The Complainant is Eclisse S.R.L., Treviso, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
The Respondent is Ugur Kemal Yildirim, Germany / Yahya Kemal Yildirim, Turkey.
The disputed domain names <eclisse.co>, <eclisse.live>, <eclisse.ltd> and <eclisse.online> are registered with GoDaddy.com, LLC and the disputed domain name <eclissedoor.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2019. On March 27, 2019, the Center transmitted by email to the Registrar PDR Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name <eclissedoor.com>. On March 28, 2019 the Registrar PDR Ltd. d/b/a PublicDomainRegistry.com 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 March 28, 2019 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 amended Complaint on April 5, 2019 adding four domain names to the Complaint. On April 10, 2019, the Center transmitted by email to the Registrar GoDaddy.com, LLC a request for registrar verification in connection with these added disputed domain names <eclisse.co>, <eclisse.live>, <eclisse.ltd> and <eclisse.online>. On April 10, 2019, the Registrar GoDaddy.com, LLC 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 together with the amended 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 April 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2019.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 15, 2019. 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 was founded on January 10, 1989 and manufactures sliding doors, door frames and locksmiths’ goods, particularly for sliding doors and windows, counting with 10 subsidiaries worldwide and 30 representative offices throughout the world.
The Complainant is the owner, amongst others, of the following trademark registrations:
- Italian Trademark Registration No. 0000551997 for ECLISSE registered on October 22, 1991, successively renewed;
- European Union Trademark Registration No. 000380931 for ECLISSE registered on November 18, 1998, successively renewed; and
- International Trademark Registration No. 576896 for ECLISSE registered on October 22, 1991, successively renewed.
The disputed domain names are the following and are presently used in connection with:
|
Disputed domain name |
Registration Date |
Owner |
Webpage |
|
<eclisse.co> |
April 20, 2013 |
Yahya Kemal Yildirim |
Redirects to the domain name <eclisse.com.tr> |
|
<eclisse.live> |
January 29, 2019 |
Yahya Kemal Yildirim |
Pay per click page |
|
<eclisse.ltd> |
January 27, 2019 |
Yahya Kemal Yildirim |
Pay per click page |
|
<eclisse.online> |
January 29, 2019 |
Yahya Kemal Yildirim |
Pay per click page |
|
<eclissedoor.com> |
October 14, 2018 |
Ugur Kemal Yildirim |
Not available |
There was a collaboration agreement between January 23, 2012 and March 11, 2016 in which Birikim Insaat was authorized to promote and sell the Complainant’s products in Turkey.
The Complainant asserts to be a renowned brand and a benchmark for the sliding and pocket doors’ industry, having become a leader in that field, with 10 subsidiaries and more than 30 representatives worldwide, it has also extensively used the ECLISSE trademark for almost 30 years.
The Complainant sustains that the disputed domain names are under common control of Mr. Yahya Kemal Yildirim, the managing director of Birikim Insaat a former distributor of the Complainant’s products in Turkey (Annex A to the Amended Complaint), having the <eclissedoor.com> disputed domain name been previously registered by Birikim Insaat, and later transferred to Ugur Kemal Yildirim after the Complainant’s reiterated requests for the transfer of all domain names containing the ECLISSE trademark to the Complainant (Annex B to the Amended Complaint). There is indication, according to the Complainant, that part of the WhoIs information relating to the disputed domain name <eclissedoor.com> is false (Annex C to the Amended Complaint), what could indicate the Respondent’s attempt to further conceal himself, making it more difficult for legal actions to be brought against him. The Complainant further adds that the email address relating to such disputed domain name is <yahyakemalim@[...]com>, which indicates that Yahya, and not Ugur, is indeed in control of such disputed domain name, not to mention the same family name, and therefore requests the consolidation of all domain names in this proceeding, avoiding unnecessary duplication of time, effort and expenses.
The Complainant further asserts that the disputed domain names are confusingly similar to its renowned trademark since they incorporate entirely the ECLISSE trademark, being the respective Top-Level Domains (“TLDs”) irrelevant and insufficient to avoid confusion. As to the <eclissedoor.com> disputed domain name, the Complainant argues that the addition of the descriptive term “door” is not sufficient to avoid confusion and, on the contrary, enhances it.
As to the absence of rights or legitimate interests in the disputed domain names, the Complainant argues that:
(a) no agreements, authorizations or licenses have been granted to the Respondent to use the Complainant’s trademarks;
(b) there is no evidence that the Respondent has trademark rights over ECLISSE or is known by the disputed domain names or the ECLISSE trademark;
(c) the <eclisse.live>, <eclisse.ltd>, <eclisse.online> and <eclissedoor.com> domain names have been passively held since their registration whereas the disputed domain name <eclisse.co> has been redirecting Internet users to the Complainant’s <eclisse.com.tr> webpage, and
(d) the collaboration agreement of January 23, 2012 that was in place between the Complainant and Birikim Insaat, represented by the Respondent, authorized the company Birikim Insaat (and not the Respondent) to use ECLISSE to promote and sell the Complainant’s goods solely in Turkey (Annex A to the Amended Complaint), having however such agreement been terminated on March 11, 2016, being the use of the ECLISSE brand and name automatically cancelled, undertaking the Distributor to immediately suspend use thereof (Annex D to the Amended Complaint), what was reiterated to the Respondent on several occasions (Annexes B and E to the Amended Complaint).
