WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nexans S.A. v. Mr. Edip Özdemir / MXN Kablo San. Tic. Ltd. Sti.
Case No. D2015-1056
1. The Parties
1.1 The Complainant is Nexans S.A. of Paris, France, represented by Deris Attorneys at Law Partnership, Turkey.
1.2 The Respondent is Mr. Edip Özdemir of Istanbul, Turkey / MXN Kablo San. Tic. Ltd. Sti. of Istanbul, Turkey, represented by Net Koruma Danismanlik Hizmetleri, Turkey.
2. The Domain Name and Registrar
2.1 The disputed domain name <meksankablo.com> (the “Domain Name”) is registered with Nics Telekomünikasyon Ticaret Ltd. Sti. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2015. On June 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 22, 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. It is confirmed that the language of the relevant registration agreement for the Domain Name was Turkish. In an email from the Center to the Complainant dated June 24, 2015 the Center pointed out to the Complainant that under paragraph 11 of the Rules that in absence of agreement between the parties, the language of these proceedings was Turkish. It, therefore, invited the Complainant either to (a) provide evidence of an agreement as to language; (b) submit the Complaint translated into Turkish; or (c) submit a request that English be the language of these proceedings. On June 26, 2015 the Complainant submitted the translated version of its Complaint into Turkish.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced July 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response July 21, 2015. The Response was filed with the Center in Turkish on July 21, 2015.
3.4 On August 26, 2015, the Complainant submitted a supplemental filing in these proceedings in Turkish. On September 4, 2015, the Respondent voluntarily filed a translation of its Response into English.
3.5 The Center appointed Matthew S. Harris, Dilek Ustun Ekdial and Luca Barbero as panelists in this matter on September 4, 2015. The Panel finds that it was properly constituted. Each member of 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.
3.6 On September 8, 2015, the Panel having reviewed the case file issued a Procedural Order in which it designated English as the language of these proceedings for the reasons set out in the recitals to the Procedural Order. The Order invited submissions from the parties as the choice of language and reserved the right on review of such submissions to re-designate Turkish as the language of proceedings. It also invited the Complainant, if it still sought to rely upon the contents of its supplemental filing dated August 26, 2015, to set out in a short explanation why that supplemental filing should be admitted into these proceedings in light of the commentary in section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). No submission was filed by either party in relation to the issue of the language of these proceedings. Further, the Complainant did not file any explanation addressing the question of why its supplemental filing dated August 26, 2015 should be admitted in these proceedings.
3.7 On September 11, 2015 the Respondent filed a supplemental filing in these proceedings in English but with an exhibit in Turkish.
3.8 On September 18, 2015 the Panel requested that the Center inform the parties that the Panel had extended the date for a filing of its decision in this matter to September 27, 2015.
4. Factual Background
4.1 The Complainant is based in France and is part of a group of companies engaged in the power transmission and distribution, energy resources, transportation and building business sectors. It has a presence in 40 countries and commercial activities worldwide, employing close to 26,000 people and generating sales in 2014 of Euro 6.4 billion. Part of that business involves the supply of cables and cable related accessories.
4.2 The term “Nexans” has been used by the Complainant’s Turkish affiliate as part of its name since 1986.
4.3 The Complainant is the owner of various trade marks that comprise or incorporate the term “Nexans”. They include:
(i) Turkish registered trade mark no 2001/03360 applied for on February 21, 2001 and which proceeded to registration on July 18, 2006 in class 9 and which takes the following form:
(ii) Turkish registered trade mark no 2001/02855 applied for on February 13, 2001 and which proceeded to registration on October 16, 2003 in classes 9 and 16 and which takes the following form:
4.4 The Complainant also holds numerous domain names of which the term “Nexans” forms a part.
4.5 The Domain Name was registered on June 7, 2005. It has subsequently been used by the Respondent for a website that has promoted the cable business of Meksan Kablo San. ve Tic. Ltd. Sti. under the “Meksan” name.
