The Complainant is NXP B.V. of Eindhoven, the Netherlands, represented by Pointer Brand Protection and Research, the Netherlands.
The Respondent is Mehmet Kaya of Mersin, Turkey.
The disputed domain name <1kmifare.com> is registered with Nics Telekomünikasyon Ticaret Ltd. Şti. (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 12, 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, and indicating that Turkish was the language of the registration agreement for the disputed domain name. The Center sent an email communication to the Complainant on February 17, 2016, requesting that the Complainant provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English; or, to submit the Complaint translated into Turkish; or, to submit a request for English to be the language of the administrative proceeding. On February 18, 2016, the Complainant submitted a request that English be the language of the administrative proceeding. On February 22, 2016, the Respondent sent a brief email communication to the Center requesting that Turkish be the language of the administrative proceeding.
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 in both Turkish and English, and the proceeding commenced on February 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2016.
The Center appointed Kaya Köklü as the sole panelist in this matter on March 24, 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.
On April 8, 2016, the Center received an email communication from the Respondent.
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 October 4, 2012.
The disputed domain name resolves to a website on which the Respondent, an individual from Turkey, offers generic RFID (radio frequency identification) bracelets for sale. According to screenshots provided in the case file, the website contains several links to other websites of the Respondent on which further RFID products are offered. On its website, the Respondent also uses the MIFARE trademark prominently in a logo.
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 2012. Concerning bad faith use, the Complainant points out that the Respondent uses the MIFARE trademark in a logo throughout its website, without sufficiently disclosing the lack of relationship with the Complainant.
The Respondent did not formally reply to the Complainant’s contentions.
However, the Center received two email communications by the Respondent in the Turkish language.
As already mentioned above, the first email, dated February 22, 2016, contains the Respondent’s language request.
In its second email, dated April 8, 2016 (and hence, received by the Center more than three weeks after the due date for a Response), the Respondent claims to have a right to use the disputed domain name based on the “first-to-file” principle. Furthermore, the Respondent argues that he uses genuine MIFARE chips for his bracelets. Finally, this email contains the unambiguous offer to transfer the disputed domain name to the Complainant for a reasonable price.
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 determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the Registration Agreement is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a costly and time consuming Turkish translation of the Complaint, while the Respondent failed to file any formal Response by the due date, although being informed by the Center in Turkish and English of the Complaint and relevant filing deadlines. Although being explicitly permitted to submit his Response in the Turkish language, the Respondent remained silent on the Complaint through the Response due date. Taking into consideration that the present case apparently is a typical case of cybersquatting that the UDRP was designed to stop, and that the Panel, which will be discussed next, has considered the Respondent’s Turkish language email of April 8, 2016, the Panel believes that the Respondent will not be prejudiced by a decision being rendered in the English language.
The Panel notes that the Center received an email communication from the Respondent on April 8, 2016.
The Panel follows the reasoning of the panel in Viz Communications, Inc. v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905, that it is appropriate to consider the circumstances of each case before deciding whether or not to admit additional or late-filed submissions.
In this case, the email communication by the Respondent of April 8, 2016 contains nothing that would have relevant impact on the Panel’s final decision. The Panel sees no reason and particularly no disadvantage for the Complainant not to take the Respondent’s short email into account.
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 “1k” 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 formal 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 Respondent’s reference to the “first come, first served” principle is not helpful as this principle does not apply if prevailing trademark rights are affected, like in the present case. Also, the Respondent’s allegation that it uses genuine MIFARE chips for his bracelets does not provide him a right to use the Complainant’s trademark within the disputed domain name and the respective website without sufficiently disclosing the lack of relationship with the Complainant.
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 an official and authorised affiliate or reseller for the Complainant’s products.
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. 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, in particular with its products and services. 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 RFID products by creating the impression that it is somehow officially linked to the Complainant. Not only the disputed domain name but also the use of the MIFARE trademark as a logo on the website that was linked to the disputed domain name give the impression 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 <1kmifare.com> be transferred to the Complainant.
Kaya Köklü
Sole Panelist
Date: April 14, 2016