Clark Equipment Company v. ferhat yildirim
Claim Number: FA1801001768110
Complainant is Clark Equipment Company (“Complainant”), represented by Laura M Konkel of Michael Best & Friedrich LLP, United States of America. Respondent is ferhat yildirim (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sahinbobcat.com>, registered with Nics Telekomünikasyon Tic Ltd. Sti..
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 22, 2018; the Forum received payment on January 22, 2018.
On January 24, 2018, Nics Telekomünikasyon Tic Ltd. Sti. confirmed by e-mail to the Forum that the <sahinbobcat.com> domain name is registered with Nics Telekomünikasyon Tic Ltd. Sti. and that Respondent is the current registrant of the name. Nics Telekomünikasyon Tic Ltd. Sti. has verified that Respondent is bound by the Nics Telekomünikasyon Tic Ltd. Sti. 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 January 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2018 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@sahinbobcat.com. Also on January 30, 2018, 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 February 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(b)(viii).
This Complaint is based on U.S. federal and Turkish trademark registrations for BOBCAT owned by Complainant, which does business as Bobcat Company, for compact construction equipment such as skid steer loaders, front end loaders, backhoes, trenchers, and excavators and related equipment, including attachments, as well as parts, merchandise, and services.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] The Domain Name is confusingly similar to Complainant’s trademark. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
The Domain Name was created in 2016, long after Complainant started using and registered its BOBCAT trademark.
Addition of the surname “Sahin” does not avoid a likelihood of confusion under Policy ¶4(1)(i). Jaguar Land Rover Limited v. David Cullens, FA1618499 (Forum June 15, 2015) (<dimmittlandrover.com> confusingly similar to LAND ROVER mark. “The Domain Name comprises Complainant’s famous LAND ROVER trademark, preceded by the personal name Dimmit. It is clearly confusingly similar to Complainant’s mark, the top level domain ‘.com’ being generally regarded as irrelevant.”); State Farm Mutual Automobile Insurance Company v. iPage Hosting / Eric White, FA1528918 (Forum December 4, 2013) (“The disputed domain name is comprised of the surname McIntyre, Complainant’s STATE FARM mark, and the ‘.com’ top‐level domain suffix. The Panel considers the disputed domain name to be confusingly similar to Complainant’s mark.”).
[b.] Respondent has no rights or legitimate interests in the Domain Name. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
The Domain Name website shows Complainant’s competitors, such as Komatsu, Gehl, and Caterpillar, and competitor equipment.
This is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Names pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii). Clark Equipment Company v emre erdem / turkey, FA1594886 (Forum January 25, 2015) (“There is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Complainant provides evidence that the domain name resolves to a website which promotes competing product lines. In particular, the resolving website includes the logos and trademarks of Complainant’s competitors, along with their products.”); Clark Equipment Company v. Olofssons i Syd AB / Jens Knutsson, FA1427947 (Forum March 22, 2012) (“Complainant argues that Respondent makes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <bobcatsverige.com> domain name because Respondent uses the domain name to resolve to a website advertising Complainant’s BOBCAT products and the products of Complainant’s competitors. [ . . . ] The Panel agrees with Complainant and determines that using the disputed domain name to sell Complainant and other companies’ products without authorization is neither a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use of the <bobcatsverige.com> domain name.”).
The Domain Name also displays copyright‐protected photos and text taken from the https://bobcat.hamamcioglu.com website of Complainant’s authorized Turkish dealer, Hamamcioğlu, making it appear as though the Domain Name website is owned, operated, approved by Complainant.
Further, the Domain Name website does not disclose Respondent’s lack of relationship with Complainant. All of this conduct deceives consumers and is not a bona fide offering of goods or services. Dell Inc. v. Mahesh Lalwani, FA 1587876 (Forum December 8, 2014) (Panel ordered transfer of domain names that resolved to a website copying the look and feel of Complainant own websites and featured slogans and images from Complainant’s website. “Respondent’s attempts to pass itself off as Complainant, or as an affiliate of Complainant in order to promote and sell Complainant’s products and products in competition with Complainant amounts to neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy ¶¶4(c)(i) or (iii), respectively.”); Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights, D2010‐0211 (WIPO April 22, 2010) (finding no rights or legitimate interests in the disputed domains in part because “the overall look and ‘feel’ of the Respondent's websites are such that they could easily be confused by Internet users with the Complainant's ‘official’ websites”).
Respondent is not commonly known by the Domain Name and Complainant did not authorize Respondent to use its BOBCAT mark, further demonstrating Respondent’s lack of rights and legitimate interests in the Domain Name under Policy ¶4(c)(ii). See, e.g., Dell Inc. v. zhu honglin, FA1679635 (Forum July 21, 2016).
[c.] The Domain Name was registered and is being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
Respondent certainly knew of Complainant’s BOBCAT mark when he registered the Domain Name given Complainant’s fame and prior use and registration of numerous BOBCAT marks in the U.S. (Complainant’s home country) and Turkey (Respondent’s home country). This is evidence of Registrant’s bad faith registration and use of the Domain Name to disrupt Complainant’s business. Honeywell International Inc. v. Zainal Abidin, FA1451797 (Forum August 14, 2012) (Panel found that the respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii) because the complainant’s mark was well‐known and registered prior to the respondent’s registration of the disputed domain name); Noodle Time, Inc. v. Above.com Domain Privacy, FA1451411 (Forum August 7, 2012) (“the Panel finds that, due to the fame of Complainant’s mark, Respondent had actual knowledge of the mark and Complainant’s rights”). Respondent also accessed the website of Complaint’s dealer to copy photos and text, confirming Respondent’s knowledge of Complainant.
