WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tekfen Insaat Ve Tesisat Anonim Sirketi v. Domain Hostmaster, Customer ID: 59451265801034, Whois Privacy Services Pty Ltd / Frank Gerdes

Case No. D2017-2584

1. The Parties

The Complainant is Tekfen Insaat Ve Tesisat Anonim Sirketi of Istanbul, Turkey, represented by Karar Patent, Turkey.

The Respondent is Domain Hostmaster, Customer ID: 59451265801034, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Frank Gerdes, Utrecht, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <tekfen.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 26, 2017. On December 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 10, 2018.

The Center verified that the Complaint together with the amendment to 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 January 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2018.

The Center appointed Kaya Köklü as the sole panelist in this matter on February 14, 2018. 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

The Complainant belongs to a group of Turkish companies, which are mainly active in the fields of construction, engineering and real estate. The history of the Complainant dates back to the year 1956. It now belongs to the most famous construction companies in Turkey with an annual turnover of more than 1 billion USD.

It is the owner of various word and figurative TEKFEN trademark registrations around the world, including in Turkey. According to the provided documents in the case file, the Complainant is, inter alia, the registered owner of the Turkish Trademark Registration No. 99439 (registered on December 31, 1997), covering protection for products in classes 6, 7, 9 and 19.

The Complainant also owns and operates the domain name <tekfen.com.tr>.

The Respondent seems to be an individual located in Utrecht, the Netherlands.

The disputed domain name was registered on October 27, 2002.

The screenshots, as provided by the Complainant in the case file, show that in the past years, the disputed domain name <tekfen.com> resolved to various pay-per-click websites. Currently, the disputed domain name resolves to a Sedo parking page.

According to own investigations carried out by the Panel, the Respondent was already involved in a previous UDRP case, namely Philadelphia Orchestra Association v. Kimmelcenter.com / WhoIs Privacy Services Pty Ltd. / Frank Gerdes, WIPO Case No. D2011-0607. The panel decided in this case that the domain name in dispute had to be transferred to the respective complainant.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is identical to its TEKFEN trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 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.

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’s contentions. 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 relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the WIPO Overview 3.0.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant is the owner of various TEKFEN trademark registrations around the world.

The disputed domain name is identical to the Complainant’s TEKFEN trademark as it incorporates the Complainant’s trademark in its entirety without any additions or amendments.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

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, previous UDRP 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. See, 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, paragraphs 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 TEKFEN trademark within the disputed domain name. Additionally, there is no indication in the case file that the Respondent was or is not known by the disputed domain name.

Finally, there is also no indication in the case file that would allow accepting a forfeiture of rights by the Complainant in the present case, even if more than 15 years have passed since the registration of the disputed domain name. Neither the UDRP nor the facts of the case would justify a denial of the Complainant’s claim for transfer of the disputed domain name due to a delay in initiating the present UDRP administrative proceedings. The Respondent did not provide any indication that the Complainant has delayed its Complaint in a legally abusive manner. In the Panel’s view, such indication, if at all, would only be given if the Complainant intentionally had caused the false impression by way of any explicit or implicit behavior that it will tolerate the use of the disputed domain name. The case file, at least, does not contain any such indication that would justify such an assessment of a forfeiture of rights.

As a conclusion, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel notes the reputation and wide recognition of the Complainant’s trademark TEKFEN trademark in Turkey since many years. As the trademark is an artificial composition of letters without any dictionary meaning, the Panel is convinced that the Respondent must have had this well-known Turkish trademark in mind when registering the disputed domain name.

In the Panel’s view, it appears that the Respondent has registered and used the disputed domain name for the purpose of creating an association with the Complainant.. The Complainant provided evidence showing that the disputed domain name has resolved to various web pages displaying pay-per-click links, related to the Complainant’s field of activity, from which it may be inferred that the Respondent derives revenue. Moreover, it may also be inferred that by making such of the disputed domain name, which is identical to the Complainant’s trademark, the Respondent aimed at diverting Internet traffic from the Complainant’s site to the Respondent’s site.

The Panel finds that such use attracting Internet traffic by pay-per-click links is an indication for bad faith registration and use under paragraph 4(b)(iv) of the Policy.

Furthermore, the Panel finds that the Respondent’s failure to respond to the Complaint also supports the conclusion that it has registered and is using the disputed domain name in bad faith. The Panel believes that, if the Respondent had legitimate purposes in registering and using the disputed domain name, it would have probably responded.

The Panel therefore concludes that the disputed domain name was registered and is 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.

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 <tekfen.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: March 8, 2018