Subaru of America, Inc. v. AYBAZ BILGISAYAR ELEKTRONIK SISTEMLERI
Claim Number: FA2003001888080
Complainant is Subaru of America, Inc. (“Complainant”), represented by Mark Sommers of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is AYBAZ BILGISAYAR ELEKTRONIK SISTEMLERI (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <subarupark.com>, <subaruyedekparcam.com>, and <subaruyedekparçam.com> [<xn-subaruyedekparam-ppb.com>] (“Domain Names”), registered with Alantron Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 12, 2020; the Forum received payment on March 13, 2020.
On March 14, 2020, Alantron Inc. confirmed by e-mail to the Forum that the <subarupark.com>, <subaruyedekparcam.com>, and <subaruyedekparçam.com> [<xn-subaruyedekparam-ppb.com>] domain names are registered with Alantron Inc. and that Respondent is the current registrant of the names. Alantron Inc. has verified that Respondent is bound by the Alantron Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@subarupark.com, postmaster@subaruyedekparcam.com, postmaster@subaruyedekparçam.com. Also on March 18, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
One of the domain names in dispute, <subaruyedekparçam.com>, is an internationalized domain name (“IDN”) with the PUNYCODE translation of <xn-subaruyedekparam-ppb.com>. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters. In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE. For Respondent to display the <xn-subaruyedekparam-ppb.com> properly in the <subaruyedekparçam.com> domain name, it first had to encode it into the <xn-subaruyedekparam-ppb.com> domain name.
In the past, panels have found IDNs and their PUNYCODE translations to be equivalent. See Damien Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar). This Panel finds that the <subaruyedekparçam.com> domain name is the same as its PUNYCODE translation, <xn-subaruyedekparam-ppb.com>, for purposes of this proceeding.
The language of the Registration Agreement in this case is Turkish. The Complaint has been provided in English and Complainant has requested that the language of the proceeding be English.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Turkish language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”)
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. Shortly before the commencement of the proceedings but after the Complainant issued a cease and desist letter, the identity of the name registrant of each of the Domain Names was changed from a party located in the United States of America to a party located in Turkey. The website to which the <subarupark.com> Domain Name resolves, while a parking website, is entirely in English. Finally the named Respondent, being a Turkish electronics store, maintains an English-language website indicating that the Respondent has an ability to communicate in English. After considering the circumstances of the present case, the Panel decides that the proceeding be in English.
A. Complainant
Complainant uses the SUBARU mark in connection with the manufacture, marketing, and sale of automobiles. Complainant has rights in the SUBARU mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 689,801, registered Dec. 15, 1959). Respondent’s <subarupark.com>, <subaruyedekparcam.com>, and <subaruyedekparçam.com> [<xn-subaruyedekparam-ppb.com>] domain names are identical or confusingly similar to Complainant’s mark. The <subarupark.com>, <subaruyedekparcam.com>, and <subaruyedekparçam.com> [<xn-subaruyedekparam-ppb.com>] domain names incorporate Complainant’s mark and add descriptive or generic terms and the non-distinguishing “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <subarupark.com>, <subaruyedekparcam.com>, and <subaruyedekparçam.com> [<xn-subaruyedekparam-ppb.com>] domain names. Respondent is not commonly known by the Domain Names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent fails to use the Domain Names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the Domain Names resolve to either parked or inactive webpages.
Respondent registered and uses the <subarupark.com>, <subaruyedekparcam.com>, and <subaruyedekparçam.com> [<xn-subaruyedekparam-ppb.com>] domain names in bad faith. Respondent engages in a pattern of bad faith registrations by registering multiple domain names which infringe on Complainant’s mark. Respondent fails to make active use of the Domain Names, which resolve to either parked or inactive webpages. Respondent has failed to respond to any of Complainant’s demand letters. It is likely that Respondent altered the date on the WHOIS information at registration. Finally, given the fame of the SUBARU marks, it is likely that Respondent had actual knowledge of Complainant’s trademark rights at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SUBARU mark. Each of the Domain Names is confusingly similar to Complainant’s SUBARU mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the SUBARU mark based on registration with the USPTO (e.g. Reg. No. 689,801, registered Dec. 15, 1959). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that each of the Domain Names are confusingly similar to the SUBARU mark as they consist of the SUBARU mark, the generic or descriptive terms “park”, “yedeparcam” or “yedekparçam” and the “.com” gTLD. The term “yedekparcam” is Turkish and roughly translated relates to replacements or replacement parts. The addition of generic or descriptive terms and a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding that the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the NANO mark); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the SUBARU mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “AYBAZ BILGISAYAR ELEKTRONIK SISTEMLERI” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names are inactive and there is no other evidence of any intention to use the Domain Names for any purpose, be it a bona fide offering or legitimate non-commercial use. In the absence of any additional evidence (none available in the present case) inactive holding of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time it acquired the Domain Names Respondent had actual knowledge of Complainant’s SUBARU mark. While the Whois report for each of the Domain Names suggests that they were registered on January 1, 1970, such a record is obviously false and/or altered since the first domain names were not registered until 1985. Complainant provides persuasive evidence that suggest that Respondent acquired each of the Domain Names in June-July 2019. The Complainant has used the SUBARU mark since 1959 and the Respondent has not provided any explanation for its registration of three domain names that wholly incorporate Complainant’s mark, two of which add a reference to “spare parts”, suggesting a familiarity with Complainant’s automobile products. In the absence of rights or legitimate interests this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent has engaged in a pattern of conduct of registering domain names to prevent the owner of the SUBARU mark from reflecting is mark in the corresponding domain names. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)); Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Respondent has, without alternative explanation (or active use), registered 3 domain names wholly incorporate the SUBARU mark. This constitutes bad faith registration and use under Policy ¶¶ 4(b)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <subarupark.com>, <subaruyedekparcam.com>, and <subaruyedekparçam.com> [<xn-subaruyedekparam-ppb.com>] domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: April 11, 2020
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