4.6 In or around February 2011, the Complainant issued trade mark infringement proceedings against the Meksan Kablo San. ve Tic. Ltd. Sti. in the Turkish courts in respect of the Respondent’s use of the “Meksan” name. Although there appears to be some dispute as to what actually happened in those proceedings, the following does not appear to be disputed:
(i) In or about June 2013 the Court held that the Respondent’s use of the term “Meksan” infringed the Complainant’s trade marks. It ordered that the Respondent shall stop using that term and that “access from Turkey to Internet website [operating from the Domain Name] be stopped.
(ii) The Turkish Supreme Court subsequent concluded that the Internet site operating from the Domain Name belonged to a Mr. Mustafa Ünal, the controlling shareholder and manager of the Respondent. As Mr. Ünal was not a party to the proceedings, the earlier ruling of the Turkish courts in relation to that website were reversed.
4.7 As a consequence of the rulings of the Turkish courts, the Respondent changed its business name to “MXN Kablo”. It currently used the domain name <mxnkablo.com>, but the Domain Name also continues to be used to direct Internet users to the Respondent’s website where it now uses its new “MXN Kablo” name.
4.8 On September 2, 2015 the Complainant sent a cease and desist letter to “MXN Kablo” in which the Complainant contended that given the statements made by the Respondent in these proceedings as to who actually controlled the Domain Name, it should cancel the Domain Name.
5. Parties’ Contentions
A. Complainant
5.1 The Complainant contends that the main element of the Domain Name is “meksan” and this is confusingly similar to its NEXANS trade mark. The addition of the term “kablo” is claimed to make no difference to the assessment since this is simply the Turkish word for “cable”. Indeed, given the Complainant’s use of the NEXANS mark for cable related goods and services, this is stated to increase the likelihood of confusion.
5.2 On the issue of likelihood of confusion the Complainant also refers to an expert report filed in the context of the Turkish proceedings between the parties.
5.3 So far as rights and legitimate interests are concerned, the Complainant contends that none of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy apply.
5.4 So far as bad faith is concerned, the Complainant contends that the Respondent “should have been aware of the NEXANS domain name registrations”. Further it contends that the “NEXANS” mark comprises an original name and is well known. It relies upon the fact that the Respondent has chosen the term “Meksan” to sell products and services identical to that of the Complainant. All these factors are said to lead to the conclusion that the Domain Name “has been both registered in bad faith and is being used in bad faith, with the deliberate aim to appropriate the reputation of the Complainant’s trade[ ]mark”.
B. Respondent
5.5 The Response was filed herein by MXN Kablo. In this Response MXN Kablo contends that although the Domain Name is registered in the name of “Edip Ozdemir” he is the co-founder of Tribend Web Design, which handles the IT and domain name related matters of MXN Kablo. MXN Kablo also contends that it is the “main owner” of the Domain Name. In light of that statement, the Panel when it refers to the Respondent in these proceedings, intends this to be a reference to MXN Kablo unless the contrary is apparent.
5.6 The Respondent denies that the Domain Name is confusingly similar to the Complainant’s mark. In this respect it claims that Domain Name and mark are not visually or aurally the same and disputes the significance of the reports and findings of the Turkish courts in this respect. The Respondent also contends that the use of the letter “X” in the Domain Name decreases the level of similarity because “it is not possible for a Turkish Internet user to write ‘X’ rather than ‘KS’ because in Turkey ‘X’ is not a letter of Turkish alphabet”.
5.7 The Respondent claims rights or legitimate interests in the Domain Name claiming that it registered the Domain Name in good faith in 2005 and then used it in business for 10 years. By reason of this use it is claimed that it is “known by the consumers in its sector since 2005 with fair use since 2005”. Rather than using the name of the Complainant’s business, it claims that it is using its own name.
5.8 So far as bad faith is concerned, the Respondent claims that the recent decision of the Turkish courts in proceedings between the parties had little or nothing to say about the issue of bad faith. It also relies on Google search results against the term “Meksan Kablo”, which are said to “prove that the Respondent registered and [is using the Domain Name] with good faith without trying to gain advantage from the reputation of the Complainant.”
5.9 Further, the Respondent claims that the Complainant has failed to submit evidence demonstrating either the Respondent’s bad faith, or that at the time of the registration of the Domain Name, the Complainant was well known in Turkey.
