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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fenis Teknik Urunler A.S. V. Tekfen Dogalgaz Muh.Isi Ltd.ST

Case No. D2008-0002

1. The Parties

The Complainant is Fenis Teknik Urunler A.S., of Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

The Respondent is Tekfen Dogalgaz Muh.Isi Ltd.ST, of Turkey.

2. The Domain Name and Registrar

The disputed domain name <alurad.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2008. On January 3, 2008, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On January 3, 2008, Intercosmos Media Group d/b/a directNIC.com 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2008.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on February 22, 2008. 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 Respondent had registered the disputed domain name on August 26, 1998. The domain name is used in connection with a website that offers products related to under-floor heating and central vacuum cleaning systems.

The trademark belonging to the Complainant is ALURAD and was registered in classes 6 and 11 in 1989. The Complainant also registered the trademark ALURAD in special characters in classes 6, 11, 35, 37, 40, and 42 in 2004.

The Complainant filed an application with OHIM on July 11, 2007 for the registration of ALURAD. The application has been accepted and will be proceeding for publication.

The Complainant is registered as a company since 1967. It has registered the website“www.alurad.com.tr” on August 3, 2000 and uses it for offering its products; radiators and solar collectors.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- It is a well-known company established in 1967 to produce and sell aluminum based radiators and solar collectors and has created the trademarks ALURAD and SOLARTEK.

- It has developed the brand “alurad” which it uses in connection with heating radiators. It exports its products in countries other than Turkey such as the European Market.

- It operates the website“www.alurad.com.tr”.

- The disputed domain name is identical to a mark in which the Complainant has rights for the following reasons:

1) The Complainant was founded in 1967, has registered the trademark ALURAD in Turkey and has applied for its registration with OHIM and owns the domain name <alurad.com.tr> since August 2000.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:

1) The Respondent has made no claim that he is using the domain name in connection with a bona fide offering of goods and services as the Complainant has not licensed or allowed the Respondent the use of the trademark ALURAD nor the use of that trademark as part of a domain name, the Respondent is not one of the dealers of the Complainant, the Complainant has rights in the trade/service mark which are prior to the registration of the disputed domain name, the Respondent has no legitimate interest in using its domain name with the trademark ALURAD and is trying to create connection with the Complainant through such use. The Respondent is aware of the goodwill and reputation of the mark ALURAD.

2) The disputed domain name is not a mark by which the Respondent is commonly known as the Respondent has not acquired any rights in the mark nor seems to be known by the disputed domain name.

3) The Respondent has no legitimate non-commercial or fair use of the domain name and the Complainant was not able to register the disputed domain name in its name because it was already registered by the Respondent.

- The domain name was registered and is being used in bad faith by the Respondent. This conclusion is supported by various factors:

1) The Respondent is trying to attract Internet users to its website by creating a link with the trademark of the Complainant. The Respondent must have known that it is infringing upon the Complainant’s rights in its mark when it registered the disputed domain name. The Respondent is trying to create association with the Complainant. The Respondent must have been aware of the Complainant’s mark since both the Complainant and the Respondent are in the same country and operate in the same field.

2) The Respondent registered the disputed domain name in order to prevent the Complainant from registering the same domain name for the purpose of offline selling to customers. The Respondent knew the trademark is well-known, which is proof of its bad faith.

3) The Respondent, being a competitor of the Complainant, wanted to divert the latter’s customers by creating the web-site. It used the mark belonging to the Complainant knowingly and in bad faith to benefit from its reputation. The Respondent has also copied pages from the Complainant’s catalogue and website to use them under the disputed domain name, including the Complainant’s trademark FENTEK. There is no evidence of good faith use of the disputed domain name. These acts constitute unfair competition and infringement of consumer protection legislation.

For all of the above reasons, the Complainant requests transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The trademark belonging to the Complainant is ALURAD and was registered in classes 6 and 11 in 1989. The Complainant has also registered the trademark ALURAD in special characters in classes 6, 11, 35, 37, 40, and 42 in 2004. The registration dating back to the year 1989 is far earlier in date than the date of registration of the disputed domain name which took place in 1998. The Complainant uses the trademark ALURAD in connection with radiators.

The difference between the Complainant’s trademark ALURAD and the disputed domain name is simply adding the word “.com”. The addition of the suffix “.com” does not create any distinctiveness that helps eliminate the possibility of confusion. In similar cases, the addition of the suffix “.com” was considered not to add any element of distinctiveness (see Nokia Corporation v. Firdaus Adinegoro/Beli Hosting, WIPO Case No. D2004-0814).

Consequently, the Panel finds that the Complainant has met the requirements of the first test under the Policy.

B. Rights or Legitimate Interests

The Respondent is not linked to the Complainant or its business in any manner nor does it act on its behalf. The Complainant contends that it had not given any authorization to the Respondent to use the trademark ALURAD as part of the disputed domain name.