(e) it is difficult to infer a legitimate use of the disputed domain names by the Respondent in view of the reproduction of the Complainant’s renowned trademark.
According to the Complainant, the registration of the disputed domain names, was clearly done in bad faith given the Respondent’s actual and undoubtful knowledge of the Complainant, being it difficult to infer a legitimate use of the disputed domain names by the Respondent. The Complainant further indicates that the use of the ECLISSE trademark in its entirety without plausible good faith use and the intentional attempting to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known trademark are unambiguous evidence of the registration and use of the disputed domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has requested the consolidation of all disputed domain names in this proceeding arguing that they are under common control.
Section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) establishes that “[i]n assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.
All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the five disputed domain names dealt with at the same procedure given that they relate to the same Respondent, Mr. Yahya Kemal Yildirim, the managing director of Birikim Insaat a former distributor of the Complainant’s products in Turkey (Annex A to the Amended Complaint).
The transfer of the disputed domain name <eclissedoor.com> to Ugur Kemal Yildirim, an individual bearing the same family name, after the Complainant’s requests for the transfer of all domain names containing the ECLISSE trademark to the Complainant (Annex B to the Amended Complaint) is a strong indication, together with the email address <yahyakemalim@[...]com> that Yahya, and not Ugur, is in control of that domain name as well. The Panel agrees to the consolidation of all disputed domain names in this proceeding, avoiding unnecessary duplication of time, effort and expenses, what is within the scope of the Policy.
The Complainant has established rights in the ECLISSE trademark.
The disputed domain names include the Complainant’s trademark in its entirety, being the respective TLDs not to be taken into account as already established in case law under the Policy. As to the <eclissedoor.com> disputed domain name, the addition of the descriptive term ‘door’ does not prevent a finding of confusing similarity to the Complainant’s ECLISSE trademark.
The first element of the Policy has therefore been established.
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In that sense, the Complainant states that no agreements, authorizations or licenses have been granted to the Respondent to use the Complainant’s trademarks.
According to the evidence filed, the collaboration agreement of January 23, 2012 that was in place between the Complainant and Birikim Insaat, represented by the Respondent, authorized the company Birikim Insaat (and not the Respondent) to use the ECLISSE trademark to promote and sell the Complainant’s goods solely in Turkey (Annex A to the Amended Complaint), but expressly stated that the distributor “shall not acquire the property or franchising rights or licenses for the brands and names” (clause 9.1 of the “Technical Collaboration and Supply Agreement” - Annex A to the Amended Complaint).
In addition to that, having however such agreement been terminated on March 11, 2016, the use of the ECLISSE trademark and name automatically cancelled, also according to the referred to clause 9.1 of the “Technical Collaboration and Supply Agreement” (Annex A to the Amended Complaint), which stated in its final part that:
“The DISTRIBUTOR’s authorization to use the brand and names within the restrictions specified in this clause shall be automatically cancelled should the Contract be terminated or cancelled for any reason. In this case the DISTRIBUTOR shall immediately suspend its use after such cancellation or termination.”
Such obligation and undertaking from the Distributor to immediately suspend use of the trademarks was reiterated in the termination notice of the Cooperation and Supply Agreement, which was signed by the Respondent, as representative of Birikim Insaat (“Always from the date of receipt of this notice, in accordance with art. 9.1 of the contract, it is prohibited from using the trademark “Eclisse”, in every from and kind.” - Annex D to the Amended Complaint), and further reiterated to the Respondent on several occasions (Annexes B and E to the Amended Complaint) and therefore corroborate with a finding of the Respondent’s lack of rights or legitimate interest on the disputed domain names.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain names in bad faith can be found in view of the Respondent’s actual and undoubtful knowledge of the Complainant, being it difficult to infer a legitimate use of the disputed domain names by the Respondent.
More specially, on the termination notice of March 11, 2016 (Annex B to the Amended Complaint), signed by the Respondent on behalf of Birikim Insaat, an express prohibition of the use of the ECLISSE trademark “in every form and kind” is made, not being conceivable that the Respondent could claim a bona fide use of the disputed domain names, other than to profiting from the Complainant’s trademark or misleadingly diverting consumers for his own commercial gain.
As to the registration of the <eclisse.co> disputed domain name, which took place on April 20, 2013 and was done by Birikim Insaat, which later assigned to the Respondent, the representative for such company, it was done in bad faith and against the provisions of the collaboration agreement of January 23, 2012 which expressly stated that the distributor “shall not acquire the property or franchising rights or licenses for the brands and names” (clause 9.1 of the “Technical Collaboration and Supply Agreement - Annex A to the Amended Complaint).
The four other disputed domain names, more recently registered and under common control of the Respondent indicate the Respondent’s willingness intentionally attempt to attract, for commercial gain, Internet users to his websites or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names.
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 names, <eclisse.co>, <eclissedoor.com>, <eclisse.live>, <eclisse.ltd> and <eclisse.online> be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: June 7, 2019