The Complainant is NXP B.V. of Eindhoven, the Netherlands, represented by Pointer Brand Protection and Research, the Netherlands.
The Respondent is Biometrik Perkotek, Biometrik Perkotek Personel Devam Kontrol Teknolojileri of Istanbul, Turkey.
The disputed domain name <e-mifare.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2016. On February 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2016, 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 February 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2016
The Center appointed Kaya Köklü as the sole panelist in this matter on March 29, 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.
The Complainant is a company active in the field of contactless IC (integrated circuit) products. Since 1994, these products have been sold under the brand MIFARE, which is protected as a wordmark in a large number of jurisdictions, including in Turkey. The Turkish trademark registration for the wordmark MIFARE dates back to the year 1997 and claims protection particularly for all kinds of IC products as covered by class 9.
The Complainant further holds and operates various domain names comprising its trademark MIFARE, such as <mifare.net>.
The disputed domain name was created on September 9, 2009.
The disputed domain name resolves to a website on which the Respondent, a company from Turkey, offers NFC (near field communication) and RFID (radio frequency identification) card readers from various manufacturers for sale. According to screenshots provided in the case file, the website contains a prominently placed statement at the top of the website containing the allegation that the Respondent is the official distributor for MIFARE card readers in Turkey.
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its MIFARE trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link between the Respondent and the Complainant.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly argues that the Respondent was aware of the Complainant’s MIFARE trademark, when registering the disputed domain name in 2009. Concerning bad faith use, the Complainant points out that the Respondent even refers to the MIFARE trademark on its website, without sufficiently disclosing the lack of relationship with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has 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 Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where appropriate, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.
The Panel finds that the Complainant has registered trademark rights in the mark MIFARE by virtue of a large number of trademark registrations, including a trademark registration in Turkey (TPE No. 188881, registered on July 28, 1997).
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s MIFARE trademark, as it fully incorporates the Complainant’s trademark. The mere addition of the letter “e” does not serve to distinguish the disputed domain name from the Complainant’s MIFARE trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the complainant is required to make out a prima facie case before the burden of production of evidence shifts to the respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark MIFARE in a confusingly similar way within the disputed domain name.
In the absence of a Response by the Respondent, there is no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.
The Panel rather believes that the Respondent at least tried to gain commercial benefit by using a domain name which fully incorporates the Complainant’s trademark MIFARE. In this regard, the Panel notes that the Respondent’s website which was linked to the disputed domain name did not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant, thus creating the false impression that the Respondent is the official and authorised distributor of the Complainant’s products in Turkey.
All in all, there is no indication that the Respondent is making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain to misleadingly divert users or to tarnish the MIFARE trademark.
Hence, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
The Panel is further convinced that the Respondent has registered and used the disputed domain name in bad faith.
The Panel believes that the Respondent must have known of the MIFARE trademark when registering the disputed domain name in 2009. This is in particular likely as the disputed domain name has been registered well after the Complainant’s first MIFARE trademark registration in Turkey in 1997.
It rather appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant and its products. After having reviewed the provided screenshots in the case file, the Panel is convinced that the Respondent has intentionally registered the disputed domain name to offer NFC and RFID related products by creating the impression that it is the official distributor of the Complainant in Turkey. The Panel is convinced that the Respondent has intended to mislead Internet users who may search for official products by the Complainant.
All in all, the Panel concludes that the disputed domain name was registered and used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
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, <e-mifare.com> be transferred to the Complainant.
Kaya Köklü
Sole Panelist
Date: April 14, 2016