WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Al Fakher International Co. v. WhoisGuard Protected, WhoisGuard, Inc. / Harun kaptan

Case No. D2019-0844

1. The Parties

The Complainant is Al Fakher International Co., Cayman Islands, Overseas Territory of the United Kingdom, represented by attorney Naz Esen, Turkey.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Harun kaptan, Turkey.

2. The Domain Name and Registrar

The disputed domain name <alfakherturkiye.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2019. On April 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 18, 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 19, 2019. The Center received an informal email communication from the Respondent on April 22, 2019.

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 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2019. The Respondent did not submit any formal response. The Center notified the Parties on May 16, 2019, that it would proceed to panel appointment.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on May 29, 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.

4. Factual Background

The Complainant produces and markets shisha tobacco products.

The Complainant owns several trademarks for AL FAKHER, including the United States trademark AL FAKHER (figurative mark) number 4923090, registered on March 22, 2016. These trademarks are hereinafter referred to as the “Trademark”.

In addition, the Complainant is the owner of several domain names incorporating the Trademark, including <alfakher.com>.

The Domain Name was registered on April 15, 2016.

The Domain Name resolves to a website that is being used to sell tobacco products, which are allegedly “100% genuine Al Fakher Tobacco” (the “Website”).

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The Domain Name includes the Trademark and is therefore confusingly similar to the Trademark.

The Respondent has no legitimate interests or rights to the Domain Name. The Respondent is not entitled as the dealer or distributor of the Complainant. Thus, the Respondent is not known by the Domain Name, nor has rights or legitimate interests with regard to the Domain Name. There is no evidence that the products sold via the Website are original products of the Complainant. Even if the sold products are genuine, which is highly doubtful, the Respondent is creating a false impression that the Respondent is the official or authorized dealer of the Complainant. Furthermore, the Website does not adequately disclose the relationship between the Complainant and the Respondent.

The Domain Name was registered and is being used in bad faith. The Respondent deliberately attempted to confuse Internet users in relation to the Trademark for not legitimate purposes and attempts to “free ride” on the goodwill of the Complainant. The Respondent was aware of the Trademark while registering the Domain Name. At the date of registration of the Domain Name, the Trademark was already registered and recognized for many years, worldwide. The fact that the Respondent offered the products of the Complainant for sale on the Website further indicates that the Respondent must have been aware of the Trademark and the reputation of the Complainant.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.

The Complainant has shown that it has rights in the Trademark.

As set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.

In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the elements “alfakher” and “turkiye”. The element “alfakher” is identical to the Trademark. The element “turkiye” is merely a geographic term that refers to the country Turkey, the place of residence of the Respondent.

The Panel finds that the dominant part of the Domain Name is “alfakher” and that the addition of the element “turkiye” does not prevent a finding of confusing similarity with the Trademark.

In addition, with regard to the suffix “.com” (which indicates that the Domain Name is registered in the “.com” generic Top-Level Domain (“gTLD”)), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / [email protected], WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the suffix is a necessary component of a domain name and does not give any distinctiveness.

For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii), namely:

(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods and services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no 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.

The Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name for the reasons listed above under Section 5.A. If and to the extent the Respondent can be viewed as a genuine reseller, the Panel notes that – based on the information brought forward by the Complainant – it appears that the Respondent does not meet the requirements of the Oki Data test (as set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). The Complainant brought forward that the Website does not accurately disclose the Respondent’s (lack of) relationship with the Complainant.

Although the Complainant did not provide any evidence to substantiate the statement that the Websites does not accurately disclose the Respondent’s (lack of) relationship with the Complainant, the Complainant has made a prima facie case that none of the circumstances mentioned above apply and therefore the Panel has to assume that the Respondent lacks any rights or legitimate interests. It would have been up to the Respondent to rebut such allegations, but the Respondent did not use the opportunity given to him to demonstrate any rights or legitimate interests.

Therefore, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the Domain Name was registered and is being used in bad faith.

In light of the evidence filed by the Complainant, the Panel finds that the Trademark is, as well as the activities of the Complainant are well known in the relevant industry. Accordingly, in the Panel’s view, the Respondent was also in light of what was mentioned on the Website, aware of the Complainant’s existence at the time of registering the Domain Name. In light of what is considered under Section 6.B above, such registration and use is prima facie in bad faith.

Finally, although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the registration and use of the Domain Name by the Respondent is in bad faith.

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.

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 Domain Name <alfakherturkiye.com> be transferred to the Complainant.

Willem J. H. Leppink
Sole Panelist
Date: June 12, 2019