Respondent’s use of the Domain Name to promote Complainant’s competitors also constitutes bad faith registration and use under Policy ¶4(b)(iii). Experian Information Solutions, Inc. v. Credit Research, Inc., Case No. D2002‐0095 (WIPO May 7, 2002) (“Respondent’s illegitimate use of Complainant’s marks in order to sell the products of Complainant’s competitors is a clear indication of bad faith.”); Homer TLC, Inc. v. shahrul naim, FA 1583870 (Forum November 18, 2014) (“Respondent’s use of the disputed domain name competes with Complainant, and therefore disrupts Complainant’s business.”).
Respondent’s efforts to pass itself off as an affiliate of Complainant by using content copied from the website of Complainant’s authorized dealer creates a likelihood of Internet user confusion from which Respondent commercially benefits through the sale and promotion of Complainant’s products and products of Complainant’s competitors. This demonstrates a scheme to profit from the likelihood of Internet user confusion and is evidence of Policy ¶4(b)(iv) bad faith. Dell Inc. v. Mahesh Lalwani, FA 1587876 (Forum December 8, 2014).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Language Request
Complainant requests this Proceeding should take place in English pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Turkish language Registration Agreement. 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:
See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO Jul. 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 Jun. 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.”).
In this case, the Registration Agreement is written in English as well as Turkish, even though the registrar’s response indicates the Registration Agreement is only in Turkish. The English Registration Agreement does not contain a provision making only the Turkish language version authentic. Either text is equally authentic. A Proceeding may take place in either language.
Pursuant to UDRP Rule 11(a), the Panel finds sufficient persuasive evidence has been adduced by Complainant to suggest Respondent is sufficiently conversant and proficient in the English language even though Respondent’s web site is in Turkish. After considering the circumstances of the present case, the Panel decides this default Proceeding should be in English.
Complainant claims rights in the BOBCAT mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 890,034, registered on April 28, 1970) and the Government of Turkey’s Patent Institute (“TPI”) (Reg. No. 2010/04778, registered March 29, 2011). Registration with a governmental trademark agency, such as the USPTO or the TPI, is sufficient to prove Policy ¶4(a)(i) rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶4(a)(i)). Complainant has rights in the BOBCAT mark under policy ¶4(a)(i).
Complainant claims Respondent’s <sahinbobcat.com> is confusingly similar to the BOBCAT mark because it combines Complainant’s BOBCAT mark and adds the personal last name “sahin” along with the gTLD “.com. The addition of a personal name does not adequately distinguish a domain name from a mark, and may even increase the confusing similarity of the domain name. See Jaguar Land Rover Limited v. David Cullens, FA1618499 (Forum Jun. 15, 2015) (<dimmittlandrover.com> confusingly similar to LAND ROVER mark. “The Domain Name comprises Complainant’s famous LAND ROVER trademark, preceded by the personal name Dimmit. It is clearly confusingly similar to Complainant’s mark, the top level domain ‘.com’ being generally regarded as irrelevant.”) A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). The <sahinbobcat.com> domain name is confusingly similar to the BOBCAT mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims Respondent has no rights or legitimate interests in <sahinbobcat.com> because as Respondent is not commonly known by the disputed domain name. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. 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)). The WHOIS information of record identifies Respondent as “ferhat yildirim,” which bears no obvious relationship to the disputed domain name. Complainant has not authorized Respondent to use the BOBCAT mark in any way. Where there is no evidence in the record to indicate the respondent had been authorized to register a domain name using a complainant’s mark, the Panel may find Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum Jun. 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has not been commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent fails to make a bona fide offering of goods or services because Respondent is using the infringing Domain Name in order to pass itself off as Complainant (or complainant’s local distributor) to sell directly competing products. Passing off as a complainant does not create rights or legitimate interests. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Using a domain name to sell competing products does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Clark Equipment Company v emre erdem / turkey, FA1594886 (Forum Jan. 25, 2015) (“There is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Complainant provides evidence that the domain name resolves to a website which promotes competing product lines. In particular, the resolving website includes the logos and trademarks of Complainant’s competitors, along with their products.”). Respondent promotes Complainant’s competitors’ products. Respondent does not have rights or legitimate interests in the domain name under Policy ¶¶4(c)(i) or (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <sahinbobcat.com> domain name in bad faith because it disrupts Complainant’s business. Disrupting a complainant’s business using a confusingly similar domain name to mislead consumers (initial interest confusion) and then offering competing goods constitutes bad faith under Policy ¶4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶4(b)(iii)). Respondent uses the <sahinbobcat.com> domain name to promote Complainant’s competitors’ products. Respondent has registered and uses the disputed domain name in bad faith.
Complainant claims Respondent is attempting pass itself off as Complainant (or at least Complainant’s local agent) to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with the Complainant's mark. Whenever a respondent attempts to pass itself off as a complainant for commercial gain, this constitutes bad faith under Policy ¶4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Respondent copies copyrighted content from the Complainant’s authorized dealer’s website, creating a likelihood of initial Internet user confusion. Respondent commercially benefits from this confusion. Respondent registered and uses the name in bad faith.
Complainant claims Respondent must have had actual knowledge of Complainant’s BOBCAT mark. It would seem this is true. Respondent’s copying of Complainant’s copyrighted photos (which contain Complainant’s mark on various pieces of equipment) makes it impossible for Respondent to deny knowledge of Complainant’s mark. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Respondent tries to pass itself off as Complainant (or at least Complainant’s authorized distributor), which also makes it hard for Respondent to plausibly deny it didn’t know about Complainant’s mark. Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <sahinbobcat.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, February 23, 2018
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