The Respondent can demonstrate its rights or legitimate interest in the disputed domain name in accordance with paragraph 4(c) of the Policy. In this paragraph, the following are listed as circumstances that, in particular but without limitation, would demonstrate a respondent’s legitimate interest or right in a disputed domain name:

i) that the Respondent used or presented demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services;

ii) that the Respondent has been commonly known by the domain name;

iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of the Complainant.

The Respondent did not submit any evidence that establishes its rights or legitimate interests based on any of the above scenarios. While failure to respond does not present conclusive evidence against the Respondent and the burden of proof lies with the Complainant, the Panel did consider this factor as further proof of the Respondent’s lack of rights or legitimate interests in the disputed domain name (See Nokia Corporation v. Firdaus Adinegoro/Beli Hosting, WIPO Case No. D2004-0814).

The disputed domain name is being used in connection with the offering of goods, which are under-floor radiators. However, such use here is not bona fide. The reason why the Panel considers such use not to be a bona fide use is that, on a balance of probabilities, the Respondent, operative in the same field of business as the Complainant, must have been familiar with the business and trademark of the Complainant. Based on the evidence submitted by the Complainant, the Panel was satisfied that the trademark of the Complainant is relatively well-known. The Panel was guided by previous WIPO UDRP cases in reaching this conclusion. “In the Panel’s opinion, the use of the expression “bona fide” in Paragraph 4(c)(i) is sufficient to prevent a respondent who knowingly adopted another’s well known mark as a domain name from claiming the benefit of mere use of or demonstrable preparations to use the domain name in connection with the offering of goods or services prior to notice of a dispute. The Panel accepts that SCANIA is a well known mark in the motor industry, particularly in Sweden, and, accordingly takes the view that the respondent would have been unlikely to have been unaware of the fame of the complainant’s mark SCANIA in the motor industry before adopting the name.” (See Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169). It is the view of the Panel that similar reasoning applies to the case at hand.

Based on all of the above factors, the Panel finds no rights or legitimate interest of the Respondent in the disputed domain name.

C. Registered and Used in Bad Faith

It is suggestive of Respondent’s bad faith that the trademark of the Complainant was registered long before the registration of the disputed domain name. Even though the domain name of the Complainant was registered two years after the registration of the disputed domain name, this factor does not affect the right of the Complainant in the protection of its trademark. The Complainant submitted various press releases which show the name of the Complainant and its trademark ALURAD. Such material indicates that the Complainant is a relatively known enterprise and that its trademark would hence be recognized publicly.

The Panel visited the website of the Complainant and noted that the trademark ALURAD is shown prominently on the website and also noted that the Complainant has a logo resembling a flag used together with the mark FENIS. The Panel visited the website of the disputed domain name and noted the use of the name FENTEK and a logo similar to that used by the Complainant which appears in the shape of a flag.

The Panel notes from the website of the Complainant that it sells radiators under the brand ALURAD. The Panel notes that the Respondent uses the disputed domain name for offering and advertising heating products. Both Complainant and Respondent operate in the same field and in the same country. This suggests further that the Respondent was aware of the existence and of the business of the Complainant.

Paragraph 4(b) of the Policy sets out a number of circumstances, each of which shall provide evidence of registration and use in bad faith. Paragraph 4(b)(iv) sets out the following element: “By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. The Respondent works in the same field of business of the Complainant and it is therefore most likely that it used the trademark and the logo of the Complainant as mentioned above to create confusion and divert customers.

Accordingly, it is the Panel’s view that, on a balance of probabilities, the Respondent had actual knowledge of the trademark of the Complainant and the products/services in connection with which the trademark is used. As it was noted in Herbalife International, Inc v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Accordingly, the Panel concludes that the bad faith test was met.

As a final note, the Panel finds it necessary to discuss the fact that the Complainant waited almost ten years to bring forward a claim against the Respondent. However, the Panel is of the view that such delay does not affect the rights of the Complainant in its mark nor does it constitute a waiver of such rights in the particular circumstances of this case. The Panel reviewed other decisions which raised the question of whether a delay in bringing forward a claim is a reason to bar the complainant from requesting a transfer. The Panel agrees with the finding of certain other panelists. “There is one question outstanding: does the fact that Complainant delayed for 10 years following registration of the disputed domain name to bring this action against Respondent act as a bar to a finding in favor of Complainant? In this proceeding, there is no indication of any correspondence between Complainant and/or any representative of Complainant, on one side, with Respondent, on the other, or similar evidence, to suggest or imply that Complainant may have approved of or condoned Respondent’s use. Without some substantial evidence to indicate that Complainant approved of or condoned Respondent’s use of his mark in the disputed domain name, the Panel is not prepared to import a bar against his cause of action.” (See Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560).

In conclusion, the Panel finds that the third test under paragraph 4(a) has been established successfully by the Complainant.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <alurad.com> be transferred to the Complainant.

Nasser A. Khasawneh
Sole Panelist

Date: March 7, 2008