5.10 The Respondent finally asks the Panel to reach of finding of Reverse Domain Name Hijacking.
C. Supplemental Submissions
5.11 Although the Complainant filed a supplemental submission in these proceedings, it did not respond to the Panel’s request that if it intended to rely upon that submission, it should file a further short explanation as to why that supplemental filing should be admitted in these proceedings. Given this it is not necessary to consider or discuss that supplemental filing further.
5.12 The Respondent’s supplemental submission does little more than refer to the letter before action sent by the Complainant after these administrative proceedings had begun and which is described in greater detail in the Factual Background section of this decision above. As this letter was sent after the Respondent’s Response, this is not something that could have been addressed in its Response. The Panel, therefore, admits it into these proceedings.
5.13 The Respondent contends that this letter somehow demonstrates that the Complainant has acted in bad faith in those proceedings but does not go on to explain why this is said to be the case.
6. Discussion and Findings
6.1 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements in turn. Before it does so, it is convenient to briefly address the fact that the parties have been engaged in litigation in the Turkish courts in the past and that the Complainant has threatened litigation in relation to the Domain Name in future.
6.3 The fact that a party has threatened to bring litigation in relation to the subject matter of UDRP proceedings is not of itself inconsistent with those UDRP proceedings. Paragraph 4(k) of the Policy expressly preserves the right of either party to commence court proceedings either during UDRP proceedings or subsequent to those proceedings.
6.4 Paragraph 18 of the Rules provides that if litigation is commenced in the course of UDRP proceedings the Panel has discretion as to whether to suspend or terminate the UDRP proceedings. However, in this case and as far as the Panel is aware, no such litigation has been commenced.
6.5 Further, neither party has suggested to the Panel that either the past litigation or any threatened litigation in Turkey would justify the Panel from not proceeding to issue a decision under the UDRP in this case. Accordingly, the Panel will proceed to consider the substance of this matter.
6.6 The Respondent appears to contend that the fact that the Complainant is trying to use an admission made by it in the Response in possible future Turkish proceedings is somehow wrongful behaviour. What can and cannot be used as evidence in Turkish court proceedings is a matter for the Turkish court and not this Panel. However, the Panel does not believe that so far as the Policy and the Rules are concerned, the Complainant has done anything that justifies any criticism.
A. Identical or Confusingly Similar
6.7 Both parties have made submissions as to the impact of the findings of the Turkish courts on the issue of whether the Domain Name is confusingly similar to the Complainant’s mark. Although the Panel has considered those submissions they have not found them particularly helpful.
6.8 The concept of confusing similarity has its own independent meaning under the Policy. As is recorded in section 1.2 of the WIPO Overview 2.0:
“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms ... typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. ”
6.9 In the present case the Panel accepts that the most striking part of the Domain Name is the term “meksan”. The Panel accepts that the term “kablo” would most likely be understood as the Turkish work for “cable” and therefore constitutes a descriptive addition. Visually there is some similarity between the term “meksan” and the Complainant’s mark. However, aurally the terms are very similar with “ks” in this context being phonetically identical to the letter “x”. Given this, the Panel is satisfied that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
6.10 The Respondent appears to contend that the fact that the letter “x” is not a letter in the Turkish alphabet is something that points away from a finding of confusing similarity. But the Panel considers that if anything, the opposite is the case. This means that the letters “ks” in the Domain Name can be sensibly understood as a transliteration of the letter “x” into Turkish. Further, the Panel considers it not insignificant in this respect that the Respondent has chosen as its new name “MXN Kablo”. “MXN” is clearly intended to allude to the original “Meksan” name.
6.11 In the circumstances, the Complainant had made out the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.12 The Respondent contends that it has rights or legitimate interests in the Domain Name because it has used the term “Meksan Kablo” as the name of its business for 10 years. The Complainant contends that it does not because it was use that took advantage of a similarity with its NEXANS mark.
6.13 For reasons that the Panel explains in greater detail when considering the issue of bad faith below, the Panel finds on the balance of probabilities that the term “Meksan” was chosen because of its similarity to the Complainant’s NEXANS mark and with a view to taking unfair advantage of the same. Such use does not constitute a bona fide offering of goods or services within the scope of paragraph 4(c)(i) of the Policy.
