WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Koc Holding A.S. v. VistaPrint Technologies Ltd.

Case No. D2015-0886

1. The Parties

Complainant is Koc Holding A.S. of Istanbul, Turkey, represented by June Intellectual Property Services Inc., Turkey.

Respondent is VistaPrint Technologies Ltd. of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <kocholding-admin.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2015. On May 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 22, 2015.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on July 1, 2015. 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

According to the contentions and documentation submitted, the Koç Group was founded in 1926, is Turkey’s largest industrial and services group and is a leader in local and international markets in energy, automotive, consumer durables and finance.

The KOÇ trademark was first registered in Turkey in 2002 under Trademark Registration No. 99 021873 and Complainant owns a number of other trademark registrations for the KOÇ trademark, including the Community Trademark Registration No. 003428513 registered on October 29, 2003. Complainant is also the holder of trademark application no. 2014/54220, filed with the Turkish Patent Institute on June 27, 2014, for the trademark KOÇ GRUBU, which in English means “KOÇ GROUP”.

According to the contentions submitted, Complainant has used the KOÇ trademark in connection with a wide variety of goods and services. Complainant owns the domain name <koc.com> and, since February 9, 1996, the domain name <koc.com.tr>.

The disputed domain was registered with the Registrar on April 25, 2015.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark because (i) it incorporates the KOÇ trademark in its entirety; (ii) the word “admin”, which is the short version of the word “administrator”, is commonly being used for “Administrator on forum, network, webpage etc.” on the Internet, and, while used within a domain name, is not distinctive and is clearly generic for all domain names; (iii) the word “holding” is deliberately used to associate with Complainant, as Complainant is generally referred as KOC HOLDING because it is indeed a holding company; (iv) adding the words “holding” and/or “admin” to the word “koc” gives even more of the impression that <kocholding-admin.com> is related with Complainant, which will be confusing and misleading for consumers who will therefore assume that Respondent’s website is owned by, operated by or affiliated with Complainant; (v) the addition of indistinctive terms to Complainant’s well-known mark does not only fail to distinguish the domain name from the mark, but also reinforces the association of the domain name with Complainant’s mark; (vi) using the indistinctive terms “holding” and/or “admin” with Complainant’s KOÇ trademark does not eliminate the visual and conceptual identity with Complainant’s KOÇ and its derivative trademarks.

Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because: (i) Complainant has not licensed or otherwise permitted Respondent to use the KOÇ trademark or to apply for or use any domain name incorporating that trademark; (ii) Respondent has no relationship with Complainant for use of its trademark; (iii) Complainant has prior rights in the KOÇ trademark which precede Respondent’s registration of the disputed domain name; (iv) Respondent is clearly aware of the Complainant’s extensive goodwill and reputation in its KOÇ trademark and its derivatives; (v) Respondent has made no claim that it is using the disputed domain name in connection with a bona fide offering of goods and services; (vi) Respondent has acquired no trademark or service mark rights and there is no common knowledge (as an individual, business, or other organization) that it is known by the disputed domain name; (vii) people essentially associated with the disputed domain name have been using the domain name to initiate illegal activities and fraud by pretending to be the Complainant’s human resources department/agent by promising false job opportunities; and (viii) Respondent is not engaged in legitimate noncommercial or fair use of the disputed domain name.

Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith because (i) the disputed domain name was registered primarily for the purpose of initiating illegal activities, such as fraud, by using an e-mail address associated with the domain name; (ii) people essentially associated with the disputed domain name have been using the disputed domain name to initiate illegal activities and fraud by pretending to be the Complainant’s human resources department/agent by promising false job opportunities; (iii) registration and use of a domain name incorporating a famous mark is necessarily in bad faith where a respondent knew at the time of the registration that it could not make any actual use of the registered domain name without infringing on the trademark owner’s rights; (iv) these actions clearly show the attempt to attract Internet users familiar with the Complainant, its services and reputation and create confusion as to the existence of an affiliation or other connection with Complainant; (v) Respondent does not actively use the disputed domain name as Respondent has placed no content on the site “www.kocholdingadmin.com” that relates to a business or has been created by the Respondent; (vi) there is no evidence whatsoever of any good faith use of or intention to use the disputed domain name <kocholding-admin.com >; and (vii) Respondent’s passive holding of the disputed domain name <kocholding-admin.com> satisfies the requirement of paragraph 4(a) of the Policy that the disputed domain name is being used in bad faith by Respondent.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Effect of the Default

The consensus view is that respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.2. However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

The Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.

The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.

B. Identical or Confusingly Similar

The disputed domain name <kocholding-admin.com> incorporates the KOÇ trademark in its entirety. There is a minor variation between the KOÇ trademark, which uses the “ç” letter, and the disputed domain name, which uses the “c” letter. It is now very well-established in UDRP decisions that a minor variation, such as adding short letters, or even generic or descriptive words to a registered trademark, is usually insufficient to confer requisite and sufficient distinctiveness to that name to avoid user confusion. See, e.g., Hoffmann–La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240; MySpace, Inc. v. Edwin De Jesus, EDJ Associates Inc., WIPO Case No. D2007-1878; BlackRock, Inc. v. blackrockfinancialservices.com, WIPO Case No. D2007-1627; F. Hoffmann-La Roche AG v. Transliner Consultants, WIPO Case No. D2007-1359; National Football League v. Peter Blucher d/b/a BluTech Tickets, WIPO Case No. D2007-1064; Toilets.com, Inc. v. Rons Porta Johns, WIPO Case No. D2007-0952; Associated Bank Corp. v. Texas International Property Associates, WIPO Case No. D2007-0334; Gerber Childrenswear Inc. v. David Webb, WIPO Case No. D2007-0317; The Cheesecake Factory Inc. and The Cheesecake Factory Assets Co., LLC v. Say Cheesecake, WIPO Case No. D2005-0766; Napster, Inc. v. Vinscani, WIPO Case No. D2005-0531; Caesars Entertainment Inc. v. Nova Internet Inc., WIPO Case No. D2005-0411; Lockheed Martin Corporation v. The Skunkworx Custom Cycle, WIPO Case No. D2004-0824; Lockheed Martin Corp. v. Deborah Teramani, WIPO Case No. D2004-0836 and National Collegiate Athletic Assoc. v. Dusty Brown, WIPO Case No. D2004-0491.

