WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mapfre Genel Sigorta Anonim Şirketi v. Anonymous c/o Dynadot
Case No. D2016-1778
1. The Parties
The Complainant is Mapfre Genel Sigorta Anonim Şirketi of Istanbul, Turkey, represented by Tellioğlu Kaşlıoğlu Hukuk Bürosu, Turkey.
The Respondent is Anonymous c/o Dynadot of San Mateo, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <mapfregenel.com> and <mapfresigorta.com> (the "Domain Names") are registered with Dynadot, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 1, 2016. On September 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 4, 2016, the Registrar 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" 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 September 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 6, 2016.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 11, 2016. 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.
On October 12, 2016, the Panel issued the Procedural Panel Order No. 1 to the Parties, the relevant text being reproduced below.
"Under the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Panel may, at its sole discretion request, in addition to the complaint and the response, further statements or documents from either of the Parties.
The Panel notes that:
1) The Domain Names <mapfregenel.com> and <mapfresigorta.com> were registered by the Respondent on December 6, 2013 and July 17, 2011 respectively.
2) Based on the untranslated trade mark registration certificate provided with the Complaint, it appears that the Complainant's MAPFRE GENEL SIGORTA KASKOJET Mark was registered on November 25, 2014 however this is in no way clear.
3) The consensus view of UDRP Panelists is that there are only limited circumstances in which a domain name can be registered in bad faith if the domain name was registered prior to the registration of the corresponding trade mark, as illustrated in paragraph 3.1. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.
4) While it appears that the Complainant first registered its domain name <mapfregenelsigorta.com> in 2008 the Complaint as filed provides no evidence, as opposed to assertions, to illustrate:
a) that the Complainant had unregistered mark rights in the MAPFRE GENEL SIGORTA KASKOJET Mark or any other Mark on or before July 17, 2011; and
b) that the MAPFRE GENEL SIGORTA KASKOJET Mark or any other mark had a significant reputation on or before July 17, 2011 such that the Respondent must have been aware of it at the time of the registration of the Domain Names.
5) The Complaint makes a reference to the reproduction of the logo of Mapfre in paragraph 12C of the Complaint but fails to provide any evidence of this logo and how it is connected to the Complainant.
Therefore the Panel makes the following orders:
1) The Complainant has until October 18, 2016 to make further submissions or file any additional evidence that it sees fit (including technical or affidavit evidence):
a) to support its claims of use of the MAPFRE GENEL SIGORTA KASKOJET Mark or any other Mark on or before July 17, 2011.
b) to show any reputation in or advertising featuring MAPFRE GENEL SIGORTA KASKOJET Mark or any other Mark on or before July 17, 2011.
c) to support its claims that the Respondent registered the Domain Names on December 6, 2013 and July 17, 2011 respectively to take advantage of the Complainant's reputation in the then unregistered MAPFRE GENEL SIGORTA KASKOJET Mark or any other Mark.
d) to provide a proper translation of the trade mark registration certificate provided with the Complaint indicating the mark, the date of registration and the actual owner of the MAPFRE GENEL SIGORTA KASKOJET Mark.
e) to provide evidence of the logo of Mapfre referred to in paragraph 12C of the Complaint.
The additional evidence/submissions should be served on the Respondent using the e-mail addresses[…].
2) The Respondent shall thereafter have an opportunity to provide any submission or any evidence in reply it may choose to make regarding the Complainant's additional evidence/submissions in response to this Panel Order, by October 24, 2016.
3) Any submissions or amended documents should be submitted to the WIPO Arbitration and Mediation Center by email to […]@wipo.int for forwarding to the Panel.
4) The Panel will deliver its decision on or before October 31, 2016."
On October 18, 2016, the Complainant filed a further submission and additional evidence in response to the Procedural Panel Order No. 1. This evidence consisted of a number of advertisements from 2010 and 2011 featuring the MAPFRE Mark (as defined below) and a translation of the trade mark registration certificate provided with the Complaint. Further, on October 19, 2016 the Complainant filed as evidence an authorization from Mapfre España Compañía de Seguros y Reaseguros, S.A. indicating that the Complainant has been authorized to use the logo mark (as defined below) in Turkey since 2008.