6.14 That is not quite the end of the matter because paragraph 4(c)(ii) of the Policy also gives as an example of circumstances that demonstrates a right or legitimate interest, a respondent being “commonly known by the domain name, even if [it has] acquired no trademark or service mark rights”. Given what appears to be lengthy use by the Respondent of this term, the Respondent’s claim that this is the case here is not inherently implausible. The difficulty is that there is really no evidence before the Panel that substantiates that claim. We are told that the Respondent’s business has been “successful” but no evidence has been produced that whether by reason of that successful operation or otherwise the Respondent has become commonly known by the Doman Name or the name “Meksan Kablo”.
6.15 Further and in any event, regardless of what might have been the case in the past, the Respondent openly admits that it has been force to abandon the “Meksan Kablo” name as a result of proceedings against it in relation to that name in the Turkish courts. It is difficult to see how a person can claim a right or legitimate interest in a term because it has become commonly known by that name in circumstances where that term has been abandoned and where that abandonment is because a Turkish court has held that it can no longer use it.
6.16 In the circumstances, the Complainant had made out the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.17 The Respondent has criticised the Complaint in this case as failing to provide evidence of the fact that the term NEXANS was well known in Turkey at the time that the Respondent registered the Domain Name.
6.18 The degree of reputation of a mark can sometimes be highly relevant to a panel’s assessment of whether a domain name was registered in bad faith. The more well known a mark, the easier it will usually be to persuade a panel that a domain name was registered both with knowledge of that mark and with an intention to take some form of unfair advantage of the same.
6.19 However, in this case there are other factors which point to the Respondent having chosen the Domain Name with knowledge of the Complainant’s mark. It is undisputed that the mark itself is “coined”; i.e,. it has no generic or descriptive meaning in Turkish. It also appears to be undisputed that the Complainant’s Turkish affiliate was using that mark in Turkey before the Domain Name was registered. Further, it appears to be undisputed that the Respondent sells similar if not identical cable products and services to those of the Complainant. Further, the Complainant unambiguously alleges in the Complaint that the Domain Name must have been chosen with knowledge of the Complainant’s mark and this is not denied by the Respondent. The Panel therefore concludes that the Domain Name was registered with such knowledge.
6.20 Knowledge of another’s mark when one chooses a domain name that is similar to that mark does not necessarily mean that the domain name was registered in bad faith. However, the fact that the Respondent sells similar products and has chosen a domain name that is so similar to that of a Complainant’s “coined” mark again strongly points to the Domain Name have been registered with the intention of taking unfair advantage of those similarities.
6.21 The stance that the Respondent has taken in the Response on this issue also speaks volumes. A complainant bears the burden of proof under the Policy. However, it is striking that although the Respondent obviously knows its own motives for choosing the term “Meksan Kablo”, it has failed to offer any explanation for that choice in this case. Where a respondent decides to participate in proceedings under the Policy but fails to address head on what is often the most important issue in proceedings under the Policy; i.e., why the domain name was registered, a panel is entitled to draw an inference adverse to the respondent from that failure. The Panel draws such an adverse inference in this case. As a piece of evidence, the Respondent’s failure is the dog that did not bark (for an explanation of this canine reference see Credit Industriel et Commercial S.A. v. Demand Domains, Inc., WIPO Case No. D2009-1184 and Lisa Migliore Black, Migliore and Associates LLC v. Kentuckiana Reporters, WIPO Case No. D2012-1588).
6.22 Given this, the Panel concludes on the balance of probabilities that the name “Meksan Kablo” was chosen because of its similarity to the Complainant’s NEXANS mark and with a view to taking unfair advantage of that similarity. Accordingly, the Domain Name was both registered and has been used in bad faith and the Complainant had made out the requirement of paragraph 4(a)(iii) of the Policy.
7. Decision
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <meksankablo.com> be cancelled.
Matthew S. Harris
Presiding Panelist
Dilek Ustun Ekdial
Panelist
Luca Barbero
Panelist
Date: September 28, 2015