As decided in other previous UDRP cases, “the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone.” LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC., WIPO Case No. D2009-0924. On a direct comparison, the Panel finds that the disputed domain name is confusingly similar to Complainant’s KOÇ trademark in spite of such minor variation. As held in Koç Holding A.S. v. KEEP B.T., WIPO Case No. D2009-0938, “KOC is the obvious equivalent to the Complainant's trade name and mark KOÇ.”

Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Lilly Icos LLC. v. John Hopking/ Neo net Ltd. , WIPO Case No. D2005-0694; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282. That is particularly true where the trademark is highly recognizable as in the instant case. In fact, the use of the word “koc” immediately followed by the generic word “holding” reinforces the association with the KOÇ trademark and with Complainant. Further, the addition of the generic word “admin” does not affect the overall impression of the dominant part of the disputed domain name.

Finally, the addition of generic Top-Level Domain suffix “.com” is non-distinctive because it is required for the registration of the disputed domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the KOÇ trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.

C. Rights or Legitimate Interests

The consensus view in previous URDP decisions has been that a complainant is required to make out an initial prima facie case. Once such prima facie case has been established, a respondent then carries the burden of demonstrating rights or legitimate interests in the domain name. If a respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (WIPO Overview 2.0, paragraph 2.1).

In the instant case, Complainant has done enough to establish a prima facie case. In fact, the Panel finds reasonable Complainant’s contentions that (i) Complainant has not licensed or otherwise permitted Respondent to use the KOÇ trademark or to apply for or use any domain name incorporating that trademark; (ii) Respondent has no relationship with Complainant for use of its trademark; and (iii) Complainant has prior rights in the KOÇ trademark which precede Respondent’s registration of the disputed domain name. There is no indication in the records that Respondent has been commonly known by the disputed domain name or that Respondent has acquired trademark or service mark rights associated with the disputed domain name.

The Panel finds that in this case Respondent is not making use of a generic value of the disputed domain names. Instead, all circumstances point strongly to Respondent having chosen the disputed domain name because of its value as a close approximation of the Complainant’s KOÇ trademark. In fact, the Panel finds that the disputed domain name was selected by Respondent to take advantage of the notoriety associated with the KOÇ trademark and the reputation of Complainant, as Respondent chose to register as a domain name the word “kocholding”, which is Complainant’s trade name, most likely with the intent to attract for commercial gain Internet users. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.

Paragraphs 4(c)(ii) and (iii) of the Policy require that respondent submit evidence that it or its business have been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to divert consumers or to tarnish the trademark. Pursuant to paragraph 4(c) of the Policy, any of such circumstances, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii).

Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

D. Registered and Used in Bad Faith

(i) Registration in bad faith

The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name may be an indication of bad faith. See Pepsico, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.

In view of the circumstances of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of Complainant’s KOÇ trademark and Complainant’s trade name when Respondent registered the disputed domain name. In fact, the Panel sees no plausible explanation for Respondent’s adoption of the term “kocholding-admin” in the disputed domain name other than to attract Internet users by creating a likelihood of confusion with Complainant’s trademark and trade name. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.

On the basis of the evidence adduced by Complainant, the only reasonable conclusion that can be drawn is that Respondent, knowing of the name, fame and reputation of Complainant and its trademark, has deliberately chosen to appropriate that name and reputation for the purpose of what appear to be fraudulent emails.

(ii) Use in bad faith

Complainant argues that people associated with the disputed domain name have been using the disputed domain name to initiate illegal activities by pretending to be the Complainant’s human resources department/agent by promising false job opportunities, and that these actions show the attempt to attract Internet users familiar with Complainant, its services and reputation and create confusion as to the existence of an affiliation or other connection with the Complainant. The Panel agrees that these circumstances constitute evidence of the use of the disputed domain name in bad faith.

Complainant further contends that Respondent does not actively use the disputed domain name and that Respondent’s passive holding of the disputed domain name < kocholding-admin.com> satisfies the requirement of paragraph 4(a) of the Policy that the domain name is being used in bad faith by the Respondent. When the Panel visited website the disputed domain name on July 12, 2015 it resolved to an inactive website.

The consensus view in URDP panel decisions has been that “[t]he lack of active use of the domain name does not as such prevent a finding of bad faith”,and that a panel must examine such circumstances as “complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name”. (WIPO Overview 2.0, paragraph 3.2). See Telstra Corporation Limited v. Nuclear Marshmallos, WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; J. García Carrión, S.A. v. Mª José Catalán Frias, WIPO Case No. D2000-0239; Bayer Aktiengesellschaft v. H. Monssen, WIPO Case No. D2003-0275; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483; MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412.

The Panel is of the opinion that, under appropriate circumstances, passive holding can be considered bad faith use. In the instant case the majority of the facts referred to above are present: the Complainant owns well-known trademarks, there was no response to the Complaint, and there is no indication in the records of a possible good faith use of the disputed domain name.

In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.

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 <kocholding-admin.com> be transferred to Complainant.

Manoel J. Pereira dos Santos
Sole Panelist
Date: July 13, 2015