The Respondent did not file any reply in response to the Procedural Panel Order No. 1.
4. Factual Background
The Complainant is an insurance company based in Turkey.
The Complainant is the owner of a figurative trademark containing the words MAPFRE GENEL SIGORTA KASKOJET (the "MAPFRE Mark"), for various insurance services, registered in Turkey on November 25, 2014. According to the Complainant, the word "Genel" is a Turkish word that is translated as "General" and the word "Sigorta" is a Turkish word that is translated as "Insurance". The Complainant, since 2008 has also been the authorised user of a trade mark owned by Mapfre España Compañía de Seguros y Reaseguros, S.A. consisting of the word MAPFRE and a small logo (the "Logo Mark") which was first registered on May 26, 2004.
The Domain Names <mapfregenel.com> and <mapfresigorta.com> were registered by the Respondent respectively on December 6, 2013 and July 17, 2011. The Domain Name <mapfregenel.com> is currently inactive. The Domain Name <mapfresigorta.com> redirects to a website (the "Respondent's Website") that contains a message in Turkish. According to the Complaint, this message is translated as "This Domain Name is for Sale. Click here to make an Offer". Prior to the filing of the Complaint, the Respondent's Website also contained the statement "mapfregenel.com domain name will also be given beside this domain name".
5. Parties' Contentions
A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Names are confusingly similar to the Complainant's MAPFRE Mark;
(ii) that the Respondent has no rights nor legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the MAPFRE Mark, which is a registered trade mark in Turkey. The Complainant has also registered domain names that incorporate the word "mapfre" being <mapfregenelsigorta.com> and <mapfregenelsigorta.com.tr>. The Complainant has engaged in substantial advertising of the MAPFRE Mark in 2010 and 2011.
The Respondent has used the identical word "mapfre" in both of the Domain Names and also used the identical word "genel" (which means "general") in the Domain Name <mapfregenel.com>, and the identical word "sigorta" (which means "insurance") in the Domain Name <mapfresigorta.com>.
The Complainant has not authorized or licensed the Respondent to use the MAPFRE Mark or any confusingly similar variations thereof. "Mapfre" is not a common word or one used by third parties to identify goods and services.
The Respondent has registered and proposes to use the Domain Names in bad faith. The Domain Name owner has placed on the Respondent's Website a message offering both the Domain Names for sale which is clear evidence of the registration and use of the Domain Names in bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the MAPFRE Mark, which is registered in Turkey.
The Domain Names consist of the word "mapfre", being the key distinguishing element of the MAPFRE Mark and the words "genel", which is the Turkish word for "general" or the word "sigorta" which is the Turkish word for "insurance". The absence of the additional word "kaskojet" in the Domain Names does not operate to distinguish the Domain Names from the MAPFRE Mark in any significant way. The Panel finds that the each of the Domain Names is confusingly similar to the Complainant's MAPFRE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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."
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the MAPFRE Mark/Logo Mark or a mark similar to the MAPFRE Mark/Logo Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In particular, the Respondent's Website offers the Domain Names for sale, which by itself is not a bona fide offering of goods or services.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Names. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) the Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the 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 the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
While the MAPFRE Mark was not registered in Turkey at the time the Domain Names were registered, the Panel finds that the Respondent must have been aware of the Complainant at the time the Respondent registered the Domain Names. As of the time of registration, the Complainant had engaged in substantial advertising in Turkey featuring the Logo Mark and the words "Mapfre Genel Sigorta". Furthermore, accepting the evidence in the Complaint, "mapfre" is not an ordinary Turkish word. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register Domain Names incorporating the word "mapfre" and the Turkish words for "general" and "insurance" unless there was an intention to create a likelihood of confusion between the Domain Names and the Complainant.
The Panel is prepared to infer, based on the content of the Respondent's Website which simply offers the Domain Names for sale, that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under 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 names <mapfregenel.com> and <mapfresigorta.com> be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: October 25, 2016
