, after considering all of the evidence in the Complaint, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. That prima facie case is made out from the following considerations.
First, the Respondent chose for the disputed domain name, without the Complainant’s authorization, the Complainant’s well-known FRANKE trademark which it has had registered since 1992 in Turkey, where the Respondent is apparently domiciled and used as its business name for many years, including in Turkey, as a leading international manufacturer and distributor of kitchen appliances.
Secondly, the Complainant has submitted that it has not found that the Respondent is commonly known by the Disputed Domain Name and that the WHOIS information shows that Caner TANAOBA is the registrant of the Disputed Domain Name. It is therefore clear that the registrant's name is Caner TANAOBA and consequently that the Respondent is not commonly known by the Disputed Domain Name. The Panel accepts the Complainant's submission and the evidence on which it is based.
Thirdly, the evidence shows that, so far as it is known, the Respondent is not associated with a business enterprise or a trademark in the name FRANKE or FRANKE SERVIS; the Respondent is not in any way related to the Complainant’s business, is not one of its authorised distributors and does not carry out any activity for or have any business with it.
Moreover, the Complainant has never given any authorization to the Respondent or any other entity to make any use, nor apply for registration of the domain name in issue.
The Complainant also submits that the Respondent has not by virtue of the content of the website, nor by its use of the domain name shown that the domain name will be used in connection with a bona fide offering of goods or services.That is clearly so, as is apparent from an examination of the website to which the domain name resolves. The website shows extensive use of the FRANKE trademark which must give the impression to the internet user that this is the Complainant's website or one approved by it, which it is not, and that the services offered on the website are genuine Franke services, which they are not.There is no way in which such deceptive and illegal conduct can give rise to a right or legitimate interest in the domain name in question and the Panel so finds.
Nor can the clear intention of the Respondent to take advantage of a purported association with the Complainant and its business give rise to such a right or legitimate interest.
The Complainant has therefore made out its prima facie case. The Respondent has not filed a Response or made any other answer to the claims of the Complainant and is in default.
Moreover, it must be said that the Complainant is correct in submitting that it would be impossible for the Respondent to bring itself within the principles known as the Oki Data principles relating to the rights of a distributor to register a domain name. The facts of the case make it clear that the Respondent would fail to establish any of the Oki Data principles.
Accordingly, the prima facie case has been made and not been rebutted and the Complainant has therefore made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(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 the respondent’s 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 on-line 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 site or location.
The Panel finds that the Complainant has shown that the Respondent registered and used the Disputed Domain Name in bad faith both in general and in particular because the Respondent’s conduct puts the case squarely within paragraph 4(b)(iv) of the Policy and probably within other provisions of paragraph 4 (b).
That is so for the following reasons.
First, because of the fame and strong reputation of the FRANKE trademark, the Respondent must be presumed to have been aware of the existence of the Complainant and its reputation when it registered the Disputed Domain Name. In particular, as the Complainant submits, the Respondent must have been aware of the FRANKE trademark because it has adopted and used the trademark extensively on its website, which it had no authority to do. It has virtually asserted on the website that it is the Complainant and that , as the Complainant, it is offering the services promoted on the website, or alternatively that it has been authorised by the Complainant to make such assertions, which it clearly has not.
Secondly, not only is such conduct by the Respondent evidence of bad faith registration and use in general, but it specifically falls within paragraph 4(b)(iv) of the Policy because the Respondent, in registering the domain name deceptively and without any authority to do so, and using it as it has, must be taken to have created a likelihood of confusion , with the intention of attracting current and potential customers of the Complainant looking for its services, particularly in Turkey and doing so in this misleading manner. Accordingly, the Disputed Domain Name was registered and used in bad faith.
Thirdly, Complainant is correct in also placing reliance on the fact that the FRANKE trademark predates the registration of the Disputed Domain Name and that the Respondent has never been authorized by Complainant to register it. Such conduct is, by itself , evidence of bad faith registration of the domain name and the Panel so finds.
Fourthly, the Complainant submits that the fact that the identity of the Respondent was hidden through an identity protection service before filing this complaint is evidence of a bad faith registration. The Panel agrees and so finds.
The Complainant also makes several submissions specifically designed to show that the Disputed Domain Name has been used in bad faith and the Panel agrees with those submissions. They are, in summary, that the Respondent forewent the opportunity it had to reply to the Complainant's cease and desist letters, but did not do so, that Respondent took advantage of the FRANKE trademark by creating a likelihood of confusion with the Complainant’s mark, the Respondent intentionally chose the Domain Name based it on the registered and well-known FRANKE trademark to generate more traffic to its own business without disclaiming an association between itself and Complainant and that the Respondent has engaged in a pattern of conduct of abusive registration of domain names based on well known trademarks which is indicative of bad faith. The Panel agrees with each of those submissions and the evidence adduced in their support. The case therefore falls squarely within the provisions of Paragraph 4(b)(ii) of the Policy.
The Panel also finds that the facts of the case bring it within Paragraph 4(b)(iii) of the Policy.
Consequently, the Disputed Domain Name has been both registered and used in bad faith, on the basis of the specific provisions of Paragraph 4(b) of the Policy and also bad faith in general.
Accordingly, the Complainant has shown that the Disputed Domain Name was registered and used in bad faith. The Complainant has thus established the third of the three elements that it must establish.
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